美国专利法最让人困惑的一个要求：说明书充分描述
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相信每个学习美国专利法的人，都会对美国专利法中关于说明书充分公开的两个要求感到困惑。
美国专利法35 U.S.C. 112(a)规定了关于说明书充分描述的两个要求：
The specification shall contain 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, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
上述两处下划线处，分别被称为“书面描述要求”（Written Description）以及“能够实现要求”（Enablement）。
但是，这两个要求的区别是什么？
根据MPEP2162，上述规定背后的政策原因是：专利权人必须公开足够的信息以证明发明人在提交时拥有本发明（对应书面描述要求），并使本领域技术人员能够制造和使用本发明（对应能够实现要求）。
今天分享的文章认为：
理解能够实现要求和书面描述要求之间差异的关键可能是，您可以将本领域技术人员的知识引导到您的专利申请中以满足“能够实现要求”，但在“书面描述要求”下，不允许这样的引导。
这已经是我看到的最简单明了的对两者的区别的说明了，你怎么认为呢？
Patentability: The Adequate Description Requirement of 35 U.S.C. 112
By Gene Quinn | June 24, 2017
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the art will be able to make, use and understand the invention that was made by the inventor. For the most part this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.
The enablement requirement requires the inventor to describe his or her invention in a manner that would allow others in the industry to make and use the invention. Enablement looks to placing the subject matter of the claims generally in the possession of the public.
The best mode requirement requires the inventor to disclose his or her preferred way of carrying out the invention at the time the patent application is filed. There is no requirement that the inventors preferred embodiment be updated as the patent application works its way through the PTO. Best mode looks to whether specific instrumentalities and techniques have been developed by the inventor and are known at the time of filing as the best way of carrying out the invention.
The enablement requirement, thus, looks to the objective knowledge of one of ordinary skill in the art, while the best mode inquiry is a subjective, factual one, looking to the state of the mind of the inventor.
The best mode requirement has now been eliminated from U.S. patent law for the most part. The America Invents Act (AIA), which was signed into law on September 16, 2011, prohibits a claim from being found to be invalid as a result of failure to present the best mode. In other words, during litigation (for example) a defendant cannot challenge a patent claim saying that the inventor failed to disclose the best mode. The best mode requirement, however, continues to live. 35 USC 112(a) continues to require patent applications to contain the best mode of the invention, if in fact one exists.
Given that best mode cannot be used to invalidate a patent claim once it is obtained the best mode requirement is now viewed as a paper tiger. Yes, it is required, but there is no penalty for the inventor or patent owner for failure to disclose the best mode as long as they do not get caught by the patent examiner. Getting caught by the patent examiner is highly unlikely since best mode is subjective and there is really no mechanism for the patent examiner ever to know what the inventor actually knows or believes. Still, the Patent Office has indicated that if a patent examiner stumbles across a best mode violation they will reject claims accordingly. Furthermore, if it really is a preference generally speaking you will want to disclose it so that what you prefer will be able to be claimed.
The third description requirement is the written description requirement, which is also found in 35 U.S.C. §112(a). The written description requirement is separate and distinct from the enablement requirement, although related in important ways. The written description requirement serves a teaching function, as a “quid pro quo” in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.
Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in a truly easy to explain way.
Perhaps the key to understanding the difference between enablement and the written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purposes, but no such bootstrapping is allowable under the written description requirement. If you leave something out it is not a part of your written description even if someone of skill in the art would understand that you left something out. In this sense the written description requirement is a “four corners” requirement. What you include in your patent application defines the possible extent of the exclusive rights you will obtain, nothing more. Once it is known what is in the four corners of your patent application and, therefore, the invention that you actually possess, the law then turns to the enablement question and asks whether one of skill in the art would know how to make and use the invention. In this regard the written description requirement and the enablement requirement are similar and directly related, yet separate requirements.
Source: www.ipwatchdog.com
Each article is copyrighted to their original authors. The news is for informational purposes only and does not provide legal advice.
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