Drafting Quality Patents to Avoid §112 Rejections
Common Client Section 112 rejections are a fairly common basis for rejection at the USPTO, and pinning down the requirements and boundaries of Section 112 is a continuous struggle for patent practitioners, patent examiners, and courts, alike.
Section 112 of Chapter 35 of the United States Code lays out a few seemingly simple requirements for obtaining a patent from the USPTO. The statute’s simplicity, however, is only superficial.
Receiving an office action that cities a 112 rejection has several undesirable consequences. Section 112 rejections increase patent pendency times and often result in unnecessary delays in the patent prosecution process. As with replying to any office action, responding to a 112 rejection increases patent prosecution costs and thereby decreases patent prosecution efficiency. Moreover, arguments presented to patent examiners to overcome Section 112 rejections become part of the prosecution history and can lead to weaker, less defensible patents by way of prosecution history estoppel. As a result, it is important that patent practitioners take the time and use available resources to ensure compliance with Section 112 to facilitate a smooth patent prosecution process.
The basis for “enablement” and “definiteness”
Section 112, Paragraph (a) imposes what is often referred to as the “enablement” requirement. More specifically, 37 C.F.R. § 112(a) requires that patent applicants include in their patent applications a specification containing “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 . . . to make and use [the invention].” Section 112, Paragraph (b), on the other hand, is the basis for the “definiteness” requirement. Paragraph (b) requires that the specification of a patent or patent application concludes with at least one claim “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
The USPTO views Section 112(b) as being two separate requirements. First, the claims must lay out the subject matter that the inventor regards as the invention, and, second, the claims “must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant.” The second requirement, being more objective, presents the question of whether the scope of a claim is clear to a hypothetical person, and can easily become the issue of debate if care is not taken when the claim is drafted.
Avoiding Section 112 rejections
The LexisNexis PatentOptimizer® patent drafting tool has been designed to help patent professionals consistently draft high-quality, well-tailored patent applications, and it streamlines the patent prosecution process by helping to avoid 35. U.S.C. § 112 rejections. Easily accessible as a toolbar in Microsoft Word, Adobe products, web browsers, and other common drafting environments, PatentOptimizer® is capable of reviewing a patent specification to assess whether it provides a sufficient written description, and it can both identify claim errors and capture Section 112 errors. Additionally, PatentOptimizer helps to identify patent profanity, inaccurate or inconsistent part names and numbers, inconsistent measurement conversions, and even reviews the overall quality of a patent before submission to the USPTO.
Find more information on PatentOptimizer and an objective application review here.
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