There are several criteria, critical to the patent-drafting process, which must be fulfilled by the specification to make it suitable for consideration as a patentable disclosure. If these criteria are not met, it can jeopardize the chances of patentability, and derail an otherwise sound IP strategy. These criteria relate to the contents of the disclosure itself, and are in addition to the requirements of novelty and non-obviousness (or inventive step). These criteria include written description and enablement.
Briefly, the written-description requirement obligates the inventor to disclose the nature of the invention in enough detail that a PHOSITA would be able to perform, operate, synthesize, or produce the invention. This does not mean that the specification needs to be an instruction manual for the invention, but the invention should be sufficiently disclosed during the patent-drafting stage such that it would not require undue burden or experimentation for a PHOSITA to understand how the invention can be implemented.
The enablement requirement obligates the inventor to show that one had adequate possession of the invention at the time of filing. This means that the disclosure cannot refer to technical aspects that are not readily apparent with regard to the practice or performance of those aspects at the time the application is submitted. The enablement requirement is a separate and distinct requirement from the written-description requirement. Patent analysis performed at the onset can safeguard against missing costly mistakes.
Prior to the signing of the America Invents Act (AIA) on September 16, 2011, the best-mode requirement was solely unique to the USPTO, and obligated the inventor to disclose the best way of practicing or performing the invention. However, the best-mode requirement did not obligate the inventor to indicate which embodiment described in the specification was the best mode. With the AIA, the best mode no longer needs to be included in a patent disclosure.
Concomitantly, the patent drafting of a specification should factor these criteria into the larger issue of maintaining breadth of scope of the invention. The skilled attorney artfully describes the technical aspects with the right level of detail, taking care to capture the invention broadly, while avoiding any legal pitfalls. IP strategy and positioning rely on accurately assessing whether one’s technology landscape is a patent desert, island, jungle, forest, or thicket. Such an approach creates fertile ground from which to generate strong patent claims.
A few words should be said about including definitions in specifications – proceed with caution. Definitions can be very helpful in broadening the scope of a patent, but that assumes that one has accurately assessed what the broadest scope is in defining the IP strategy. As technology changes, sometimes applications arise that one would never have considered during the patent-drafting stage. If carefully constructed, definitions can safeguard against short-sighted vision, and prevent legal openings for litigation attorneys to exploit. As the USPTO’s Manual of Patent Examining Procedure (MPEP) states:
An applicant is entitled to be his or her own lexicographer and may rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is different from its ordinary and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so ‘with reasonable clarity, deliberateness, and precision’ and, if done, must ‘“set out his uncommon definition in some manner within the patent disclosure” so as to give one of ordinary skill in the art notice of the change’ in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)). Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999) (meaning of words used in a claim is not construed in a ‘lexicographic vacuum, but in the context of the specification and drawings’). Any special meaning assigned to a term ‘must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.’ Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998).
FlashPoint IP factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
