608 Disclosure
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608 |
The requirement for an adequate disclosure ensures that the public receives something in return for the exclusionary rights that are granted to the inventor by a patent.
All amendments and claims must find descriptive basis in the original disclosure. No new matter may be introduced into an application after its filing date.
Applicant may rely for disclosure upon the specification with original claims and drawings, as filed.
608.01 Specification
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608.01 |
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “©1983 John Doe”(17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application.
(g)
(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth § 1.17(i) if not filed within one of the following time periods:(i) Within three months of the filing date of a national application;
(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.
The specification must be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention pertains to make and use the same.
The written description must not include information that is not related to applicant’s invention, e.g., prospective disclaimers regarding comments made by examiners.
The specification must commence on a separate sheet and must be in English:
- Each sheet including part of the specification may not include other parts of the application or other information.
- The claim(s), abstract and sequence listing (if any) should not be included on a sheet including any other part of the application
I. PAPER REQUIREMENTS
(a) Papers that are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application, or a reexamination or supplemental examination proceeding.
(1) All papers, other than drawings, that are submitted on paper or by facsimile transmission, and are to become a part of the permanent United States Patent and Trademark Office records in the file of a patent application or reexamination or supplemental examination proceeding, must be on sheets of paper that are the same size, not permanently bound together, and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4 inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition.(2) All papers that are submitted on paper or by facsimile transmission and are to become a part of the permanent records of the United States Patent and Trademark Office should have no holes in the sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this section do not apply to the pre-printed information on paper forms provided by the Office, or to the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination.
(4) See § 1.58 for chemical and mathematical formulae and tables, and § 1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be formatted and transmitted in compliance with the Office’s electronic filing system requirements.
(b) The application (specification, including the claims, drawings, and the inventor’s oath or declaration) or reexamination or supplemental examination proceeding, any amendments to the application or reexamination proceeding, or any corrections to the application, or reexamination or supplemental examination proceeding.
(1) The application or proceeding and any amendments or corrections to the application (including any translation submitted pursuant to paragraph (d) of this section) or proceeding, except as provided for in § 1.69 and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section; and
(ii) Be in the English language or be accompanied by a translation of the application and a translation of any corrections or amendments into the English language together with a statement that the translation is accurate.(2) The specification (including the abstract and claims) for other than reissue applications and reexamination or supplemental examination proceedings, and any amendments for applications (including reissue applications) and reexamination proceedings to the specification, except as provided for in §§ 1.821 through 1.825, must have:
(i) Lines that are 1 1/2 or double spaced;
(ii) Text written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6); and
(iii) Only a single column of text.(3) The claim or claims must commence on a separate physical sheet or electronic page (§ 1.75(h)).
(4) The abstract must commence on a separate physical sheet or electronic page or be submitted as the first page of the patent in a reissue application or reexamination or supplemental examination proceeding (§ 1.72(b)).
(5) Other than in a reissue application or reexamination or supplemental examination proceeding, the pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably below, the text.
(6) Other than in a reissue application or reexamination or supplemental examination proceeding, the paragraphs of the specification, other than in the claims or abstract, may be numbered at the time the application is filed, and should be individually and consecutively numbered using Arabic numerals, so as to unambiguously identify each paragraph. The number should consist of at least four numerals enclosed in square brackets, including leading zeros (e.g., [0001]). The numbers and enclosing brackets should appear to the right of the left margin as the first item in each paragraph, before the first word of the paragraph, and should be highlighted in bold. A gap, equivalent to approximately four spaces, should follow the number. Nontext elements (e.g., tables, mathematical or chemical formulae, chemical structures, and sequence data) are considered part of the numbered paragraph around or above the elements, and should not be independently numbered. If a nontext element extends to the left margin, it should not be numbered as a separate and independent paragraph. A list is also treated as part of the paragraph around or above the list, and should not be independently numbered. Paragraph or section headers (titles), whether abutting the left margin or centered on the page, are not considered paragraphs and should not be numbered.
