Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (2)
The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
To learn more:
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
To learn more:
MPEP 2100 – Patentability (2)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more:
MPEP 2163.06 – Relationship Of Written Description Requirement To New Matter (1)
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more:
MPEP 2164 – The Enablement Requirement (1)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
Patent Law (4)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
To learn more:
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
To learn more:
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more:
Patent Procedure (4)
The enablement requirement and the written description requirement are separate and distinct aspects of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. The MPEP clarifies this distinction:
“The enablement requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the written description requirement.“
This distinction is further explained in the case Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991), which states that “the purpose of the ‘written description’ requirement is broader than to merely explain how to ‘make and use’.”
While the enablement requirement focuses on providing sufficient information for a skilled person to make and use the invention, the written description requirement ensures that the inventor has fully described the invention and demonstrated possession of it at the time of filing.
To learn more:
The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:
- The subject matter of the claim is disclosed in the earlier-filed application.
- The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
- The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.
As stated in MPEP 211.05:
“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”
If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.
To learn more:
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
To learn more:
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more: