1. Written Description: Sufficient to show you were able to accomplish your invention at time of filing.
a. Difference From Enablement
(A) For enablement courts look at if patent is too broad. In general, courts only take extra-hard look at description when inventor has changed claims afterwards. Otherwise, court applies lower enablement standard. Not statutory, but this is how it works in caselaw.
(B) WD: Arises in narrow subset – where you filed application than made changes to the claim that don’t seem to map perfectly to your specification. You can make changes to claim on your own volition, if changes move too far from original specification, then bar to new claim. You can change description while you work w/PTO, but only in small ways, specifications rarely change.
b. Why? Concern that inventors were playing system, file early patent with token claim, drag feet waiting to see what else was going on in world, tailor-made claims to avoid prior art and latch onto other people’s inventions.
c. Roof shingles (Barker): You don’t want them to line up but to be staggered, workers waste time figuring out configuration of shingles. He automates the staggering by have worker choose certain sizes so you don’t have to think about it.
(A) Problem: In picture in specification it shows you pattern of 8 shingles, yet he later added new claim saying method covers at least 6 shingles.
(1) Its true that a skilled artisan could figure out 6-shingle configuration from this application. But that’s an enablement argument. This is a written description argument because what you claim must be described, even if it is obvious.
(2) If in claim he described 6 in original document, 1 line saying use 6 shingles, would that be sufficient? Do you need more info? How about a picture that shows six?
(B) Issue is claim didn’t show up in beginning but later on. Worried about fraud.
- Maybe he didn’t realize 6 would work until later.
(1) Court essentially argues that he can’t add a claim and that he will have to fight this out in litigation when the time comes. Court is not saying that it reads the other claims to not include this but that it won’t decide at this time.
(2) Procedural issue, he may have priority, but don’t play the strategic game of making adjustment as we go.
(1) This person is trying to give something back to public domain, he’s saying at least six, so if you’re less than six no problem. He’s narrowing the claim.
(2) Response: If ? a broader claim, this is just narrower provision. If there isn’t a broader claim, than he didn’t have that to take to begin with.
2. Best Mode Requirement: If you know something special about best way to make invention, you have to tell us this. Okay if you are wrong, merely must say what you think.
(A) Avoids people using patent and trade secret system on same invention.
(B) Want to stop people from writing patent listing hundreds of embodiments, hide the ball.
(A) Objective component: Must be clear what sentence does this, can’t sneak it in.
(B) Balancing: If best mode is totally economically infeasible, you have to balance the factors and give what you think to be, so if you think cheaper less effective way is best, you have to give it.
c. Lax req: As of date of filing, if you file today and you improve claims over next few months and discover better mode, don’t have to update. One-time req. Might say best mode changes so quickly that BM is useless.
d. Most BM cases involve filing party starts to make product. Other party can take what they produced and compare that against patent. Try to argue minor differences are significant. Otherwise trying to read inventor’s mind.
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