Posts Tagged: written description


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 3 days ago 5

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 17 days 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 24 days 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 1 month ago 4

Tricks & Tips to Describe an Invention in a Patent Application

In order to satisfy this enablement requirement you need to specifically and objectively define and describe how to make and use your invention. The quickest way to …
By Gene Quinn 1 month ago 0

Negative Claim Limitations Do Not Have a Higher Written Description Standard

The Federal Circuit held that the written description requirement is met for negative claim limitations where the specification simply describes alternatives. In other words, the “reason to …

CAFC Cautions Against Limiting Invention to One Embodiment in the Specification

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on …

Patenting business methods and software still requires concrete and tangible descriptions

The key to obtaining a software patent is to thoroughly describe the system and processes from a technological level. As to Judge Chen explained in DDR Holdings, …
By Gene Quinn 5 months ago 0

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 1 year ago 2

Patent Application Drafting: Ambiguity and Assumptions are the Enemy

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 …
By Gene Quinn 1 year ago 0

Patent Drafting: The Detailed Description Should Include Multiple Embodiments or Examples

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 …
By Joseph Root 1 year ago 7

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