The patent laws of the "IP5"1 countries have set forth explicit patent disclosure requirements, that 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. In the previous article, we explored the differences in the application parts and the ordering of the application in the IP5 countries. In this article, we will explore incorporation by reference into the written description in the IP5 countries. In certain circumstances, applicants may wish to save time, cost, or space by incorporating the content of a separate document into their specification to supplement the application's specification. This incorporation by reference seeks to supplement the explicit disclosure provided in the application. The IP5 countries differ on their view of whether such incorporation is permitted and the formalities required to ensure the material is effectively incorporated into the description.
The U.S. Patent and Trademark Office (USPTO) allows applicants to incorporate materials into the specification of a nonprovisional (utility) application by reference. 37 C.F.R. § 1.57. An incorporation by reference must be set forth in the specification and it must (1) express a clear intent to incorporate by reference by using the root words "incoporat(e)" and "reference;" and (2) clearly identify the referenced patent application or publication. 37 C.F.R. § 1.57(c). The nature of the material that the applicant seeks to incorporate into the specification determines whether the applicant may rely on the disclosure of patent or nonpatent publications.
If the material to be incorporated is "essential material," such incorporation is limited to content disclosed in a U.S. patent application or U.S. patent application publication that does not itself incorporate such essential materials by reference. 37 C.F.R. § 1.57(d). "Essential material" is defined as material that is necessary to:
provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by 35 U.S.C. § 112(a); describe the claimed invention in terms that...