How do the requirements for patent specifications differ between pre-AIA and AIA applications?
The requirements for patent specifications under 35 U.S.C. 112 are similar for both pre-AIA (applications filed before September 16, 2012) and AIA (applications filed on or after September 16, 2012) applications, but there are some differences in the language and structure of the statute.
For AIA applications, 35 U.S.C. 112(a) states:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”
For pre-AIA applications, the first paragraph of 35 U.S.C. 112 states:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
The main differences are:
- The AIA version refers to “inventor or joint inventor,” while the pre-AIA version only mentions “inventor.”
- The structure of the statute has changed, with the AIA version organizing the requirements into subsections (a), (b), (c), etc.
Despite these differences, the core requirements of written description, enablement, and best mode remain the same for both pre-AIA and AIA applications.
To learn more: