Posts Tagged: specification


Federal Circuit: Disparagement of Prior Art in the Specification Can Limit Claim Language

UltimatePointer argued that the district court improperly construed “handheld device” to require direct pointing, because there was no disavowal or lexicography in the specification to exclude indirect …

Patent Claim Interpretation: The Broadest Reasonable Interpretation Standard

The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances. …
By Gene Quinn
4 years ago 12

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
4 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
4 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
4 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
4 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
4 years ago 0

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
5 years ago 0

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
5 years ago 25

Patent Prosecution: 35 U.S.C. § 112(a) Must Be Raised Before a § 102 or § 103

Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office …
By Dale B. Halling
7 years ago 20

Does the term “Invention” in the Specification Limit the Claims?

There are some that will tell you that the use of the term "invention" or "present invention" in the specification will limit the claims. This misguided belief …
By Gene Quinn
7 years ago 20

Working with Patent Illustrations to Create a Complete Disclosure

What you are looking at here is something that is similar to a Big Mac because it has two beef patties, which are identified by reference numeral 10. …
By Gene Quinn
7 years ago 11

Santarus v. Par Pharmaceutical: Rader and Newman Disagree on Written Description Support for Negative Limitations

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 …
By Gene Quinn
7 years ago 13

Building Better Software Patent Applications: Embracing Means-Plus-Function Disclosure Requirements in the Algorithm Cases

The disclosure requirements for these types of patent applications has been a moving target for years, which means that whatever the most stringent disclosure requirements are should …
By Gene Quinn
7 years ago 9

Patent Drafting: Describing What is Unique Without Puffing

Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention …
By Gene Quinn
7 years ago 1