The patent specification has always been a critical part of the patent application, but the specification has become increasingly important in recent years. With practically every new ruling from the Court of Appeals for the Federal Circuit more and more disclosure is demanded. Whether it is disclosure to define the presence of an invention so as to overcome labeling as merely an abstract idea, or disclosure sufficient to provide the support for a means claim (even when you didn’t use “means” language), or technological disclosure to really demonstrate possession of the invention to satisfy the standards of the moment, defining inventions has become more difficult and time consuming. There have been no shortage of cases interpreting the requirements of 35 U.S.C. 112 from both the Supreme Court and the Federal Circuit.
Gone are the days of cheap patents with thin disclosures.
Even what we thought we knew — that Nautilus v. Biosig Instruments was the law of the land, has recently been called into question. The U.S. Patent Office and PTAB are not following the Supreme Court’s Nautilus decision, and instead continuing to apply In re Packard when determining when a patent claim is definite, acknowledging that this is a more restrictive standard. Indeed, the PTAB made this point precedential in Ex parte McAward on August 25, 2017, specifically refusing to apply Nautilus.
What does this changing landscape mean for patent application drafting best practices?
Join me on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. I will be joined by Todd Van Thomme, a shareholder with Nyemaster Goode PC, and Cynthia Gilbert, co-founder of Blueshift IP. Van Thomme specializes in mechanical and food science related innovations, while Gilbert specializes in computer implemented inventions. We will, therefore, focus our 112 discussions on these specific areas.
In addition to taking as many questions as possible from the audience we will discuss:
- Nautilus versus In re Packard.
- Identifying the invention/improvement versus KSR 103 concerns.
- Best practices for ensuring a complete and thorough specification.
- Means-plus-function and other 112 matters.