The U.S. Patent and Trademark Office (USPTO) today posted training materials designed to aid the USPTO's patent examiners in applying the interim written description and utility guidelines in a uniform and consistent manner to promote the issuance of high quality patents. The training materials will also assist patent applicants in responding to the USPTO when utility or written description issues are raised during the examination of a patent application. The training materials can be found at http://www.uspto.gov/web/offices/pac/utility/utilityguide.pdf and http://www.uspto.gov/web/offices/pac/writtendescription.pdf. The guidelines were published in the Federal Register on December 21, 1999.
"I was very pleased with the breadth and the depth of the public comments that helped us shape our interim written description and utility guidelines," noted Q. Todd Dickinson, Commissioner of Patents and Trademarks. "I expect that the training materials we posted today will further inform the debate, supporting our efforts to strike the right balance with the final guidelines."
The Written Description training materials contain examples that are applicable to all areas of technology and all types of inventions. The examples include a variety of fact patterns and associated claims and conclude with a detailed claims analysis and recommended legal conclusions. Examples are provided in the mechanical, electrical, and biotechnological arts, and are based both on recent court decisions and typically encountered fact-patterns. The training materials emphasize that compliance with the written description requirement will be determined on a case-by-case basis. These materials serve to guide the examiners in determining whether the inventor has provided the necessary description of the invention.
The revised Interim Utility training materials focus on a three-pronged test for determining whether or not an invention is "useful" within the meaning of the law: Does the invention have a utility that is specific, substantial and credible? The materials include definitions of the elements that make up this test. A specific utility is one that is particular to the subject matter claimed. This contrasts with a general utility that would be applicable to the broad class of the invention.
A substantial utility is one that defines a "real world" use. Utilities that require or constitute carrying out further research to identify or reasonably confirm a "real world" context of use are not substantial utilities. A utility is credible unless the logic underlying the assertion is seriously flawed, or the facts upon which the assertion is based are inconsistent with the logic underlying the assertion. All of the examples in the utility training materials are in the biotechnology or chemical arts.
The period for public comment on the revised Utility guidelines and the revised Interim Written Description guidelines continues until March 22, 2000, and all such comments are welcome.
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