C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.71

Detailed description and specification of the invention

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(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.

(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.

(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.

(d) A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law. For example, “© 1983 John Doe” (17 U.S.C. 401) and “ *M* John Doe” (17 U.S.C. 909) would be properly limited and, under current statutes, legally sufficient notices of copyright and mask work, respectively. Inclusion of a copyright or mask work notice will be permitted only if the authorization language set forth in paragraph (e) of this section is included at the beginning (preferably as the first paragraph) of the specification.

(e) The authorization shall read as follows:

A portion of the disclosure of this patent document contains material which is subject to (copyright or mask work) protection. The (copyright or mask work) owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but otherwise reserves all (copyright or mask work) rights whatsoever.

(f) The specification must commence on a separate sheet. Each sheet including part of the specification may not include other parts of the application or other information. The claim(s), abstract, and “Sequence Listing” (if required or submitted under § 1.821(c)) should not be included on a sheet including any other part of the application.

(g)(1) The specification may disclose or be amended to disclose the names of the parties to a joint research agreement as defined in § 1.9(e).

(2) An amendment under paragraph (g)(1) of this section must be accompanied by the processing fee set forth in § 1.17(i) if not filed within one of the following time periods:

(i) Within three months of the filing date of a national application;

(ii) Within three months of the date of entry of the national stage as set forth in § 1.491 in an international application;

(iii) Before the mailing of a first Office action on the merits; or

(iv) Before the mailing of a first Office action after the filing of a request for continued examination under § 1.114.

(3) If an amendment under paragraph (g)(1) of this section is filed after the date the issue fee is paid, the patent as issued may not necessarily include the names of the parties to the joint research agreement. If the patent as issued does not include the names of the parties to the joint research agreement, the patent must be corrected to include the names of the parties to the joint research agreement by a certificate of correction under 35 U.S.C. 255 and § 1.323 for the amendment to be effective.

[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988; 58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR 11055, Feb. 14, 2013; 86 FR 57047, Oct. 14, 2021]
Notes of Decisions
Cited in 11 cases (2 in the last 5 years), 1963–2024 · leading case: Louis M. Kohus v. John v. Mariol James F. Mariol Jvm Innovation & Design, 328 F.3d 848 (6th Cir. 2003).
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Louis M. Kohus v. John v. Mariol James F. Mariol Jvm Innovation & Design, 328 F.3d 848 (6th Cir. 2003). · cites it 5× “Whether Mariol Violated the Disclosure Requirements of 37 C.F.R. § 1.71 Kohus additionally argued to the district court that Mariol violated the requirements of 37 C.”
Intervet, Inc. v. Merial Ltd., 643 F. Supp. 2d 97 (D.D.C. 2009). “1; see also 37 C.F.R. § 1.71 (a). At the end of the written description and enablement, a proper specification should conclude with a list of “claims,” which identify the specific innovations, components or subparts of the invention, the applicant regards as hers.”
Abbott GmbH & Co. KG v. Yeda Rsch. & Dev. Co., 516 F. Supp. 2d 1 (D.D.C. 2007). “” 37 C.F.R. § 1.71 (a); see also 35 U.S.C. § 112 .”
Superguide Corp. v. Directv Enter., Inc., 169 F. Supp. 2d 492 (W.D.N.C. 2001). “” 37 C.F.R. § 1.71 (a). "The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.”
Axel Harald Holstensson v. V-M Corp., 325 F.2d 109 (6th Cir. 1963). “…forth the precise invention * * * in such manner as to distinguish it from other inventions and from what is old." ( 37 C.F.R. § 1.71 (b)).”
In re Stephens, 529 F.2d 1343 (C.C.P.A. 1976). “OPINION Both the solicitor and appellants cite Rule 71(b), 37 CFR 1.71(b), 1 which implements 35 U.S.”
Biovail Labs. Int'l SRL v. Impax Labs., Inc., 433 F. Supp. 2d 501 (E.D. Pa. 2006). “” 37 C.F.R. § 1.71 (b) (emphasis added). 14 .”
Trico Prods. Corp. v. Roberk Co., 369 F. Supp. 1146 (D. Conn. 1973). “37 C.F.R. § 1.71 (a) provides: “The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in…”
John R. Choate v. Rysurg, LLC (Fla. 4th DCA 2021). ““The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the…”
Kawasaki Jukogyo Kabushiki Kaisha v. Rorze Corp. (N.D. Cal. 2024). “” 37 C.F.R. § 1.71 . An embodiment is a “manner in which an invention can be made, 28 || used, practiced or expressed.”
Intervet, Inc. v. Merial Ltd. (D.D.C. 2009). “1; see also 37 C.F.R. § 1.71 (a). At the end of the written description and enablement, a proper specification should conclude with a list of “claims,” which identify the specific innovations, components or subparts of the invention, the applicant regards as hers.”
— 37 C.F.R. § 1.71(b) — 1 case
In re Stephens, 529 F.2d 1343 (C.C.P.A. 1976). “OPINION Both the solicitor and appellants cite Rule 71(b), 37 CFR 1.71(b), 1 which implements 35 U.S.”
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