(c) Interlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification (§ 1.125) may be required if the application papers do not comply with paragraphs (a) and (b) of this section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111 may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English language translation of the non-English language application, a statement that the translation is accurate, and the processing fee set forth in § 1.17(i) are required. If these items are not filed with the application, applicant will be notified and given a period of time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application under 35 U.S.C. 111(b) is filed in a language other than English, an English language translation of the non-English language provisional application will not be required in the provisional application. See § 1.78(a) for the requirements for claiming the benefit of such provisional application in a nonprovisional application.
(e) Electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application, or reexamination or supplemental examination proceeding.
(1) The following documents may be submitted to the Office on a compact disc in compliance with this paragraph:
(i) A computer program listing (see § 1.96);
(ii) A “Sequence Listing” (submitted under § 1.821(c)); or
(iii) Any individual table (see § 1.58) if the table is more than 50 pages in length, or if the total number of pages of all the tables in an application exceeds 100 pages in length, where a table page is a page printed on paper in conformance with paragraph (b) of this section and § 1.58(c).(2) A compact disc as used in this part means a Compact Disc-Read Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance with this paragraph. A CD-ROM is a “read-only” medium on which the data is pressed into the disc so that it cannot be changed or erased. A CD-R is a “write once” medium on which once the data is recorded, it is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International Organization for Standardization (ISO) 9660 standard, and the contents of each compact disc must be in compliance with the American Standard Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case within an unsealed padded and protective mailing envelope and accompanied by a transmittal letter on paper in accordance with paragraph (a) of this section. The transmittal letter must list for each compact disc the machine format (e.g., IBM-PC, Macintosh), the operating system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret (e.g. , tables in landscape orientation should be identified as landscape orientation or be identified when inquired about) the information on the compact disc. Compact discs submitted to the Office will not be returned to the applicant.(4) Any compact disc must be submitted in duplicate unless it contains only the “Sequence Listing” in computer readable form required by § 1.821(e). The compact disc and duplicate copy must be labeled “Copy 1” and “Copy 2,” respectively. The transmittal letter which accompanies the compact disc must include a statement that the two compact discs are identical. In the event that the two compact discs are not identical, the Office will use the compact disc labeled “Copy 1” for further processing. Any amendment to the information on a compact disc must be by way of a replacement compact disc in compliance with this paragraph containing the substitute information, and must be accompanied by a statement that the replacement compact disc contains no new matter. The compact disc and copy must be labeled “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day and year of creation indicated), and “COPY 2 REPLACEMENT MM/DD/YYYY,” respectively.
(5) The specification must contain an incorporation-by-reference of the material on the compact disc in a separate paragraph (§ 1.77(b)(5)), identifying each compact disc by the names of the files contained on each of the compact discs, their date of creation and their sizes in bytes. The Office may require applicant to amend the specification to include in the paper portion any part of the specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following information:(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the person filing the application to identify the application;
(iv) A creation date of the compact disc;
(v) If multiple compact discs are submitted, the label shall indicate their order (e.g. “1 of X”); and
(vi) An indication that the disc is “Copy 1” or “Copy 2” of the submission. See paragraph (b)(4) of this section.(7) If a file is unreadable on both copies of the disc, the unreadable file will be treated as not having been submitted. A file is unreadable if, for example, it is of a format that does not comply with the requirements of paragraph (e)(3) of this section, it is corrupted by a computer virus, or it is written onto a defective compact disc.
(f)
(1) Any sequence listing in an electronic medium in compliance with §§ 1.52(e) and 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, will be excluded when determining the application size fee required by § 1.16(s) or § 1.492(j). For purposes of determining the application size fee required by § 1.16(s) or § 1.492(j), for an application the specification and drawings of which, excluding any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with §§ 1.52(e) and 1.96, are submitted in whole or in part on an electronic medium other than the Office electronic filing system, each three kilobytes of content submitted on an electronic medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size equivalent of the specification and drawings of an application submitted via the Office electronic filing system will be considered to be seventy-five percent of the number of sheets of paper present in the specification and drawings of the application when entered into the Office file wrapper after being rendered by the Office electronic filing system for purposes of determining the application size fee required by § 1.16(s). Any sequence listing in compliance with § 1.821(c) or (e), and any computer program listing in compliance with § 1.96, submitted via the Office electronic filing system will be excluded when determining the application size fee required by § 1.16(s) if the listing is submitted in ASCII text as part of an associated file.
