Posts Tagged: written description


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, simple claim construction. Preferably, at least, the key terms are expressly defined, …

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Explaining the function of the invention is helpful, but only explaining something in terms of function leaves many questions unanswered because it is not terribly descriptive. For example, assume you are unfamiliar with a couch. If I were to …

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Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by …

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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 law, however, requires that a patent application explain the invention to someone …

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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 no longer have an idea, but rather have migrated past the idea-invention …

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It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but still some get lured into believing that …

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Last week the Federal Circuit decided the case of Santarus, Inc. v. Par Pharmaceutical, Inc., which dealt with whether a drug covered by an Abbreviated New Drug Application (ANDA) infringed the patents owned by that patent owner relative to …

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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 exactly but rather known if one were to combine several references. In …

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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 have come up with as worth patenting. So many have the idea …

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It is also very important to explain with as much detail as possible, paying particular attention to unobvious or counter-intuitive steps, connections or limitations, paying particular attention to any preparations that may be necessary prior to beginning the making …

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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 invention; or (2) realize or perfect an intermediate or component. Resist the temptation …

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In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the …

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