Posts Tagged: enablement


The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which …
By Gene Quinn
5 months ago 6

Patent Drafting: Distinctly identifying the invention in exact terms

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact …
By Gene Quinn
5 months ago 3

Patent Drafting: Understanding the Specification of the Invention

This so-called adequate description requirement pertains to the level of description that must be included in the ''specification,'' which is most typically defined as that part …
By Gene Quinn
6 months ago 4

Tricks & Tips to Describe an Invention in a Patent Application

On excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent …
By Gene Quinn
6 months ago 0

CAFC Says Prior Art Reference Sufficiently Enabled Based on Applicant Admissions

As applied to Morsa’s application, the Court found that the specification made numerous admissions regarding the knowledge of a person of skill at the time of …

Describing an Invention in a Patent Application

It is absolutely critical to understand that this complete and full description MUST be present as of the filing date of your application. If you file an …
By Gene Quinn
11 months ago 1

Enablement – Did the public receive all it contracted to receive?

A claim drafted too broadly may not be enabled and hence be invalid. Yet, the temptation to claim broadly often leads the patentee to ignore this …
By Sanjeev Mahanta
1 year ago 3

A Patent Drafting Checklist

Drafters need to think both outside and inside the claims. Outside thinking aims to make the court’s task easier by providing claim terms amenable to straightforward, …
By Joseph Root
2 years ago 2

Patent Drafting: Top 5 Critical Things to Remember

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The …
By Gene Quinn
2 years ago 25

AIA Oddities: Trade Secrets, Re-patenting and Best Mode

Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks …
By Gene Quinn
3 years ago 5

Turn Your Idea into an Invention with a Good Description

In reality, it is probably better to think of the description requirement as the core to patentability. If you can describe your idea with enough specificity you …
By Gene Quinn
3 years ago 15

Patentability Overview: Obviousness and Adequate Description

In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not …
By Gene Quinn
4 years ago 11

Patent Drafting: Drilling Down on Variations in a Patent Application

One of the challenges that a drafter faces when trying to satisfy the enablement requirement is with respect to describing things that can and will vary depending …
By Gene Quinn
4 years ago 1

Turning Your Idea into an Invention

One thing that many individuals and professional inventors employed by corporations (i.e., "kept inventors") have in common is that they frequently do not perceive what they …
By Gene Quinn
5 years ago 3

Patent Drafting: Language Difficulties, Open Mouth Insert Foot

What I refer to as "experimental language" either explicitly or implicitly suggests that further experimentation is or will be necessary in order to: (1) realize or perfect the …
By Gene Quinn
5 years ago 2