The following includes a few rules for the specification:
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The pages of the specification including claims and abstract must be numbered consecutively, starting with 1, the numbers being centrally located above or preferably, below, the text.
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The lines of the specification, and any amendments to the specification, must be 1 1/2 or double spaced.
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The text must be written in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12)
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The text may not be written solely in capital letters.
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All application papers (specification, including claims, abstract, any drawings, oath or declaration, and other papers), and also papers subsequently filed, must have each page plainly written on only one side of a sheet of paper.
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All papers which are to become a part of the permanent records of the U.S. Patent and Trademark Office must be legibly written either by a typewriter or mechanical printer in permanent dark ink or its equivalent in portrait orientation on flexible, strong, smooth, nonshiny, durable, and white paper.
Where an application is filed with papers that do not comply with 37 CFR 1.52, the Office of Patent Application Processing will mail a “Notice to File Corrected Application Papers” indicating the deficiency and setting a time period within which the applicant must correct the deficiencies to avoid abandonment.
II. ALTERATION OF APPLICATION PAPERS
Effective September 16, 2012, interlineations and other alterations of the application papers are prohibited from being made after the signing of the inventor’s oath or declaration.
III. CERTIFIED COPIES OF AN APPLICATION-AS-FILED
If an application-as-filed does not meet the sheet size/margin and quality requirements, certified copies of such application may be illegible and/or ineffective as priority documents.
- If application papers are filed that do not meet sheet size/margin and quality requirements, the USPTO will require the applicant to file substitute papers that do comply with the requirements
IV. USE OF METRIC SYSTEM OF MEASUREMENTS IN PATENT APPLICATIONS
All patent applicants should use the metric (S.I.) units followed by the equivalent English units when describing their inventions in the specifications of patent applications.
V. FILING OF NON-ENGLISH LANGUAGE APPLICATIONS
The U.S. Patent and Trademark Office will accord a filing date to an application meeting the requirements of 35 U.S.C. 111(a), or a provisional application in accordance with 35 U.S.C. 111(b), even though some or all of the application papers, including the written description and the claims, is in a language other than English and hence does not comply with 37 CFR 1.52.
- If a nonprovisional application under 35 U.S.C. 111(a) is filed in a language other than English, an English translation of the non-English language papers, a statement that the translation is accurate, the proper fees, and the oath or declaration should either accompany the nonprovisional application papers or be filed in the Office within the time set by the Office.
- If a provisional application is filed in a language other than English, an English translation of the non-English language provisional application and a statement that the translation is accurate must be submitted if benefit of the provisional application is claimed in a later-filed nonprovisional application.
The translation must be a literal translation and must be accompanied by a statement that the translation is accurate.
- The translation must also be accompanied by a signed request from the applicant, his or her attorney or agent, asking that the English translation be used as the copy for examination purposes in the Office.
- In the event that the English translation and the statement are not timely filed in the nonprovisional application, the nonprovisional application will be regarded as abandoned.
VI. ILLUSTRATIONS IN THE SPECIFICATION
Graphical illustrations, diagrammatic views, flowcharts, and diagrams in the descriptive portion of the specification do not come within the purview of 37 CFR 1.58(a), which permits tables, chemical and mathematical formulas in the specification in lieu of drawings.
- The examiner should object to such descriptive illustrations in the specification and request drawings when an application contains graphs, drawings, or flow charts in the specification.
The specification, including any claims, may contain chemical formulas and mathematical equations, but the written description portion of the specification must not contain drawings or flow diagrams.
- A claim may incorporate by reference to a specific figure or table where there is no practical way to define the invention in words.
The description portion of the specification may contain tables, but the same tables should not be included in both the drawings as a figure and in the description portion of the specification.
- Claims may contain tables either if necessary or if otherwise found to be desirable.
- When such a patent is printed, however, the table will not be included as part of the claim, and instead the claim will contain a reference to the table number.
VII. Hyperlinks and Other Forms of Browser-Executable Code in the Specification
Hyperlinks and other forms of browser-executable code, especially commercial site URLs, are not allowed in a patent application.
- The attempt to incorporate subject matter into the patent application by reference to a hyperlink and/or other forms of browser-executable code is considered to be an improper incorporation by reference.