What is the significance of 35 U.S.C. 112 in patent examination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

35 U.S.C. 112 is a crucial statute in patent law that sets forth several requirements for the specification and claims of a patent application. The MPEP 706.03 mentions that rejections based on 35 U.S.C. 112 are discussed in MPEP §§ 2161 – 2174 and 2185. These rejections are significant because they address fundamental aspects of patent disclosure and claim clarity.

Key requirements under 35 U.S.C. 112 include:

• Written description (112(a)): Ensures the applicant has possession of the claimed invention
• Enablement (112(a)): Requires the specification to teach how to make and use the invention
• Definiteness (112(b)): Ensures claims are clear and definite
• Means-plus-function claims (112(f)): Provides rules for interpreting functional claim language

Rejections under 35 U.S.C. 112 are not based on prior art but on the application’s compliance with these statutory requirements. They play a crucial role in ensuring that patents provide clear and complete disclosures of inventions to the public.