Legal requirements for patentability 5

Question 1

Disclosure requirement

Answer 1

1. Facilitate dissemination and access to tech info contained in patents.
2. Enables learning on new inventions without “reinventing the wheel” to avoid duplicative efforts and investments in R&D
3. Ensures patent rights are not extended to something withheld from the public –> difficult to justify patent grant if granted patent claimed invention was not invented prior to the filing date nor disclosed in patent application as filed.
4. Ensures scope of claim scope of the patent protection defined by claims is clearly communicated to others to avoid infringement of or bring about challenge to the patent.

Question 2

Disclosure requirement comprised provisions (depending on jurisdiction)

Answer 2

1. support requirement (in US–> written description requirement)
2. an enablement requirement; and
3. a clarity requirement
4. best mode requirement

Question 3

Support requirement (or written description requirement[US])

Answer 3

1. functions to balance the breadth of the claims (i.e. the scope of patent protection) with what is disclosed in the description and drawings.
2. must provide basis for description for the subject matter of every claim and the scope of the claims must not be broader than is justified by the description and drawings.
3. general rule –> claim is regarded as supported by description unless well-founded reasons for believing person skilled in the art would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed.

Question 4

Professional tip

Answer 4

1. Assess whether invention is patent-eligible subject matter in jurisdiction(s) which patent protection is sought –> if not, you will not be able to obtain a patent even if the invention is both novel and inventive/non-obvious.

Question 5

Written description requirement

Answer 5

1. patent specification must describe claimed invention in sufficient detail that a person skilled in the art would reasonably conclude inventor had possession of the claimed invention at time application was filed.

Question 6

prof. tip

Answer 6

1. once application is filed, you will no longer be able to add new subject matter to the disclosure as of the filing date
2. if app is not properly drafted –> difficult to meet disclosure requirement by amending app at a later date.

Question 7

Enablement requirement

Answer 7

1. many countries require applicant disclose invention sufficiently, clearly and completely so that person skilled in the art can make/use claimed invention…
2. novel aspects (/features) of the invention are required to be explicitly disclosed in detail in the enabling manner.
3. the more that is known about the nature of invention in prior art/ the more the art is predictable –> less information needed in application itself for person skilled in the art to carry out the invention.

Question 8

Clarity (definiteness) requirement

Answer 8

1. clear and concise claims
2. claims must distinctly define the subject matter of the invention/ no vague nor indefinite terms.

Question 9

Best mode requirement

Answer 9

1. At least one mode must be disclosed in the description.
2. U.S. –> applicant must disclose “best” mode of carrying out the claimed invention as contemplated by the inventor at the filing (or priority date)
3. based on principle of equity; require inventors be fair and prevents inventors from disclosing what they know to be the second-best way of carrying out the invention while reserving best way exclusively for themselves. (however not grounds for cancellation, invalidation or holding it to be unenforceable)