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Chisum on Patents
Copyright 2016, Matthew Bender & Company, Inc., a member of the LexisNexis Group.

3-7 Chisum on Patents 7.syn


Adequate Disclosure


Donald S. Chisum

Chapter Summary


To obtain a valid patent, the applicant must file a specification that fully discloses the invention, including how to make and use it. This chapter of Chisum on Patents (Matthew Bender) covers Section 112 of the Patent Act, which codifies the requirement of adequate disclosure. This requirement aims to provide the public with a benefit for the limited monopoly it grants to the applicant.

The chapter traces the historical development of the disclosure requirement in the Patent Acts of 1790, 1793, 1836, 1870, and 1952. Section 112, enacted as part of the Patent Act of 1952, indicates what an applicant must set forth and describe, namely, the invention (the description requirement), the manner and process of using the invention (the enablement requirement), and the best mode contemplated by the inventor for carrying out his invention (the best mode requirement).

Next, the chapter explains the enablement requirement. It addresses leading U.S. Supreme Court and Federal Circuit enablement cases, the standard by which courts evaluate whether an application is enabling, time frame problems, and the factors courts consider in determining whether a disclosure would require undue experimentation. It also discusses the how-to-make and how-to-use aspects of the enablement requirement; instances when a patent may be too-broad; whether enablement is a question of law or fact; and the burdens of proof in making a prima facie case for enablement and rebutting such a showing.

The chapter also covers the description requirement. It explains how the description requirement developed distinctly from the enablement requirement; provides an overview of leading CCPA and Federal Circuit decisions, such as Fields v. Conover, in which the court discussed the distinction between the description and enablement requirements; addresses description requirement problems that may arise if a new claim is for a broader or different subject matter from that originally claimed or disclosed; covers description requirement problems that can arise if a new claim adds a narrowing limitation or concerns subject matter that is specific or subgeneric to an original claim; discusses whether a range limitation complies with the description requirement when the limitation is not explicitly set forth in the patent's specification; and covers Patent and Trademark Office guidelines pertaining to the description requirement.

The chapter concludes with a discussion on the best mode requirement. It covers the Federal Circuit's two-prong inquiry for determining best mode disclosure compliance, which asks whether the inventor possessed a best mode for practicing the invention at the time of filing, and whether the written description disclosed the best mode such that one reasonably skilled in the art could practice it. The chapter also addresses the time frame for evaluating compliance with the best mode requirement, and the level of detail mandated by the best mode requirement.

Chisum on Patents is the leading authority on U.S. patent law, and has been cited more than 700 times by the U.S. Federal Courts. This renowned publication provides attorneys with all the information required to secure a patent and protect a patent claim. Chisum on Patents covers all areas of U.S. patent law, including application, validity, infringement, and significant precedents as determined by case law and amended statutes. It provides a chronological view of the law and its development, its current status in the patent world, and possible future direction. It also details major court decisions, patent statutes, and regulations, and features the Federal Circuit Guide, which supplies abstracts--arranged by topic and date--of all the published decisions of the Court of Appeals since the Court began in 1982.


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Chapter 8 discusses claims, including the definiteness and particularity of claims, functional language in claims, and selected problems in claims drafting.


For complete coverage of proper procedures for filing patent applications and securing patent rights with the U.S. Patent and Trademark Office, including over 350 forms, see Patent Office Rules and Practice (Matthew Bender).

For complete coverage of licensing in all substantive areas of intellectual property, along with practical guidance on drafting individual clauses and complete agreements, see Milgrim on Licensing (Matthew Bender).

For guidance on every aspect of the patent process, from filing to grant, for all industrialized nations, see Baxter World Patent Law (Matthew Bender).

For timely, practical discussion on matters pertaining to a company's intellectual property assets, see Corporate Counsel Solutions: Intellectual Property Management: Strategies & Tactics (Matthew Bender).
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