What is the “written description requirement” in patent law?
The written description requirement is a crucial aspect of patent law that ensures an inventor has adequately described their invention in the patent application. According to MPEP 2304.02(d), “The written description requirement is met so long as the application or priority application sufficiently described the subject matter to a person skilled in the art.” It’s…
Read MoreHow does prior publication affect joint inventorship?
Prior publication of a joint inventor’s contribution does not necessarily negate joint inventorship. The MPEP cites the case Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., which states: “[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked…
Read MoreHow are genus and species handled in CPC classification?
The handling of genus and species in CPC classification depends on the level of disclosure: For generic disclosures or nominally disclosed species: Classify in the generic (genus) classification place. For fully enabled species disclosures: Classify in the individual species classification places. As stated in MPEP 905.03(b): “(a) In the case where an invention is generically…
Read MoreHow should the “Best Mode” be presented in a patent description?
The “Best Mode” is a crucial element in a patent description, as it discloses the inventor’s preferred embodiment of the invention. According to MPEP 1823: “The description should disclose any preferred embodiments of the invention.” When presenting the Best Mode: Completeness: Provide a complete description of the best way to carry out the invention. Specificity:…
Read MoreCan a patent examiner request information about inventorship?
Can a patent examiner request information about inventorship? Yes, a patent examiner can request information about inventorship during the examination process. The MPEP 704.11 explicitly states that examiners may request: “Names of persons to whom the invention was disclosed.” This information may be requested to: Clarify the correct inventorship of the application Determine if there…
Read MoreWhat is the relationship between a divisional application and its parent application?
What is the relationship between a divisional application and its parent application? A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing…
Read MoreWhat is the purpose of a secrecy order in patent applications?
A secrecy order is issued to prevent the disclosure of sensitive information in patent applications that could be detrimental to national security. According to MPEP 120, “The purpose of this Act is to prevent disclosure of inventions by the publication of applications or by the granting of patents that might be detrimental to the national…
Read MoreWhat statement must be included in patent applications for inventions made with government support?
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read: “This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has…
Read MoreWhat is the significance of the term ‘carved out’ in relation to divisional applications?
What is the significance of the term ‘carved out’ in relation to divisional applications? The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in…
Read MoreWhat is the scope of a Secrecy Order?
A Secrecy Order applies to the subject matter of the invention, not just the patent application itself. It restricts disclosure or publication of the invention in any form. Other related patent applications which contain any significant part of the subject matter also fall under the scope of the order and must be brought to the…
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