What is the written description requirement?
“The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in …
What does consisting essentially of mean?
The legal meaning of the transition language “consisting essentially of” is well-established in Federal Circuit case law and is generally construed to mean that the composition or formulation (a) necessarily includes the listed ingredients and (b) is open to unlisted ingredients that do not materially affect the basic …
What is the difference between enablement and written description?
Perhaps the key to understanding the difference between enablement and the written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but no such bootstrapping is allowable under the written description requirement.
How do you overcome 112 rejection?
A Section 112 rejection in a patent Office Action means that the examiner considers certain claim language indefinite. The good news is that, in most cases, indefiniteness under Section 112 may be resolved by a fairly simple response correcting whatever objections raised by the examiner.
What are the requirements for patents?
The following criteria determine what can be patented in India:
- Patentable subject matter: The foremost consideration is to determine whether the invention relates to a patentable subject-matter.
- Novelty:
- Inventive step or Non-Obviousness:
- Capable of Industrial Application:
How do you write a patent description?
Steps to File a Patent Description
- Create a Title.
- Describe the Technical Field.
- Describe the Background.
- Explain Problems You Encountered.
- Discuss How Your Invention Solves These Problems.
- List the Figures.
- Explain the Scope of Your Intellectual Property.
- Explain How to Use Your Invention.
What does comprising mean in a patent claim?
Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp.
How do I create a Markush group?
To properly be considered a Markush group, the associated elements (e.g., A, B, and C, in the above example) must share a structural similarity and common use. Markush groupings have a strong presumption of being read as a “closed” group such that other elements are not “read into” the claim.
What is enablement in patent law?
The specification in a patent application must describe the invention in a manner that would enable one with ordinary skill in the art to make and use the invention without an undue amount of experimentation.
What is the specification of a patent?
A patent specification is a highly technical legal document, the purpose of which is twofold: first to disclose an invention to the public in language that will enable the public to work the invention when relevant patent rights have expired; and second, to identify the subject matter that the patent applicant or …
What is a 103 rejection?
A rejection based on 35 USC §103 is used when the claimed invention is not identically disclosed or described so the reference teachings must somehow be modified in order to meet the claims.
What is a 102 patent rejection?
A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is “not novel”) over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation.
What is the purpose of the written description requirement?
The written description requirement has several policy objectives. ” [T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed.” In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977).
How is Lilly consistent with the written description requirement?
Lilly is entirely consistent with application of the written description requirement in other areas of the law.
Is the written description requirement a fact based inquiry?
“Compliance with the written description requirement is essentially a fact-based inquiry that will ‘necessarily vary depending on the nature of the invention claimed.’” Enzo Biochem, 323 F.3d at 963, 63 USPQ2d at 1612.
When to use written description in patent litigation?
The written description requirement arises in patent infringement litigation in three basic areas. First, it can be used to deny a patentee the benefit of an earlier U.S. or foreign application filing date, thereby expanding the scope of prior art available to invalidate the patent.