Boston University's patent claim invalidated for failing to enable its full scope In Boston University v. Everlight Electronics (Fed. Cir. 2018), the Federal Circuit invalidated a patent claim for failing to enable the full scope of the claimed invention. In particular, the claim contemplated six (6) combinations based on two factors. The first factor had two options. The … [Read more...]
Writing a patent application
Writing a patent application for an invention requires one to satisfy the written description and enablement requirements.
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Components, parts and aspects of a device (i.e., invention) which are described as important or necessary to the invention can be used to limit the scope of the patent. When preparing a patent application, the goal is to describe an invention so that the important or necessary parts are highlighted but not necessarily described as important or necessary. In this way, aspects … [Read more...]
The written description requirement is stated in 35 U.S.C. 112 which recites that the “specification shall contain a written description of the invention.” The standard for the written description requirement is whether the disclosure or application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter. A body of case law … [Read more...]
The drawings for a design patent application is the most important part of the design patent application. The drawings define the scope of protection afforded under the design patent. The drawings for the design patent application are not designed to tell a story as in the drawings for a utility patent application. Rather, because a design patent protects the ornamentation … [Read more...]
The drawings for a utility patent application are one of the most important parts of the patent application. The drawings are a quick, easy way to establish some understanding of what to expect if one were to spend time reading the utility patent or application. Patent rules also require the drawings show what is being claimed as the invention. Moreover, without the drawings, … [Read more...]
A patent specification has a number of different legal requirements. One of those requirements is that the patent specification must provide a “written description” of the claimed invention. 35 U.S.C. § 112 recites that the “specification shall contain a written description of the invention ….”An excerpt from the Stanford case discussed below explains the standard to … [Read more...]
Scriptpro LLC v. Innovation Associates, Inc. (Fed. Cir. 2016) is an opinion that provides pointers on how to write a patent application based on a few of the arguments that were presented by the defendant attempting to invalidate the patent, specifically, failure to satisfy the written description requirement. By anticipating these types of arguments, it may mitigate potential … [Read more...]
In GPNE Corp. v. Apple Inc. (Fed. Cir. August 1, 2016), the written description was presented in a way that narrowly described the invention, and thus the court ascribed a narrow meaning to the terms of the claims and found no patent infringement liability against the defendant. Although the claims define the metes and bounds of what is protected under a patent, the terms of … [Read more...]