This is from a demand for trial and describes the reason for invalidation of certain claims
したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。
What would be a good way to translate the above? (The sentence would probably start with "Therefore, based on the technical common knowledge asserted by the patentee, these claims...")
On Sun, Jun 25, 2017 at 8:35 PM, Herman <sl...@lmi.net> wrote:
On 25/06/17 15:50, Matthew Schlecht wrote:
...
If this is still unclear, I could cobble together an elementary example, but I didn't want to insult anyone's intelligence.
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I don't see the difference between "allow" and "enable" but certainly you can use "enable" instead if you prefer.
Matthew Schlecht writes:
On Mon, Jun 26, 2017 at 5:36 PM, Alan Siegrist <AlanFS...@comcast.net> wrote:
I don't see the difference between "allow" and "enable" but certainly you can use "enable" instead if you prefer.
For this wording, see for example:
https://www.uspto.gov/web/offices/pac/mpep/s2164.html
https://www.uspto.gov/web/offices/pac/mpep/s2121.html
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_iv_2.htm
http://www.wipo.int/export/sites/www/meetings/en/2006/scp_of_ge_06/presentations/scp_of_ge_06_roberts.pdf
Thanks for the references, but I think this “enabling” or “enablement” is a different term of art in patents than the matter currently under discussion.
We are discussing whether the description is adequate to allow a person skilled in the art to realize or recognize that the claimed invention solves the problem. We are not touching on the issue of whether a disclosure enables the person skilled in the art to make and use (or “practice”) the claimed invention.
While I am no expert, it seems unwise to use a specific term of art (“enable”) where an ordinary English word (“allow”) seems sufficient and apt. There is a danger that a patent attorney or agent might mistake the issue for one of enablement, which it is most definitely not.
Best,
For the problematic part, "当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており", I put
"(these claims) exceed the scope of what has been described in such a way as to allow a person skilled in the art to recognize that the problem of the invention can thereby be solved"
I think the above is an accurate translation, but it seems rather clumsy to me, so I was wondering if there is a better alternative.
I find the language "exceed the stated scope by which a person skilled in the art could recognize..." to be unclear.
This is from a demand for trial and describes the reason for invalidation of certain claims
したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。
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