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How Do I Make Sure My Specification Teaches Adequately?

The issued patent requires the patent to adequately teach "one of skill in the art" how to make and use the invention. There are several things to look for in the Specification (what patent attorneys call "the spec") to determine whether such teaching is adequate:

  • Start with the Claims. Do the claims provide a "skeleton" for the entire patent? Are the claims recited verbatim in Summary and Detailed Description?
    • Do claims include "things?" If so, are they eligible under §101?
    • Do claims include "methods/processes?" If so, are they eligible under §101?
    • Are all claims novel under §102?
    • Are all claims nonobvious under §103?
    • Are all claims "enabled" and "fully, clearly, concisely and exactly" described?
    • Are all claims supported by text to show that the inventor was "in possession" of the invention at the time of filing?
  • Find the language of the claims revised in prose in the Summary. Do broad claims read to "cover" all dependencies no matter what order?
  • Find the revised prose of the Summary in the Detailed Description. Are significant details added ("meat on the bones")? Does the Detailed Description provide enough detail to enable one of skill to make and use the claimed invention?
  • Is there evidence of "reduction to practice" provided? Do examples provide details of multiple species? Do examples include educated, but unenabled guesses?
  • Are technical terms defined and used consistently throughout?
  • Are there enough figures to provide "one of skill in the art," a basis to understand the invention? Is it clear that the inventor(s) had "possession" of the invention?

See our related article on what sections are included in the specification and what each section must include.

≡
  • Should I choose to patent an innovation, or protect it as a trade secret?
  • What is "patent eligibility" under US patent law?
  • What is "novelty" under US patent law?
  • What is "obviousness" under US patent law?
  • What is "enablement" under US patent law?
  • What is the "written description" requirement under US patent law?
  • What is a US "Utility" patent application?
  • What is a US "Design" patent application?

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Torrey Pines Law Group, PC serves technology innovators with protecting intellectual property, obtaining regulatory approvals and clearances, and making deals and closing technology transactions throughout the U.S., including in major technology hubs such as San Diego, San Francisco, Palo Alto, San Jose, Silicon Valley, Boston, Cambridge, Chicago, Minneapolis, Houston, Dallas, Atlanta, Denver, Seattle, Portland, Boulder, Orlando, the Research Triangle (Raleigh, Durham, and Chapel Hill), the Mid-Atlantic (New Jersey, New York, Philadelphia, Maryland, Virginia, and Washington, DC), Pittsburgh, Cleveland, Ann Arbor, and throughout Southern California in Los Angeles, Orange County, Irvine, Torrey Pines, Sorrento Valley, and La Jolla.

We have experience with international intellectual property, regulatory and transactional matters pending in Beijing, Shanghai, Shenzhen, and Guangzhou China; Tokyo, Japan; Berlin, Munich and Frankfurt Germany; Tel Aviv Israel; Mumbai, Bengaluru, and New Delhi India; London and Edinburgh United Kingdom; Vancouver, Toronto, Calgary and Montreal Canada; Dublin, Ireland; Cape Town, South Africa; Mexico City and Tijuana Mexico; Brussels, Belgium; Copenhagen, Denmark; Paris, France; Madrid and Barcelona Spain; Moscow, Russia; Santiago, Chile; Montevideo, Uruguay; Buenos Aires, Argentina; Sao Paulo and Rio de Janeiro Brazil; Seoul, South Korea; Taipei, Taiwan; Hong Kong; Hanoi, Vietnam; Bangkok, Thailand; Kuala Lumpur, Malaysia; Milan, Italy; Singapore; Sydney, Melbourne, Perth and Adelaide Australia; Auckland, New Zealand; Oslo, Norway; Stockholm, Sweden; Helsinki, Finland; Kiev, Ukraine; Budapest, Hungary; Vienna, Austria; Prague, Czechia; Geneva and Lausanne Switzerland; Bahrain; Doha, Qatar; Abu Dhabi and Dubai UAE; and Jeddah, Saudi Arabia.