Invalidating an issued patent

Original Claims It is necessary to include a full and complete description of the invention in the initial filing with the Patent Office.

Rearranging of an application is always allowed, but the addition of new material is never allowed.

It is, therefore, necessary to turn to Title 37 of the CFR to expand upon what is actually required.

invalidating an issued patent-11

Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims.

The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims.

In determining the breadth of what is covered by the initial filing the applicant may rely on the description contained in the specification, any drawings filed and the originally filed claims.

Today, as the result of the , patent claims and drawings are no longer required in order to obtain a filing date on a non-provisional patent application.

35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention.

The portion of the application in which he or she does this forms the claim or claims.Therefore, when drafting a patent application it is good practice to spend time drafting quality claims.Do not simply rely upon your ability to add claims later because invariably you will wind up wanting to at some point add claims or elements thereof that are not described in the specification.While patent claims can always be added to an application if the original disclosure as filed will support the claims, it is exceptionally dangerous to file a patent application without drawings.Drawings are almost always going to be required, and adding drawings later will be difficult if not completely impossible because drawings invariably convey more than the textual description of the drawings.2001), which covered both the state of the science and the law: “The Evolution of Patents on Life – Transgenic Animals, Clones and Stem Cells.” Among other topics, I wrote about the successful cloning of Dolly and continued: Continue reading Although non-precedential, Aptalis Pharmatech, Inc. The penultimate patent-invalidating decision of the year, (by Judge Wallach) drew an impassioned partial dissent by Judge Linn, protesting that the “abstract idea exception” was “almost impossible to apply consistently and coherently.” Hard to dispute that!

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