Chapter three explores what may be the most important part of the patent quid pro quo: disclosure of the claimed invention. In order for an application to result in a patent, this disclosure must meet several requirements. The disclosure requirements discussed in these cases serve the dual purposes of ensuring both that the disclosure is meaningful and that the applicant actually developed the claimed invention.
As you read the full text of the Morse patent you may be surprised by the similarities between such an early patent and the modern ones you have already seen. Be aware, however, that the claims in the Morse patent are written in the old “central claiming” style, which is no longer used in most of the world, including the United States. The use of central claiming means that the claims actually cover more than they appear to, though how much more was often only discovered through difficult (and expensive) litigation, as Morse himself discovered to his great misfortune.
As an example of the importance of the disclosure in shaping the coverage of the patent claims, consider the Amgen ‘008 patent, which contains some 48 pages of disclosure and only a single page of simple claims. Without such a thorough disclosure both the scope of the patent and its value to the public would be insignificant. As the Amgen v. Chugai case makes clear, however, even that lengthy disclosure was insufficient to match the broadest claims.
- See 35 USC 112 and MPEP §§ 2161–2174
- O’Reilly v. Morse, 56 U.S. 62 (1853)
- In re Hogan, 559 F.2d 595 (CCPA 1977)
- Glaxo v. Novopharm, 52 F.3d 1043 (Fed. Cir. 1995)
- Great Northern v. Henry Model Products, 94 F.3d 1569 (Fed. Cir. 1996)
- Vas-Cath v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)
- Athletic Alternatives v. Prince Mfg., 73 F.3d 1573 (Fed. Cir. 1996)
- White Consolidated Industries v. Vega Servo-Control, 713 F.2d 788 (Fed. Cir.1983)
- Northern Telecom v. Datapoint, 908 F.2d 931 (Fed. Cir.1990)
- Fonar v. General Electric, 107 F.3d 1543 (Fed. Cir.1997)
- Applied Materials v. Advanced Semiconductor Materials America, 98 F.3d 1563 (Fed. Cir.1996)
- Hybritech v. Monoclonal Antibodies, 802 F.2d 1367 (Fed. Cir.1996)
- In re Wands, 858 F.2d 731 (Fed. Cir.1988)
- Amgen v. Chugai Pharmaceuticals, 927 F.2d 1200 (Fed. Cir.1991)
- Regents of University of California v. Eli Lilly, 119 F.3d 1559 (Fed. Cir.1997)