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Sufficiency of disclosure

Explore disclosure requirements and harmonization challenges in patent law, focusing on clarity, completeness, and sectoral differences. Discuss implications for software and DNA patents, chemical processes, and foreign applications.

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Sufficiency of disclosure

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  1. Sufficiency of disclosure OPEN FORUM ON THE DRAFT SUBSTANTIVE PATENT LAW TREATY (SPLT) Geneva, March 1 to 3, 2006 Carlos M. Correa

  2. Disclosure in the draft SPLT • The application shall disclose the claimed invention in a manner sufficiently clear and complete for that invention to be carried out by a person skilled in the art . The disclosure of the claimed invention shall be considered sufficiently clear and complete if it provides information which is sufficient to allow that invention to be made and used by a person skilled in the art on the filing date, without undue experimentation [as prescribed in the Regulations] (article 10(1).

  3. Is effective harmonization feasible? ‘…allows the invention to be made and used’ ‘…without undue experimentation’ • Prevailing practices in the technological field • Knowledge imputed to the person with ordinary skills in the art

  4. Disharmony within national systems: the US case • DNA patents: sequences must be disclosed under a stringent written description rule - the actual sequence in hand • Software patents: patents need disclose virtually nothing about the detailed workings of their invention (Burk and Lemley, 2002)

  5. Non-obviousness/Disclosure requirements: sectoral differences (USA)

  6. A person skilled in the art: national differences

  7. Harmonization, under which standard? (USA FTAs) • Each Party shall provide that a claimed invention is sufficiently supported by its disclosure if the disclosure reasonably conveys to a person skilled in the art that the applicant was in possession of the claimed invention as of the filing date

  8. Harmonization, under which standard? (China-1) • Disclosure of Chemical Process Invention (4.2.2) For the substance of the raw material used in the process, not only the chemical components and property parameter(s) etc., but also its source, shall be disclosed to make it identifiable …

  9. Harmonization, under which standard? (China-2) Disclosure of Chemical Process Invention (4.2.2) If the substance of the raw material is a natural substance, besides its origin, disclosure shall be made of its basic chemical components or the basic parameter(s) capable of identifying the said substance.

  10. Transforming TRIPS ‘may’ into ‘shall’ (1) • Article 29.1 Members ..may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.

  11. Transforming TRIPS ‘may’ into ‘shall’ (2) • Article 29.2. Members may require an applicant for a patent to provide information concerning the applicant’s corresponding foreign applications and grants.

  12. Conclusions • Differences in disclosure requirements are unlikely to be effectively harmonized • Disclosure requirements may need to vary by sectors, skills in the country of application • Disclosure of best mode and of information relating to foreign applications should be mandatory

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