Connecting the Dots or Swiss Cheese: Does Your Patent Application Have Holes? Written Description and Enablement Requirements Unchanged by Patent Reform

摘要

With enactment of the America Invents Act ("Patent Reform") in September 2011, the US patent system entered an 18-month transition from a first-to-invent system to a "first inventor to file" system for new patent applications filed on or after March 2013. The change is significant not only for what it does change, but also for what it does not change. Patent Reform changes the rules for determining patentability over prior information, but leaves unchanged the requirements for determining the technical information for adequate disclosure to support an invention claimed in a patent. Under Patent Reform, in response to a perceived pressure to be the 'first to file,' a US patent applicant may file a patent application before taking time to obtain the information needed for adequate disclosure of an invention. The result is a potential trap for the unwary patent applicant who files an application quickly, only to learn (possibly years later) that they are unable to obtain or defend a patent on their invention.