In a patent, which is better: A picture or 1,000 words? For patent purposes, it’s important to provide considerable detail in drawings and descriptions. Some foresight is required, because support is required as of the filing date for the originally filed claims and for amendments that may become desirable during prosecution. In this article, we will consider the interplay between drawings and description and their respective roles in obtaining grant of good, strong patents.
Let’s consider an actual patent, issued just this week to my friends at Patco Machine and Fab of Houston, Texas. Their newest grant is U.S. Patent 9,206,658, naming Dennis Dion as inventor of “Controlling Cable Spooling Systems.” Can you visualize a cable spooling system? It would be hard to do so without a photo or a drawing. Do you know how such a system works? It would be hard to do so without a written description.
Before delving further into drawings and detailed descriptions, a brief summary of the Patco cable spooling invention may be useful.
Patco’s New Electro-Pneumatic Reel System
In offshore oil drilling, such as in the Gulf of Mexico, it can be necessary to drop as much as 10,000 or more feet of cable, hose, or “umbilicals” to the ocean floor. Giant reels—like fishing reels only much larger—are used to “spool” the line. This is not a spool for sewing thread! Patco is skilled in making reels, drives, and controls for offshore drilling.
One of the challenges confronted by Patco in today’s deep water drilling is that ships or drilling platforms typically float on the surface of the water, bobbing up and down, while as many as four reels control the lowering of cable, hose and/or umbilicals. In this environment, it can be difficult to control reel speed and line tension.
Pneumatic drive and pneumatic controls, generally forgiving, are often used in such operations. When the controls are positioned near the reel, this works pretty well, but the trend in control systems is toward electronic controls, which are more compatible with computers and remote control stations.
In response to these needs, Patco’s Dennis Dion invented an electro-pneumatic system combining the advantages of electronic controls and pneumatic drive. See ‘658 patent, cited above.
Patco’s electro-pneumatic control/drive reel system is illustrated in its patent drawings, one figure of which is reproduced here. In that drawing, the large scale of the equipment is apparent from the relatively small size of the human figure. This is not a fishing reel!
It can be seen from the above description and the accompanying drawing that both a picture and 1,000 words generally are needed to disclose an invention sufficiently to support a U.S. utility patent application. (Drawings are even more essential for U.S. design patents, where opportunities for written descriptions are limited, e.g., to the title, the claim, and the brief descriptions of figures.)
In patent practice, we use drawings (or “figures”) rather than “pictures.” It is possible to file a U.S. patent application with photographs or sketches, but line drawings are preferred, and they usually must be submitted before a patent will actually be allowed to issue. Generally, every element of a claimed invention that can be shown in a drawing must be shown in a drawing. Drawings are particularly useful in illustrating mechanical inventions.
Show every element of the claimed invention
The rules for patent drawings have been relaxed in some ways in recent years. At one time, formal drawings had to be submitted in pen-and-ink on Bristol board. Now, drawings are commonly attached electronically in PDF format at the time of filing of the patent application. Another permissive change, under the Patent Law Treaty (PLT), is that drawings are no longer required to obtain a filing date. But laxity at the time of filing is risky, because later-filed drawings can draw objections from the Patent Office if they incorporate or are accompanied by “new matter” prohibited by the patent laws.
Patent drawings are a hybrid between technical drawings and artistic illustrations. Dimensions generally are not shown on patent drawings, in order to avoid any suggestion that the claimed invention is limited to specific dimensions. While some manufacturing details are omitted, other illustrations go beyond the needs of manufacturing, for example, in use of perspectives, sections, and exploded views, all of which can help illustrate the claimed invention and its advantages. Patent drawings often are more understandable than manufacturing drawings.
The cliché holds that a picture is worth 1,000 words, and the “common wisdom” is true, insofar as it goes. Here, Patco’s ‘658 patent has eight sheets of drawings—eight figures—showing the claimed invention of “controlling cable spooling systems.”
Having established the vital role of a patent drawings, one might ask, “Can we skip the 1,000 words?” The short answer is no.
The patent law requires a detailed written description of the claimed invention. See 35 USC 112.
The trap that many patent applicants fall into is that they often write slim written descriptions intended mainly to support the relatively broad claims originally filed. Provisional applications often provide a sense of false security. It may be a year or two before a utility application is examined, and as discussed in my article, “More Words, Less Patent Clarity,” in most instances, the first office action is a rejection. Now, the applicant faces a Catch 22: They may need to amend the claims, but they usually are limited to the specification as filed.
Thus, the specification of Patco’s ‘658 patent goes well beyond the proverbial “1,000 words,” weighing in at more than five times that length. That’s right, well over 5,000 words are used to describe the claimed cable spooling system.
Sometimes people ask, “Does all that detail result in an overly narrow patent?” Ironically, the answer is, “No, because usually a thorough, well-crafted, detailed description will permit maximum flexibility during prosecution of the patent application, and it often will result in claims that are broader then would be the case for a less detailed specification.” So greater detail can result in a broader patent.
What Kind of Drawings and Description are Most Useful?
If a picture and 1,000 words are needed, the million dollar question (sometimes literally) is, what kind of drawings and description are most useful?
This seemingly simple question is hard to answer except in the context of specific inventions as understood by a skilled patent attorney. See my article, When to Call a Patent Attorney. Generally, we can say that the overall goal is to include drawings and description likely to become useful in prosecution, e.g., in amending the claims. That takes judgment. It takes knowledge of the prior art. It takes figuring out what the invention is, which can be surprisingly, even maddeningly, difficult to determine. As a starting point, drawings and description should help the reader—starting with the examiner (or even earlier, a company’s invention review committee)—and ultimately the industry, the courts, judges, juries, the Patent Trial and Appeal Board (PTAB), and the Federal Circuit—to understand the invention.
In order to prepare good drawings and description, the patent scrivener will call on his or her powers of perception and description. A big part of this process is the “invention disclosure” meeting or telephone conference and follow-up questions and answers. It is rare for even the best-written invention disclosures to be as complete as may be desirable. The skill and judgment added by a skilled patent attorney or agent can make all the difference. Generally, the goal should be to build a strong patent portfolio of real value, rather than simply to file a patent application as cheaply as possible. See my article, Build Your Patent Portfolio: Preparation, Prosecution, Appeals.
Credits and Invitation
Thanks are due to Patco Machine and Fab of Houston, Texas for permission to discuss their new ‘658 patent, which is now a public record. (Patent applications generally are confidential within the Patent Office until a patent is granted or the application is published, whichever comes first.) Here, Patco’s ‘658 patent issued very quickly, less than five months after filing.
Thanks also to Twitter friend Lena for her recent tweet asking about qualifications needed for patent draftsmen. My answer: Proficiency is required in technical drawing, sketching, and CAD courses and practice, along with knowledge and practice of Patent Office rules for patent drawings. Typical of patent law and practice, the applicable rules, here, pertaining to patent drawings, may be found in the statute, i.e., 35 USC 113, the rules, i.e., 37 CFR 1.74, 1.81, and 1.83-1.85, and the Manual of Patent Examining Procedure (MPEP) 608.02.
Do you have a question about patent/IP law or practice? If so, post a comment or send me an e-mail (no confidential information, please), and I will respond if feasible.
Conclusion — Picture vs. 1,000 Words
In a patent application, it is best to include a “picture” (or drawing) and 1,000 words.