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Patent DNA: by Nitin Brain League IP Services
Patent DNA: by Nitin Brain League IP Services
Patent DNA: by Nitin Brain League IP Services
By
Nitin
Brain League IP Services
Sections of a patent specification
Abstract
Field of invention/technical field
Background of invention/prior art
Objects of the invention
Summary of invention
Brief description of figures
Detailed description
Claims
Requirements for a specification
35 U.S.C §112 paragraph 1:
“The specification shall contain a written
description of the invention, and of the
manner and process of making and using it,
in such full, clear, concise, and exact terms
as to enable any person skilled in the art to
which it pertains, or with which it is most
nearly connected, to make and use the
same, and shall set forth the best mode
contemplated by the inventor of carrying
out his invention.”
Requirements for a specification
In other words, the requirements of
a specification are
A) The enablement requirement;
B) The best mode requirement; and
C) The written description requirement.
Requirements for a specification
A) Enablement requirement:
The inventor must disclose the
invention in sufficient detail to allow
one of ordinary skill in the art to
practice the invention without undue
experimentation.
This requirement extends only to the
invention “as claimed”.
Requirements for a specification
The level of detail in the specification
depends on the level of a fictional
“person of ordinary skill in the art”
Requirements for a specification
Factors that need to be considered whether a
disclosure requires undue experimentation:
1) the quantity of experimentation necessary;
2) the amount of direction or guidance presented;
3) the presence or absence of working samples;
4) the nature of the invention;
5) the state of the prior art;
6) the relative skill of those in the art;
7) the predictability or unpredictability of the art;
8) the breadth of the claims.
Requirements for a specification
MPEP states that
“while no specific universally applicable rule
exists for recognizing an insufficiently
disclosed application involving computer
programs, an examining guideline to
generally follow is to challenge the
sufficiency of such disclosures which fail to
include either the computer program itself
or a reasonably detailed flowchart which
delineates the sequence of operations the
program must perform.”
Requirements for a specification
MPEP states that with regards to the
hardware side of the invention
“the examiner should determine whether
certain of the hardware or software
components depicted as block elements are
themselves complex assemblages which
have widely differing characteristics and
which must be precisely coordinated with
other complex assemblages.”
Requirements for a specification
In case of ASIC design, ideally describe the
simulation program and then illustrate the
operations performed by the hardware
using flow charts or state diagrams.
Requirements for a specification
B) Best mode requirement:
Disclose the last, best way of making or using the
invention that is known to the inventor at the time of
filing the application.