|
|
|
| Authored by: Ian Al on Friday, July 13 2012 @ 05:32 AM EDT |
35 U.S.C. 121 Divisional applications.
If two or more independent
and distinct inventions are claimed in one application, the Director may require
the application to be restricted to one of the inventions. If the other
invention is made the subject of a divisional application which complies with
the requirements of section 120 of this title it shall be entitled to the
benefit of the filing date of the original application. A patent issuing on an
application with respect to which a requirement for restriction under this
section has been made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the Patent and Trademark
Office or in the courts against a divisional application or against the original
application or any patent issued on either of them, if the divisional
application is filed before the issuance of the patent on the other application.
If a divisional application is directed solely to subject matter described and
claimed in the original application as filed, the Director may dispense with
signing and execution by the inventor. The validity of a patent shall not be
questioned for failure of the Director to require the application to be
restricted to one invention.
35 U.S.C. 120 Benefit of
earlier filing date in the United States.
An application for patent for an
invention disclosed in the manner provided by the first paragraph of section
112 of this title in an application previously filed in the United
States, or as provided by section 363 of this title, which is filed by an
inventor or inventors named in the previously filed application shall have the
same effect, as to such invention, as though filed on the date of the prior
application, if filed before the patenting or abandonment of or termination of
proceedings on the first application or on an application similarly entitled to
the benefit of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed application. No
application shall be entitled to the benefit of an earlier filed application
under this section unless an amendment containing the specific reference to the
earlier filed application is submitted at such time during the pendency of the
application as required by the Director. The Director may consider the failure
to submit such an amendment within that time period as a waiver of any benefit
under this section. The Director may establish procedures, including the payment
of a surcharge, to accept an unintentionally delayed submission of an amendment
under this section.
35 U.S.C. 112 Specification.
The
specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying out his
invention.
35 U.S.C. 363 International application
designating the United States: Effect.
An international application designating
the United States shall have the effect, from its international filing date
under article 11 of the treaty, of a national application for patent regularly
filed in the Patent and Trademark Office except as otherwise provided in section
102(e) of this title.
In other words, if the Director permits two
or more independent and distinct inventions to be claimed in one application,the
specification of each invention shall contain a written description of the
invention, and of the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use
the same, and shall set forth the best mode contemplated by the inventor of
carrying out his invention. If the independent and distinct inventions are not
clearly specified as such, then the patent becomes invalid. However, the part
you highlighted merely says that the incorporation of more than one invention in
a patent cannot be claimed as invalid for failure of the Director to require
the application to be restricted to one invention
One way that the
patent becomes invalid is highlighted by Diehr as noted in the Bilski
opinion:
The application in Diehr claimed a previously unknown
method for “molding raw, uncured synthetic rubber into cured precision
products,” using a mathematical formula to complete some of its several steps by
way of a computer. Diehr explained that while an abstract idea, law of nature,
or mathematical formula could not be patented, “an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Diehr emphasized the need to consider the
invention as a whole, rather than “dissect[ing] the claims into old and new
elements and then … ignor[ing] the presence of the old elements in the
analysis.” Finally, the Court concluded that because the claim was not “an
attempt to patent a mathematical formula, but rather [was] an industrial process
for the molding of rubber products,” it fell within §101’s patentable subject
matter.
If two or more independent and distinct process
inventions are claimed in one application and the invented process steps for
each invention are not clearly separated such that it 'enables any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same' then it is impossible to see each invention
as a whole in order to find out whether each contains an inventive concept (see,
Flook). Further, claims of infringement are impossible if it is not possible to
identify which steps comprise the individual process invention as a
whole.---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | Parent | # ]
|
- You missed a bit - Authored by: Anonymous on Friday, July 13 2012 @ 09:17 AM EDT
|
|
|
|
