07-Patent Disclosure 35 USC §112

Patent Disclosure35 USC §112

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

[email protected]

35 U.S.C. § 112, paragraph 1

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. ”

35 U.S.C. § 112, paragraph 2

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”

35 U.S.C. § 112, paragraphs 3-6

• “A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

• Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

• A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

• An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Patent Basics – Utility Patent

• The Parts of a Patent:– Drawings– Specification

• Background• Summary of

the invention• Description of

the drawings• Detailed description

of the invention– Claims

• Each claim written as one sentence • Describe the “metes and bounds” of the invention• Independent and dependent forms

What Must the Patent Disclose?

• The Invention– “…in such full, clear, concise, and exact terms…”

• Enablement– “…as to enable any person skilled in the art to which it

pertains…to make and use same…”

• Best Mode– “…and shall set forth the best mode contemplated by the

inventor of carrying out his invention.”

– Concealing the “best mode” may result in an invalid patent• see Chemcast Corp. v. ARCO Industries Corp., 913 F.2d 923

35 U.S.C. § 112, paragraph 1

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. ”

Written Description – General Principles

• Basic inquiry: Would one skilled in the art reasonably conclude that the inventor had possession of the claimed invention at the time the application was filed?

• Written description requirement is separate and distinct from the enablement requirement.

• Narrowing claim limitations (i.e., to specific compounds) added by amendment during prosecution must be supported by a detailed disclosure in the original specification.

Written Description Requirement

• Did the inventor actually invent the claimed invention?

• Issue of fact

• Univ. of Rochester v. G.D. Searle & Co.

35 U.S.C. § 112, paragraph 1

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. ”

Enablement – General Principles

• Basic inquiry: Would one skilled in the art be able to make and use the claimed invention without undue experimentation?

Enablement – General Principles

• Wands Factors– Breadth of the claims– Nature of the invention– State of the prior art– Level of predictability in the art– Amount of direction provided by inventor– Existence of working examples– Quantity of experimentation needed

Enablement Requirement

• Did the inventor teach how to make and use the full scope of the invention without undue experimentation?

• Matter of law

• Enzo Biochem, Inc. v. Calgene, Inc.

35 U.S.C. § 112, paragraph 1

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Best Mode – General Principles

• Patentee obtains a right to exclude others and the public receives knowledge of the best way to practice the claims invention (“quid pro quo”).

Best Mode – General Principles

• Two-prong inquiry:

– Subjective inquiry: did the inventor possess a best mode (inventors mind)?

– Objective inquiry: did the written description disclose the best mode such that a person skilled in the art could practice it?

Best Mode Requirement

• Did the inventor conceal his best mode of using his invention?

• Issue of fact

• Bayer AG & Bayer Corp. v. Schein Pharms., Inc.

Best Mode – Practice Tips

• A US-only requirement– Implications for foreign applications filed in

the US

• No requirement to update for Continuation; may need to update for Continuation-in-Part.

35 U.S.C. § 112, paragraph 2

“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”

35 U.S.C. § 112, paragraph 2

• Are the metes and bounds of the claim ascertainable or is the claim language ambiguous?

– Exxon Research & Eng'g Co. v. United States

35 U.S.C. § 112, paragraph 2

• “The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns and the public should know owns, what he does not.”

– Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Brief comment on Trade Secret / Patent Interface

• Trade secrets are protectable only as long as they are secret

• Trade secret protection may be lost if independently developed by others

• Can’t meet best mode requirement if keeping key aspects of invention as a trade secret

• Must to choose between patent and trade secret protection

Questions?

Please Ask!

Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides!

Contact us at [email protected] or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.