MOPOP update to chapter 9: descriptions
CIPO has announced a consultation for its newly revised chapter in the Manual of Patent Office Practice (MOPOP).
The revised chapter 9 deals with the description section of a patent application (commonly referred to as “the disclosure”), which together with the claims, make up the whole patent “specification”.
Now at 35 pages (from 13), the chapter deals heavily with these topics, among others:
- misleading statements;
- establishing utility where a sound prediction of utility is made;
- selections;
- essential elements of a claim; and
- functional limitations.
This guidance is long overdue and quite welcome. Some parts of the proposal are quite interesting, and may require further explanation by the Office, such as the the statement that:
“It is important, however, to recognize that important differences exist between the [essential elements] analysis performed by an examiner during prosecution of an application and the analysis of the Courts in placing a legal construction on the claims of a patent. The two should not be directly equated.”
