IP: Sufficiency of disclosure and the great divide between the U.S. and Europe
A close analysis of the disparate c in the United States and Europe demonstrates that such harmonization is incomplete.
February 26, 2014 at 03:00 AM
7 minute read
The original version of this story was published on Law.com
The United States patent system has undergone significant change within the last few years. In particular, it has transitioned from a first to invent system to a first to file system. Some commentators have suggested that such change is an attempt to further “harmonize” the U.S. patent system with other patent systems of the world, such as the one in Europe.
However, a close analysis of the disparate disclosure requirements in the United States and Europe demonstrates that such harmonization is incomplete. Indeed, a number of patent practitioners regularly must plan for and address the significant “sufficiency of disclosure” differences that exist between these two systems when drafting and prosecuting patent applications, and enforcing patents. This is especially problematic for patent families in which such cases are prosecuted in the United States and Europe with the same or similar specification and claims.
The United States is a two-step process: one step focusing upon what is actually invented (i.e., “written description”) and the other focusing upon what has been enabled for a person skilled in the art (i.e., “enablement”). In other words, to illustrate written description, the patent applicant/inventor must clearly describe what the inventive technology is, how to utilize and make the invention, and what the advantageous outcomes of the invention are. The goal is that a person of ordinary skill in the art can precisely understand and reproduce (without undue experimentation) what the inventor has claimed as his/her invention.
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