When you fill out a patent application, there’s an unassuming little section titled “Field of the Invention.” The formula for responding to this appropriately is pretty simple—usually only two sentences in length.
The first sentence gives the patent examiner a broad sense of the category into which the invention fits. If you do this right, the average observer would likely be able to guess what type of store the invention would be sold in. For instance, you might lead off with, “The invention is a type of hand tool,” or “The invention pertains to footwear.” So in these cases, you would know that this invention would probably be found in Home Depot or a shoe store.
The second sentence narrows things down. If you do it right, the reader would be able to tell what aisle of the store they would find it in. For instance, “More specifically, the invention pertains to screwdrivers,” or, “Specifically, the invention relates to a design for the sole of a woman’s high-heeled shoe.”
While this is seemingly simple, it’s easy to make serious mistakes which can limit your patent claims, or even jeopardize them entirely. It’s best to have the advice of an experienced patent attorney while drafting your patent application. If you would like assistance with filing your patent application, the Law Office of Michael O’Brien can help. For more information, call (916) 760-8265, or send us a message using our contact form.
But how is it that such a minor part of the patent application can have such massive implications?
The purpose of the “Field of the Invention” section is to tell the patent examiner context for the language used to describe the invention.
The words used to describe an invention in a patent application, and the specific definitions of those words, can make or break a patent application. What the “Field of the Invention” does is tell the patent examiner what dictionary they need to use to correctly interpret the vocabulary used to describe the invention.
Accurately describing the classification of your invention, and then using the appropriate terminology specific to that field of work gives you the best chance of being granted broad patent claims, rather than narrower claims that afford you less protection.
Keep in mind, the “Field of the Invention” field is actually optional on provisional patent applications. You don’t have to fill it out. In fact, a poor response is more damaging to your claims than simply leaving it blank. Some patent lawyers advocate for leaving the field blank, as it can hamper you if you discover later that your invention is relevant to other fields. If an imitator adapts your invention to be used in a field different than the one you described, you may have a difficult time proving infringement, as they may successfully argue that your patent claims only apply within the field described.
A poorly crafted “Field of the Invention” response can badly damage your claims, as can using vocabulary inappropriate to the field.
One of the mistakes I often run across in inventor-drafted patent applications, especially in provisional patent applications, is that the inventor will use inappropriate terminology. Or even worse, use their own colloquial terminology believing that it’s applicable and accurate.
More often than not, they’re wrong. Most fields have extremely specific, established technical terminology. When an inventor fails to use this established terminology, it’s a bit like someone in a foreign country who isn’t fluent in the local language stretching what few words he or she knows in an attempt to communicate with the locals. They may get the rough idea across, but anyone who is fluent will readily recognize the errors being made.
In the U.S. Federal Circuit , there is actually a term for when someone uses a word in a manner that isn’t recognized as appropriate: “nonce.” The average dictionary defines the word as meaning “for a special occasion, for a particular purpose,” but the courts use the word to mean “a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’”
If you fail to speak the language of your field, and instead make the grave mistake of using nonces, your patent claims will be extremely limited, and you will not be afforded much in the way of legal protection against infringement.
Accurately filling out the “Field of the Invention” section, as well as the rest of the patent application, is critical to ensuring that your invention is protected. It’s highly advisable to have a patent attorney on hand to assist you. If you would like assistance, just give the Law Office of Michael O’Brien a call at (916) 760-8265, or email us using our contact form.