When an inventor lodges a patent application, he needs to make “sufficient disclosure”. This basically means that, his patent needs to inform whoever is reading it, on how to reproduce the patent.
There are some inventors who are a little afraid of disclosing the full extent of their invention. They feel that they should retain some “secret sauce”.
Maybe they fantasize that they can disclose 90%, and retain 10%, so that they get the patent, while circumventing the sufficient disclosure requirement. (Quite similar to how ancient kung fu masters retained a “secret move” so that their students could never defeat them.)
For such inventors, they need to understand why patent law requires sufficient disclosure.
Why Sufficient Disclosure is Required
Sufficiency of disclosure goes back to the concept of patent law. In ancient times, kings wanted their kingdoms to prosper. The idea of the patent was born.
The law of patents can be simply described as follows.
An inventor is required to give up the full knowledge of his invention, and it is published throughout the kingdom. Many citizens will learn of the invention, and the kingdom’s subjects will become more technologically advanced.
In exchange for disclosing the full extent of the invention, the inventor is given the patent right. He, or she, enjoys a monopoly for a certain number of years to commercialize the invention.
Of course an invention cannot be a right to monopolize in perpetuity, because other inventors also need to build on top of existing inventions. That can only happen if patent rights expire — which, they do.
What if Disclosure is not Sufficient?
To put it simply, without sufficient disclosure, those who study a patent will be unable to reproduce it in full.
It will be a valid reason to invalidate a patent.
An inventor who discloses a patent without disclosing everything about the patent (as described), has robbed the system of its prize.
That inventor also deprives future innovators and inventors of a base on which they can build.
For that reason, sufficient disclosure is a necessary element of the patent regime, that aims to foster future innovation.
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A strategy for sufficient disclosure: Breaking up the patent
An inventor that is worth his salt will not back away from disclosing the full extent of his invention.
The inventor who is motivated by the noble cause of advancing mankind’s knowledge of the sciences, knows that patent disclosure is a necessary element.
But there can be a strategy in making such disclosures, by breaking up a patent into two, or three, smaller inventions.
If an invention is viewed in totality, it might be a huge system, involving smaller parts.
Each of those parts in itself might qualify as a separate invention.
And in that, there may be a strategy for the inventor who wants to extend the commercial protection afforded by the system to his invention.
Breaking up an invention to smaller inventions means that, an inventor can now lodge multiple patent applications.
They don’t have to be lodged all at the same time.
So, the inventor can lodge patent application #1, and then wait for a while before lodging patent application #2.
Each of those applications can fulfill the “sufficient disclosure” rule, and gain commercial protection for the invention.
And when the applications are “spaced out”, it means that the period of commercial protection can be extended, based on the later applications.
The drawback of the suggested strategy
Of course, there’s a drawback to using this approach. An inventor won’t get a single patent for a single invention.
Instead, what the inventor will get is a series of patents, for smaller inventions.
He will get recognised for inventing components.
But make no mistake, each one of those patent applications can be a separate invention.
It might be harder to show the “bigger picture”, but if the goal is to extend the period of protection, it would serve the purpose.
Inventors of ages past, like Thomas Edison, would file a single patent embodying a single invention.
Those documents continue to exist today, to teach us about the amazing inventions of the past.
And we can benefit from those documents, thanks to the sufficient disclosure that has been invested in drafting the patents.
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So, for example, Thomas Edison’s patent is for the incandescent lightbulb, as a whole.
It disclosed everything. And, to be fair, it didn’t disclose the invention in piecemeal fashion.
Imagine if it had been disclosed in bits and pieces, how would it have been? For a start, there might have been multiple patents. “A method for creating a filament out of bamboo.” “A method to heat a filament in a vacuum.” “A method to generate light by heating a filament in a vacuum.” “A method to prevent a heated filament from burning.”
And so on and so forth.
Anyway, to get back to the point, there needs to be sufficient disclosure.
And to recap, an inventor who wants to extend his period of protection under patent law, may instead of filing one large patent, file a series of smaller patents. The smaller patents, taken together, will form a bigger patent.
So it seems, sufficient disclosure is unavoidable, but there are multiple approaches in making sufficient disclosure.
Thank you for reading our blog.
Incidentally, are you drafting your own patent?
This article has been prepared for general information purposes only. If you are interested in filing a patent, kindly speak with a lawyer.