tag:blogger.com,1999:blog-1454051731189268002.post1416084830630157588..comments2024-03-27T11:29:23.559-03:00Comments on Sufficient Description: “Disclose” Has the Same Meaning in Claim Date and Novelty ProvisionsUnknownnoreply@blogger.comBlogger3125tag:blogger.com,1999:blog-1454051731189268002.post-23882504143553011122022-02-22T14:29:25.175-04:002022-02-22T14:29:25.175-04:00I spent quite a bit of time looking into this, and...I spent quite a bit of time looking into this, and all I can say is that it is astonishingly messy and ill-defined. It is not too difficult to come up with absurd results (in the stat interp sense of not acceptable and can't be right) from a textual reading of the provisions. I looked into the context, including the case law, the history of the rule changes, the concept of support, other jurisdictions etc. The context provides some insights, but adds more complexity, and, so far as I can tell at this point, no easy answers. I started writing up a blog post, but it is a fairly large project to try and figure it all out, and I just don't have the time right now. Maybe in the summer. Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-11473911771660809782022-02-10T17:17:36.864-04:002022-02-10T17:17:36.864-04:00Thanks for these comments. I will try to revisit t...Thanks for these comments. I will try to revisit this issue next week.Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-32269182201208174982022-02-10T13:10:29.044-04:002022-02-10T13:10:29.044-04:00[copied from previous post, where I posted incorre...[copied from previous post, where I posted incorrectly]<br /><br />s. 38.2(s) of the Patent Act reads "The specification and drawings contained in an application, other than a divisional application, may not be amended to add matter that cannot reasonably be inferred from the specification or drawings contained in the application on its filing date."<br /><br />What if subject-matter was not disclosed in a priority application but could be reasonably inferred therefrom and was then allowed into a claim on this basis during prosecution of a later application? Would the court now invalidate the claim because it was not literally disclosed? What if the description is also amended during prosecution to include the claim that claims priority based on an "inference"? Would the court then not invalidate the claim? I have yet to read the decision but it strikes me as quite strange from the way you have described it.Ismailnoreply@blogger.com