Patent Spec Training Series

Writing Description

By, Arun Narasani CEO

Description Requirements India

Section 7(4): Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification. Section 10(1): (1) Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates. Section 10(4)(a): fully and particularly describe the invention and its operation or use and the method by which it is to be performed; Section 10(4)(b): disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection;

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Description Requirements India

Section 64(1) : Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say -

(h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;

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Description Requirements India

MPPP 05.03.08:

The nature of improvements or modifications effected with respect to the prior art should be clearly and sufficiently described. The details of invention described should be sufficient for a person skilled in the art to perform the invention. Examples must be included in the description, especially in the case of chemical related inventions. The details of invention described should enable a person skilled in the art to reduce the invention into practice without further experimentation.

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Description Requirements India

MPPP 05.03.11

The Act specifically requires that the complete specification must describe the best method of performing the invention known to the applicant, including that, which he may have acquired during the period of provisional protection prior to the date of filing the complete specification.

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Description Requirements India

Describe the invention

fully, particularly, and sufficiently

a person with average skill in the art operation or use, and method no further experimentation required must be disclosed even if acquired after filing provisional
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Enable

Best method

Description Requirements US

US 35 USC 112

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
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Description Requirements US

MPEP 608.01(g)

.. This detailed description, required by 37 CFR 1.71, MPEP 608.01, must be in such particularity as to enable any person skilled in the pertinent art or science to make and use the invention without involving extensive experimentation. The description is a dictionary for the claims and should provide clear support or antecedent basis for all terms used in the claims.
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Description Requirements US

MPEP 2165: The Best Mode Requirement

Determining compliance with the best mode requirement requires a two-prong inquiry. First, it must be determined whether, at the time the application was filed, the inventor possessed a best mode for practicing the invention. This is a subjective inquiry which focuses on the inventor's state of mind at the time of filing. Second, if the inventor did possess a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art. Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001).

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Description Requirements US

Written description

particularity
any person skilled in the art make and use the invention no extensive experimentation required

Enable

Best Mode

must be disclosed

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Relevant Case Law India

Ram Nair Kher vs Ambassador Industries New Delhi

Facts:

The plaintiff owns rights on air cooler technology Technology involves change in the position of fan for cooler The plaintiff seeks injunction restraining the defendants from adapting the method and process for manufacturing, selling or offering for sale air coolers in infringement of the plaintiff's patent (Patent No. 1133W) The defendants in their reply resisted the application, on the ground that the Plaintiff's patent was not valid

Claims were vague Not an invention No inventive step No sufficient description

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Ram Nair Kher vs Ambassador Industries New Delhi (Contd..)

Relevant Extracts:

18. It is incumbent under Section 10(4) of the Act to fully and particularly describe the invention and its operation or use and the method by which it is to be Performed and disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection ending with a claim or claims defining the scope of the invention for which protection is claimed. 19. The claim of the plaintiff is singularly silent on the above-said aspect.

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Ram Nair Kher vs Ambassador Industries New Delhi (Contd..)

Relevant Extracts:

20. The defendants by their plea that the invention and the advantages claimed by the plaintiff had not been adequately described in the Patent and adequately claimed in the claim to bring it within the ambit of the term "invention" within the meaning of the Act raise arguable matters thereby disputing the validity of the patent in question. 13. From a Perusal of the claim made by the plaintiff before the Patent authority it is not claimed that the design proposed by the Plaintiff was an improvement on any Previously existing coolers in that there would be 25 per cent, additional advantage of added cooled air by fixing the fan on the top of the cooler than in the customary way hitherto known in the front of the cooler as was sought to be urged during the course of arguments.

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Relevant Case Law US

Written Description

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (March 22, 2010)

Facts

Ariad brought suit against Eli Lilly & Company (Lilly) in the United States District Court for the District of Massachusetts, alleging infringement of U.S. Patent 6,410,516 Technology relates to regulating cellular responses to external stimuli by reducing NF-B activity in a cell Jury found infringement Federal court held the asserted claims invalid for lack of written description Ariad petitioned for rehearing, challenging this courts interpretation of 35 U.S.C. 112 Held the asserted claims of the 516 patent invalid for failure to meet the statutory written description requirement

http://scholar.google.com/scholar_case?case=16839299739460156957&q= ariad+pharmaceuticals&hl=en&as_sdt=400003 http://www.cafc.uscourts.gov/images/stories/opinions-orders/08-1248.pdf

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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Contd..)

According to Ariad, there is no separate written description requirement, the description is just to identify what needs to be enabled Lilly, on the other hand, argued that two hundred years of precedent support the existence of a statutory written description requirement separate from enablement. Observed that there was no conflict between the existence of a separate written description requirement and the function of claims
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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Contd..)

Relevant Extracts: claims vs written description

Claims define and circumscribe, the written description discloses and teaches generic claim language appearing in ipsis verbis in the original specification does not satisfy the written description requirement if it fails to support the scope of the genus claimed. applies to all claims and requires that the specification objectively demonstrate that the applicant actually inventedwas in possession ofthe claimed subject matter.

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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Contd..)

