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ARTICLE · 04 OCTOBER 2022

Written Description Remains An Important Component In Determining Subject Matter Eligibility

Buchanan Ingersoll & Rooney
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U.S. patent law has always recognized the specification as a vitally important component of a patent because it provides the written description of the invention recited in the claims.

United StatesIntellectual Property
Shawn B. Cage
Shawn B. Cage
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U.S. patent law has always recognized the specification as a vitally important component of a patent because it provides the written description of the invention recited in the claims. The specification must meet certain requirements for a patent application to be patentable. For example, the specification must describe the manner and process of making and using the invention. It must also be drafted in such full, clear, concise, and exact terms to enable any person skilled in the art or science to which the invention pertains to make and use the invention.1 While not required by a federal statute or rule, the specification should also describe in detail the specific improvement over known designs including identifying specific features or functions of each embodiment and the advantages each embodiment provides over the old designs. This last point is especially relevant to software-based inventions where the U.S. Patent Office is likely to scrutinize the

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