Describing Your Invention Completely in a Patent Application

 

 

An updated version of this article was published on May 10, 2014, which can be found at:

http://ipwatchdog.com/2014/05/10/completely-describe-your-invention-in-a-patent-application/id=49497/

 

 

 

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5 comments so far.

  • [Avatar for john]
    john
    July 25, 2011 03:48 am

    The idea of fully disclosing how the invention is realised is also paramount in importance if you are considering filing your US application with the EPO. The European Phase requires a greater detail of disclosure of the invention then is generally necessary at the USPTO.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 19, 2011 10:33 am

    Joe-

    I hear what you are saying. I wonder though whether it is cluelessness or whether this is a function of representing inventors without much money and doing next to nothing. I’m sure there are some that are indeed unfamiliar with the intricacies of the law, but I think a far greater problem are those who charge very little and then deliver very little.

    -Gene

  • [Avatar for Joe]
    Joe
    July 19, 2011 08:50 am

    Unfortunately, I think there may be patent agents and attorneys who are relatively clueless on this requirement as well.

  • [Avatar for EG]
    EG
    July 18, 2011 09:05 am

    Paul,

    Amen to what you say. Many who aren’t patent attorney or patent agents are clueless regarding the stringent requirements of 35 USC 112, first paragraph, which still apply to provisionals. The 2002 case of New Railhead Mfg v Vermeer made that abundantly clear.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    July 17, 2011 01:21 pm

    Yes, and some of those advising universities, in particular, need to better understand why just slapping a provisonal application cover sheet on a reseach paper and filing it in the U.S PTO without any claims, or inadequate claims, is unlikely to provide a valid description of the invention, a valid filing date, or a foreign priority, for valuable and enforceable patent claims Especially since the Fed. Cir. has now made it clear that under 35 USC 112 just having an “enablement” of the invention in a patent application is not the same thing as having a “written description” of what IS the invention, and not just in the narrow scope of an enablement example.

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