Are expert affidavits sufficient to establish enablement in patent applications?
Expert affidavits alone are generally not sufficient to establish enablement in patent applications. The MPEP 716.09 provides guidance on this issue: Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite. The MPEP…
Read MoreWhat is the burden of proof for enablement in patent applications?
In patent examination, the burden of proof for enablement initially falls on the examiner. As stated in MPEP 716.09: Once the examiner has established a prima facie case of lack of enablement, the burden falls on the applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would…
Read MoreHow does the USPTO evaluate sufficiency of disclosure in chemical and biotechnology inventions?
How does the USPTO evaluate sufficiency of disclosure in chemical and biotechnology inventions? The USPTO evaluates sufficiency of disclosure in chemical and biotechnology inventions with particular scrutiny due to the complex nature of these fields. According to MPEP 716.09, “In chemical and biotechnological inventions, a sufficient disclosure may require working examples or detailed disclosure of…
Read MoreWhat is the relationship between sufficiency of disclosure and enablement in patent applications?
What is the relationship between sufficiency of disclosure and enablement in patent applications? The sufficiency of disclosure in a patent application is closely related to the enablement requirement. According to MPEP 716.09, “The issue of ‘sufficiency of disclosure’ with respect to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is related to the…
Read MoreHow can an applicant overcome a rejection for lack of enablement?
To overcome a rejection for lack of enablement, an applicant must provide evidence that demonstrates the sufficiency of the disclosure. According to MPEP 716.09: Evidence to supplement a specification which on its face appears deficient under 35 U.S.C. 112 must establish that the information which must be read into the specification to make it complete…
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