Monthly Archives: November 2014

The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

By Stephen C. Hall

This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.iStock_000019576650Large

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then Continue reading The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)