Patent Law

Written Description Materials, Revision 1

By Stephen Albainy-Jenei

The United States Patent and Trademark Office (USPTO) has published updated patent examiner training materials regarding the examination of patent applications under the written description requirement (35 U.S.C. § 112, first paragraph).  That is, in order to obtain a valid patent, an applicant must include in a description adequately disclosing the invention and how to make and use it. 

USPTO Commissioner for Patents John Doll said, “These training materials will improve the quality and consistency of patent examination, as well as provide guidance to practitioners for the drafting of patent applications and responses to examiners.”  We’ll see.

As discussed earlier, the examination of patent claims for compliance with the Written Description Requirement should include:

1. A determination as to what the claim as a whole covers. In making this determination, the examiner should consider and discuss the full scope of the claim.

2. A full review of the application to understand how the applicant provides support for the claimed invention including each element and/or step. This review includes comparing the claim scope with the scope of the description.

3. A determination as to whether one skilled in the art would recognize that the applicant was in possession of the claimed invention as a whole at the time of filing. This determination should include the following considerations:

a. Actual reduction to practice,

b. Disclosure of drawings or structural chemical formulas,

c. Sufficient relevant identifying characteristics, such as: i. Complete structure, ii. Partial structure, iii. Physical and/or chemical properties, iv. Functional characteristics when coupled with a known or disclosed correlation between function and structure

d. Method of making the claimed invention,

e. Level of skill and knowledge in the art and

f. Predictability in the art.

4. For each claim drawn to a single embodiment or species, consider the above factors in regard to that embodiment or species to determine whether one of ordinary skill in the art would recognize that the applicant was in possession of the species or embodiment at the time of filing.

5. For each claim drawn to a genus, consider each of the above factors to determine whether there is disclosure of a representative number of species which would lead one skilled in the art to conclude that the applicant was in possession of the claimed invention. The number of species required to represent a genus will vary, depending on the level of skill and knowledge in the art and the variability among the claimed genus. For instance, fewer species will be required where the skill and knowledge in the art is high, and more species will be required where the claimed genus is highly variable.

More to come.

Download the training materials here.

Full post as published by Patent Baristas on April 23, 2008 (boomark / email).