Tuesday, December 18, 2012

Incorporation by reference

IPBiz has discussed the concept of "incorporation by reference." For example,

Acushnet gets new trial in Callaway infringement assertion

Note the availability of a brief by Fish & Richardson attorneys representing Callaway in the case Callaway v. Acushnet in D. Delaware. Also:

Within MPEP 608.01(p) Completeness:

The incorporation by reference practice with respect to applications which issue as U.S. patents provides the public with a patent disclosure which minimizes the public's burden to search for and obtain copies of documents incorporated by reference which may not be readily available. (...)Particular attention should be directed to specific portions of the referenced document where the subject matter being incorporated may be found. Guidelines for situations where applicant is permitted to fill in a number for Application No. __________ left blank in the application as filed can be found in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971) (Abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications; both types are open to the public upon the referencing application issuing as a patent. See MPEP § 103).

Also from MPEP 608.01(p):


Simulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. Working examples correspond to work actually performed and may describe tests which have actually been conducted and results that were achieved. Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted. Paper examples should not be represented as work actually done. No results should be represented as actual results unless they have actually been achieved. Paper examples should not be described using the past tense. >Hoffman-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1367, 66 USPQ2d 1385, 1394 (Fed. Cir. 2003).< For problems arising from the designation of materials by trademarks and trade names, see MPEP § 608.01(v).

**On incorporation by reference, from pptuu:

Be specific with regard to subject matter to be incorporated
Statements incorporating a document “in its entirety” may not be sufficient to permit incorporation of material not specifically identified in the incorporation statement

As to essential material:

37 CFR 1.57 (c)
“ Essential material ” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference

37 CFR 1.57 (c)
“Essential material”
Provides written description, enablement and/or best mode of the invention
Describes the claimed invention as required by 35 USC 112, 2nd paragraph
Describes the structure, material or acts corresponding to a means or step + plus function as required by 35 USC, 6th paragraph

And, from the IPBiz post
Further thoughts on Graves and Donohue on anticipation under 35 USC 102

**The interference case also speaks of incorporation by reference:

On such general manner of incorporation, we cannot assume that Genise’s inventors recognized and appreciated every single detail that happens to be contained in the disclosure of U.S. Patent Nos. 4,850,236 and 5,105,357. In that regard, note Advanced Display Systems v. Kent State University, 212 F.3d 1272, 1282, 54 USPQ2d 1673, 1679 (Fed. Cir. 2000), in which the Court of Appeals for the Federal Circuit stated:
Incorporation by reference provides a method for integrating material from various documents into a host document – a patent or printed publication in an anticipation determination – by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. [Citation omitted.] To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. [Citations omitted.] [Emphasis added.]


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