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The Written Description Requirement, Robert Greene Sterne, Patrick E. Garrett, Theodore A. Wood

Akron Law Review

It is now well accepted that this provision of the 1952 Patent Act (Patent Act) includes a written description requirement that is separate and distinct from the enablement requirement. Thus, a specification may enable one of ordinary skill to make or use a claimed invention, but still not adequately describe the invention in a way that the public knows that the inventor was in possession of the claimed invention at the time of filing the application. For example, a patent specification that discloses various patterns of eight wooden shingles, does not necessarily provide written description for a claim amendment that …

The Expansion Of Statutory Subject Matter Under The 1952 Patent Act, Robert Greene Sterne, Lawrence B. Bugaisky

Akron Law Review

It is quite surprising that a mere four words were sufficient to establish a fundamental framework for defining the categories of patentable inventions. This framework has successfully stood for a period of more than 200 years. The 1793 Patent Act defined the four classes of statutory subject matter as “art, machine, manufacture, or composition.” The 1952 Patent Act (“Patent Act” or “1952 Act”) replaced the term “art” with “process,” resulting in the current language of 35 U.S.C. § 101.

The legislative history of the Patent Act states that “art” as used in § 101: “is interpreted by the courts to …