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4.1 Written description and enabling disclosure are separate requirements.


Case law has made it clear that the requirement for a "written description" of the invention and an "enabling disclosure" are separate requirements. For example a specification may contain sufficient information to enable a skilled chemist how to produce a particular compound because it gives detailed information as to how to produce analogous compounds, but, if it makes no reference to the compound in question, the "written description" requirement has not been met since there is no way of knowing whether the inventor in fact regarded the compound in question as part of his invention. [33]


[33] See, for example, In re Wertheim, 191 USPQ 90 (CCPA !976).


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© Copyright 2002 John Richards - Posted July 2002
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