Patent Applications: Written Description

One of the most important aspects of the patent application is the written description requirement. Under the written description requirement, the applicant must provide a clear description of what is being claimed for patent protection. It is what the inventor hopes to receive in exchange for what the disclosure. The written description requirement may be satisfied by describing several elements, or claims. The claims define the boundaries of what is to be protected by a patent, and, in a patent infringement action, the analysis of whether a patent has been infringed will begin with a construction of the claims to determine what is protected by the patent. In addition, the written description of the invention serves the main objective of patent law by placing into the realm of public knowledge the new ideas embodied by the invention.

Under the Patent Act’s application requirements, the manner and process of making and using the invention to be patented must be described in sufficiently full, clear, concise, and exact terms to enable a person of ordinary skill in the field in which the invention is classified (the “art”) to make and use the invention. This requirement ensures that the invention is described and communicated to the public in a meaningful way so that the invention contributes to public knowledge; accordingly, a patent claim may be ruled invalid if it is not supported by an enabling description.

The best mode requirement ensures that an inventor discloses the best way he or she knows of making and using the invention. This prevents an inventor from providing public knowledge of a functional yet inferior invention while keeping for his or her own benefit a better invention. Failure to disclose the best mode of making and using an invention may lead to the invalidation of a patent. Determination of whether the best mode has been disclosed is largely a subjective process. An inventor is not required to disclose as the best mode the use of a material in the invention that would render the invention commercially impractical even though use of that material would enhance the performance of the invention. In addition, if certain aspects of an invention perform equally well with several alternatives, the best mode requirement does not require an inventor to choose among the alternatives.

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