Research of Written Description Requirement in U.S. Patent Litigation ─ Suggestion to Patent Examination and Litigation in Taiwan

• Main Authors: Jian-Shiang Liao, 廖健翔
• Other Authors: Wei-Lin Wang
• Format: Others
• Language: zh-TW
• Published: 2010
• Online Access: http://ndltd.ncl.edu.tw/handle/03479223660139214306

碩士 === 世新大學 === 智慧財產權研究所(含碩專班) === 98 === There should be two important parts on the document of patent application, such as “Specification” and “Claims”. The former makes sure that the invention owned by inventor which has been disclosed to the public sufficiently is the consideration to exchange the government giving patent right, and the later decides the scope of the patent. What is sufficient disclosure with Specification? The 35 U.S.C. §112 para.1 provides “Enablement”, “Written Description” and “Best Mode”. Enablement is the manner and process of making and using the invention, in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same. Written Description was created by Appeal Court (CCPA or CAFC) in U.S.A.. In all arts fields, if each element of Claims compared with Specification didn’t be described in Specification, it might be judged invalided patent. In our Patent Law and Legal Practice, however, it doesn’t distinguish Written Description and Enablement. It called “Disclosure to enablement”. Therefore this thesis suggests adding Written Description to our Specification disclosure obligation to make the function of Specification more perfect. Furthermore, it can improve the quality of Specification and operate our patent system more detail and completely.