Posts Tagged: enablement


Generic Examples of Claimed Compounds Do Not Satisfy Enablement Requirement

On June 21, 2017, In Storer v. Clark, the Federal Circuit affirmed a Patent Trial and Appeal Board’s interference decision, which awarded priority to Clark’s pending application (…

Patentability: The Adequate Description Requirement of 35 U.S.C. 112

The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough …
By Gene Quinn
2 months ago 1

Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for …
By Gene Quinn
8 months ago 4

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
2 years 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
2 years 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
2 years ago 4

Tricks & Tips to Describe an Invention in a Patent Application

One 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
2 years 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
2 years 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 …

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
3 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
3 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
4 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
4 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
5 years ago 11