IP5 Offices - Preparing An IP5-Compatible Patent Application: Disclosure Requirements

Author:Ms Arpita Bhattacharyya Ph.D.
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
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The patent laws of the "IP5"1 countries have set forth explicit patent disclosure requirements, which require the specification of every patent application to disclose the invention clearly and completely so that a person skilled in the art can practice the invention. This is one of the basic characteristics of the IP5 patent systems. Although the IP5 countries share this and many other common features of a patent application, there are slight differences in the patent disclosures and filing formalities of the IP5 countries. In the preceding IP5 article, we discussed the differences in the filing formalities in the IP5 countries. This article will cover the differences in the application parts and the ordering of the application in the IP5 countries.

China

Rule 17 of the Patent Law of China (incorporating original Rule 18) provides that the description of a patent application must include a title of the invention, and the following parts with a section heading preceding each part: (1) technical field; (2) background art; (3) contents of the invention; (4) description of figures; and (5) preferred mode of carrying out the invention. The description must not refer to the claims for the purpose of describing matters contained in the description. Rule 17 further provides that if an application contains disclosure of one or more nucleotide and/or amino acid sequences, the description must contain a sequence listing, and a copy of the said sequence listing in machine-readable form must be submitted to the State Intellectual Property Office (SIPO). Rule 18 requires that the drawings be numbered and arranged in numerical order. Rule 18 also requires that reference signs appearing in the text must appear in the drawings, and vice versa. Rules 19-22 describe the specific form the claims must take. Further, Rule 20 requires that an abstract consisting of a summary of the disclosure be provided with the application disclosure.

United States

A U.S. nonprovisional (utility) application must include the following: (1) utility patent application transmittal form or transmittal letter; (2) appropriate fees; (3) application data sheet (under 37 C.F.R. § 1.76); (4) specification (with at least one claim); (5) drawings (when necessary); (6) executed oath or declaration; (7) nucleotide and amino acid sequence listing (when necessary); and (8) large tables or computer listings (when necessary). Requirements for arrangement of the specification are provided under...

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