Watermark

In 1999, the United States Patent and Trademark Office ("USPTO") published training materials regarding the examination of patent applications under the written description requirement of 35 U.S.C. § 112, first paragraph. That is, in order to obtain a valid patent, an applicant must include in the specification a description adequately disclosing the invention and how to make and use it. 

The written description requirement has several policy objectives. According to the USPTO, the 'essential goal' of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed. Another objective is to put the public in possession of what the applicant claims as the invention. The 'written description' requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor's obligation to disclose the technological knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed. Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practising the invention for the duration of the patent's term.

Since 1999, the case law and technology have developed in such a way as to necessitate a revision of the 1999 training materials. Consequently, the USPTO revised its Written Description Training Materials and released them on 26 March 2008.

The purpose of the training materials is to improve the quality and consistency of patent examination, by teaching examiners how to apply statutory provisions of the US Patents Act in light of case law, as well as provide guidance to practitioners for the drafting of patent applications and responses to examiners. 

This publication would be a valuable adjunct to the USPTO Manual of Practice and Procedure for IP practitioners, particularly those operating in the biotechnology space as many examples given in the manual relate to biotechnological subject matter such as gene sequences, DNA hybridization, partial protein structure, bioinformatics, antibodies etc.

The Written Description Training Materials can be viewed at www.uspto.gov/web/menu/written.pdf.
Bruce Dowsing