written description

Federal Circuit Reemphasizes the Importance of Compliance with the Written Description Requirement

Difficult economic times force companies to reevaluate current and future business opportunities.  For many companies, one of the most valuable ways to secure a stable future is to obtain a solid patent portfolio. 

In order for a company to have a strong patent portfolio it must first, of course, be innovative.  But also important, it must prepare and prosecute patent applications that support the full scope of the claims to capture and protect all to which the inventors should be due.   

            To assist their clients, many patent lawyers are tempted to draft very broad patent claims.  Should the Patent Office deem these broad claims patentable over the prior art and the patent proceed to issuance, the patentee may appear able to enjoy a right to prevent others from making, using, and selling a broad class of products or services. 

The Court of Appeals for the Federal Circuit (CAFC), however, recently reminded patentees that in addition to having claims directed to subject matter that is novel and non-obvious, 35 U.S.C. §§ 102, 103, a patent application must satisfy the requirements of 35 U.S.C. § 112, which include the written description requirement.