Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
To learn more:
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
MPEP 2163.03 – Typical Circumstances Where Adequate Written Description Issue Arises (3)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
To learn more:
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
Patent Law (3)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
To learn more:
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more:
Patent Procedure (3)
The written description requirement and enablement are distinct but related concepts in patent law. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
Key differences include:
- Written Description: Focuses on whether the specification demonstrates that the inventor had possession of the claimed invention at the time of filing.
- Enablement: Concerns whether the specification teaches a person skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.
A specification might enable the invention but still fail to provide adequate written description, or vice versa. For example, a specification might describe a general concept (meeting the written description requirement) but not provide enough detail for someone to make and use it (failing enablement). Conversely, a specification might provide a detailed method for making something (meeting enablement) but not show that the inventor possessed the full scope of the claimed invention (failing written description).
To learn more:
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states:
“To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.”
Key issues that can arise include:
- Adding new limitations not described in the original specification
- Broadening claim scope beyond what was originally disclosed
- Introducing new combinations of elements not originally presented
To avoid these issues, applicants should ensure that any new or amended claims are fully supported by the original disclosure, either explicitly or implicitly. If support is not clear, applicants may need to provide explanations or point to specific parts of the original disclosure that provide the necessary support.
To learn more:
Means-plus-function claim limitations have a special relationship with the written description requirement. According to MPEP 2163.03:
“A claim limitation expressed in means- (or step-) plus-function language ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’ 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.”
However, if the specification doesn’t provide sufficient corresponding structure, materials, or acts that perform the entire claimed function, two issues arise:
- The claim becomes indefinite under 35 U.S.C. 112(b) because the applicant hasn’t particularly pointed out and distinctly claimed the invention.
- The claim lacks adequate written description under 35 U.S.C. 112(a).
The MPEP explains:
“Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Therefore, when using means-plus-function limitations, it’s crucial to provide clear and sufficient description of the corresponding structure in the specification to satisfy both the definiteness and written description requirements.
To learn more: