Can extrinsic evidence be used to support inherency in patent applications?
Can extrinsic evidence be used to support inherency in patent applications? Yes, extrinsic evidence can be used to support inherency in patent applications, but there are specific guidelines for its use. According to MPEP 2163.07(a): “Extrinsic evidence may be used to support inherency; however, extrinsic evidence must make clear that the missing descriptive matter is…
Read MoreWhat is the burden on the examiner regarding the written description requirement?
The examiner has the initial burden of presenting evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims. This is known as establishing a prima facie case. According to MPEP 2163.04, “The examiner has the initial burden of presenting by a…
Read MoreWhat evidence can be used to show possession of a claimed invention for priority purposes?
The MPEP 2304.02(c) provides guidance on the types of evidence that can be used to show possession of a claimed invention for priority purposes: Written description: A detailed explanation of how the earlier application supports each claim element. Charts: Visual representations showing the correlation between claim elements and the earlier application’s disclosure. Additional evidence: This…
Read MoreHow is inherency established in patent applications?
Establishing inherency in patent applications requires clear evidence that the undisclosed feature is necessarily present in the invention. According to MPEP 2163.07(a): “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons…
Read MoreWhat is the “Essential Material” exception for incorporating material by reference?
What is the “Essential Material” exception for incorporating material by reference? The “Essential Material” exception allows certain types of material to be incorporated by reference, even if not present in the application as filed. According to MPEP 2163.07(b): “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to…
Read MoreCan a patent specification be enabling without describing the invention?
Yes, it is possible for a patent specification to be enabling without fully describing the invention. The MPEP 2161 provides an example of this situation: “A disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges…
Read MoreWhat is the role of drawings in satisfying the written description requirement?
Drawings can play a crucial role in satisfying the written description requirement. The MPEP states: “An applicant may show that the inventor was in possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that the inventor was in possession of the claimed invention as a whole.”…
Read MoreWhat is the doctrine of inherent disclosure in patent law?
The doctrine of inherent disclosure in patent law refers to the principle that a patent application may implicitly disclose certain functions, theories, or advantages of an invention, even if they are not explicitly stated. As explained in MPEP 2163.07(a): “Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed…
Read MoreHow is compliance with the best mode requirement determined?
Determining compliance with the best mode requirement involves a two-prong inquiry, as outlined in MPEP 2165: Subjective Inquiry: Determine if the inventor possessed a best mode for practicing the invention at the time of filing. This focuses on the inventor’s state of mind. Objective Inquiry: If a best mode existed, determine if the written description…
Read MoreHow is the adequacy of written description determined in patent applications?
The adequacy of written description in patent applications is determined on a case-by-case basis and is a question of fact. The MPEP 2163.04 states: “The inquiry into whether the description requirement is met must be determined on a case-by-case basis and is a question of fact. In re Wertheim, 541 F.2d 257, 262, 191 USPQ…
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