Patent Robustness After Amgen: Drafting Specifications to Satisfy the 112 Requirements of Tomorrow *

Patent Robustness After Amgen: Drafting Specifications to Satisfy the 112 Requirements of Tomorrow *

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After Amgen the Supreme Court made what some believe to be significant changes to the law of enablement, finding that the 26 examples, 400+ pages of disclosure and information submitted on via CD ROM was not sufficient to enable the claims. Meanwhile, the United States Patent and Trademark Office (USPTO) has recently embarked on a public inquiry relating to what they call patent robustness, which can succinctly be described as a requirement to specifically map every claim limitation to an explicit disclosure in the specification.  Of course, amidst all these changes, it still remains necessary to carefully draft patent applications to not run afoul of the omnipresent threat of obviousness presented by KSR v. Teleflex. Describe your invention too well, and you may create an insurmountable obviousness rejection.

Whatever the reason, and however we got here, we can all agree that courts are requiring more disclosure with more examples, including disclosure. What do these new, heightened disclosure requirements mean for patent application drafting best practices? Knowing that any law or rule changes that happen in the future will be applied retroactively—as they always are in the patent arena—what should patent practitioners be doing today? What tips and tricks should be employed to provide a specification that has maximal opportunity for success during examination today, and tomorrow, but without running into obviousness or other problems?

This panel conversation will focus on the trends and realities of 112 disclosure requirements, where the law is today and where it is likely heading tomorrow, the role of means-plus-function claiming and the required supportive disclosure, and what all this means for preparing and prosecuting applications.

Materials

SCOTUS Ushers in New Era of Enablement Law in Amgen Ruling

Let’s Take This Simple First Step Toward Better Quality Patents

A Primer on Indefiniteness and Means Plus Function

Note: This panel will be moderated by Gene Quinn, President & CEO of IPWatchdog, Inc.