If a drawing is necessary to understand the claimed invention, a filing date will not be accorded to an application filed without a drawing until a drawing is file.
Drawing must be detailed manufacturing drawings.
What three things must the specifcation contain?
A written description, a description sufficient to enable a POSITA to make and use it, and the best mode contemplated by the inventor to carry out the invention.
The inventor has the burden of showing why a description is adequate.
False, the patent office has the burden of showing why a description is inadequate.
Enablement requires that a person of ordinary skill in the art be able to make and use the claimed invention without experimentation.
False. The need for some experimentation does not defeat enablement, only undue experimentation.
Name factors relevant in evaluating description and enablement.
Breadth of the claims.
Nature of the invention.
State of the prior art.
Level of ordinary skill.
Level of predicability in the art.
Amount of direction provided in specification.
Existence of working examples.
Quantity of experimentation required.
The 'best mode' that must be disclosed is that mode that is objectively best.
False. The 'best mode' that must be disclosed is that mode which the inventor considers to be the best.
The specification must be updated by amendment after filing to add a subsequently discovered better mode.
False. The best mode requirement applies to the best mode at the time the application is filed. The specification cannot be updated by amendment for a better mode since that would be 'new matter'.
The best mode must be disclosed and identified as such in the specification.
False. The best mode does not need to be identified since the USPTO assumes that one of the embodiments disclosed is the best mode.
What are the categories of patentable subject matter?
The categories for patentable subject matter are broadly defined as any process, machine, manufacture, or composition of matter, or improvement thereof.
What is the test for nonobviousness?
The test for nonobviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made.
What are the five primary requirements for patentability?
The five primary requirements for patentability are: (1) patentable subject matter, (2) utility, (3) novelty, (4) nonobviousness, and (5) enablement.
A drawing submitted after the filing date may not include "new matter".
Drawings must show all of the claimed elements.
What are the three types of transitional phrases?
Open-ended, closed, and partially closed.
What are two ways to narrow a claim?
Add an element and add a limitation to a previously recited element.
What are the three parts of a claim?
The Preamble, the Transitional phrase, and the Body.
What three characteristics must be satisfied for each claim?
Description, Enablement, and Best Mode.
What are the three most common transitional phrases used?
Comprising, consisting of, and consisting essentially of.
What are the four categories of the invention in the preamble?