What is the significance of “inherency” in patent claims?
What is the significance of “inherency” in patent claims? The concept of “inherency” in patent claims is significant because it allows for the inclusion of certain characteristics or properties that are not explicitly stated in the original disclosure but are necessarily present in the invention. As stated in MPEP 2163.07(a): “By disclosing in a patent…
Read MoreHow can an inventor show possession of the claimed invention?
An inventor can show possession of the claimed invention in several ways, as outlined in the MPEP: Describing an actual reduction to practice of the claimed invention Showing that the invention was “ready for patenting” through drawings or structural chemical formulas Describing distinguishing identifying characteristics sufficient to show possession The MPEP states: “Possession may be…
Read MoreWhat is the role of drawings in meeting the written description requirement?
What is the role of drawings in meeting the written description requirement? Drawings can play a significant role in satisfying the written description requirement. According to MPEP 2163.02: “Drawings constitute an integral part of the disclosure and may provide a sufficient written description of an invention as required by 35 U.S.C. 112(a).” This means that…
Read MoreWhat is the ‘representative number of species’ concept in written description?
The ‘representative number of species’ concept is crucial in demonstrating adequate written description for a claimed genus. The MPEP explains: “A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of…
Read MoreCan a patent applicant rely on the reproduction of biological materials from a written description?
Yes, a patent applicant can potentially rely on the reproduction of biological materials from a written description, but there are important considerations. MPEP 2404 states: “The invention may rely on biological material which is known and readily available to the public or reproducible from the written description.” However, the applicant must ensure that: The written…
Read MoreWhat is the relationship between 35 U.S.C. 112(a) and (b)?
The requirements of 35 U.S.C. 112(a) and (b) are separate and distinct. As stated in the MPEP 2174: “The requirements of 35 U.S.C. 112(a) and (b) or the first and second paragraphs of pre-AIA 35 U.S.C. 112 are separate and distinct.” This means that a patent application must satisfy both requirements independently. To learn more:…
Read MoreWhat role does “reduction to practice” play in the written description requirement?
“Reduction to practice” is an important concept in patent law, but it’s not always necessary to satisfy the written description requirement. According to MPEP 2304.02(d): “An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that…
Read MoreHow are range limitations evaluated under the written description requirement?
Range limitations are evaluated based on what one skilled in the art would consider inherently supported by the original disclosure. The MPEP 2163.05 provides guidance: “With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original…
Read MoreWhat is the purpose of the written description requirement for biological material deposits?
What is the purpose of the written description requirement for biological material deposits? The written description requirement for biological material deposits serves two main purposes: To ensure that the public receives something in return for the patent grant To demonstrate that the applicant was in possession of the claimed invention at the time of filing…
Read MoreWhat is the purpose of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph?
The purpose of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph is to ensure that patent applications contain a full and clear description of the invention. As stated in the MPEP: “The requirement for an adequate written description ensures that the public receives something in return for the exclusionary rights that are granted…
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