Relevant Extracts

If Congress had intended enablement to be the sole description requirement of 112, first paragraph, the statute would have been written differently. With regards to what would satisfy the requirement, the court said that the test requires an objective inquiry into .. the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must . . . show that the inventor actually invented the invention claimed. the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.

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Description Requirements US

Written description

particularity show possession/conception

any person skilled in the art make and use the invention no extensive experimentation required

Enable

Best Mode

must be disclosed
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Relevant Case Law US

Enablement

In re Jack R. WANDS, Vincent R. Zurawski, Jr., and Hubert J.P. Schoemaker. (In re Wands)

Facts

BPAI (board) affirms rejection of all remaining claims in appellant's application for a patent, serial No. 188,735 Technology relates immunoassay methods for the detection of hepatitis B surface antigen by using highaffinity monoclonal antibodies of the IgM isotype. Appeal was on the decision to reject based on lack of enablement under 35 U.S.C. 112

http://scholar.google.com/scholar_case?case=16406163868 531495639&q=in+re+wands&hl=en&as_sdt=400003

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In re Wands (Contd..)

Applicants argued that:

monoclonal antibodies needed to perform the immunoassays

can be made from readily available starting materials using methods that are well known in the monoclonal antibody art.

application of these methods to make highaffinity IgM anti-HBsAg antibodies requires only routine screening, and that does not amount to undue experimentation.
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In re Wands (Contd..)

Relevant extracts

The determination of what constitutes undue experimentation in a given case requires the application of a standard of reasonableness, having due regard for the nature of the invention and the state of the art. "undue experimentation" does not appear in the statute, but it is well established that enablement requires that the specification teach those in the art to make and use the invention without undue experimentation. Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.

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In re Wands (Contd..)

Relevant Extracts

Factors to be considered in determining whether a disclosure would require undue experimentation .. include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (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, and (8) the breadth of the claims.
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Description Requirements US

Written description

particularity show possession/conception of invention

any person skilled in the art make and use the invention no extensive experimentation required (without undue experimentation) must be disclosed

Enable

Best Mode

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Relevant Case Law US

Best Mode

Extracts from MPEP 2165

"The best mode requirement creates a statutory bargainedfor-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention." Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001). The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).

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Extracts from MPEP 2165

Determining compliance with the best mode requirement requires a twoprong inquiry. First, it must be determined whether, at the time the application was filed, the inventor possessed a best mode for practicing the invention. This is a subjective inquiry which focuses on the inventor's state of mind at the time of filing. Second, if the inventor did possess a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art. Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001). The failure to disclose a better method will not invalidate a patent if the inventor, at the time of filing the application, did not know of the better method OR did not appreciate that it was the best method. All applicants are required to disclose for the claimed subject matter the best mode contemplated by the inventor even though applicant may not have been the discoverer of that mode. Benger Labs. Ltd. v. R.K. Laros Co., 209 F. Supp. 639, 135 USPQ 11 (E.D. Pa. 1962).

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Extracts from MPEP 2165

ACTIVE CONCEALMENT OR GROSSLY INEQUITABLE CONDUCT IS NOT REQUIRED TO ESTABLISH FAILURE TO DISCLOSE THE BEST MODE

Failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable conduct in order to support a rejection or invalidate a patent. Where an inventor knows of a specific material that will make possible the successful reproduction of the effects claimed by the patent, but does not disclose it, speaking instead in terms of broad categories, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 555, 193 USPQ 1 (6th Cir. 1977). If the failure to set forth the best mode in a patent disclosure is the result of inequitable conduct (e.g., where the patent specification omitted crucial ingredients and disclosed a fictitious and inoperable slurry as Example 1), not only is that patent in danger of being held unenforceable, but other patents dealing with the same technology that are sought to be enforced in the same cause of action are subject to being held unenforceable. Consolidated Aluminum Corp. v. Foseco Inc., 910 F.2d 804, 15 USPQ2d 1481 (Fed. Cir. 1990).

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Rules

Rule 1: description separate from enablement

Recognize that it is possible to enable without showing that the inventor possessed the invention Clearly identify what the invention is before getting into describing the embodiments

Review claims Clearly identify the underlying principle of the invention

Tied to 101 requirement: Whoever invents or discovers ..

Ensure that all the elements including those in preamble appear in at least one drawing For India applications, clearly specify the advantages of the invention over prior even if it is not an improvement over specific prior art

Even if a step is not claimed and is not required for enablement, include the step in description to show that the invention is actually invented

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Rule 2: enable enable enable

Ask yourself if you understand the invention stepby-step

If you do not, most POSA will not Explain each step in the overall process or each essential element in detail

Try to include examples wherever possible Question generality of words

Review claim language Ensure that each general word in claim has at least specific example in the description

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Rule 3: ensure best mode

Ensure that we ask for best mode from inventor

Change language in ID to specifically use the word best mode Communicate at the time of disclosure

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Rule 4: educate inventors/applicants

Inventors/applicants may be reluctant to provide more information

The more information the inventor provides the better is the application Our job is not to create inventions, but it is our responsibility to point out legal requirements and convince them to provide as much information as possible Suggest alternative approaches to reach business goals while insisting on quality of application

Insist on more information

Escalate when you see that the information provided is not sufficient

Copying superior over email is sufficient usually

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Thank you
Arun Narasani www.brainleague.com