Posts Tagged: written description


Amgen v. Sanofi: A well characterized antigen insufficient for written description of an antibody

In what appears to be a clear departure from the past, in Amgen, the Federal Circuit has rejected the test, basing its rejection on the ground that …

Patent Drafting: Proving You’re in Possession of the Invention

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement …
By Gene Quinn
1 month ago 3

Patent Drafting Webinar: Trends and Realities of 112 Disclosure Requirements

Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. Gene will be joined by …
By Gene Quinn
2 months ago 0

Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill …
By Gene Quinn
3 months ago 2

Federal Circuit Vacates Board’s Lack of Written Description Holdings in Interferences

The Federal Circuit vacated three interference decisions, in which the Board found that Stanford’s claims were unpatentable for lack of written description, and remanded for further …

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
6 months ago 1

Patent Application Drafting: Using the Specification for more than the ordinary plain meaning

As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology area or science will …
By Gene Quinn
9 months ago 0

Mentor Graphics v. Synopsys: Affirmed-in-Part, Reversed-in-Part, Vacated-in-Part, and Remanded

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for …

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
1 year ago 4

Patent Drafting: Define terms when drafting patent applications, be your own lexicographer

Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want …
By Gene Quinn
2 years ago 0

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: Learning from common patent application mistakes

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what …
By Gene Quinn
2 years ago 0

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