About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline

23 Rutgers Computer & Tech. L.J. 227 (1997)
The Rosetta Stone for the Doctrines of Means-Plus-Function Patent Claims

handle is hein.journals/rutcomt23 and id is 233 raw text is: THE ROSETTA STONE FOR THE DOCTRINES OF
A patent grants to inventors 'the right to exclude others from
making, using, offering for sale, selling, or importing the patented
invention' in exchange for full disclosure of the invention.1 The
patent must contain a complete description of the invention in suf-
ficient detail so that a person skilled in the art to which the inven-
tion pertains can practice the invention. The patent must conclude
Mr. Hoffmian is a registered patent attorney with Schwegman, Lundberg,
Woessner & Kluth, P.A., in Minneapolis, Minnesota. Mr. Heller is Chief Patent
Counsel for Seagate Technology, Inc., in Scotts Valley California.
The authors wish to gratefully acknowledge the assistance of Giles S. Rich, Cir-
cuit Judge, United States Court of Appeals for the Federal Circuit, in providing his
comments and notes in the preparation of this article, and for sharing his first-hand
account of the drafting of the Patent Act of 1952.
Over the past three years, the authors have received much assistance from many
people in the preparation of this article. Of note are Richard H. Stern, Esq., Herbert
H. Mintz, Esq., and Robert A. Armitage, Esq., of Washington, D.C.; John P. Sutton,
Esq., of San Francisco; Joseph R. Kelly, Esq., of Minneapolis; and Lisa Hoffman for
their suggestions and reviews of drafts. Also, the authors acknowledge the assistance
of Janet M. Stark of New York City for locating and copying archival documents of
the Drafting Committee.
1. Markman v. Westview Instruments, Inc., 116 S. Ct. 1384, 1387 (1996).
2. The patent applicant must satisfy three requirements for disclosure: a de-
scriptive requirement, an enablement requirement, and a best mode requirement. See
35 U.S.C. § 112,   1 (1994). The purpose of the descriptive requirement is to give
notice to those skilled in the art to which the invention pertains that the inventor is
claiming rights to the respective subject matter. See Stiftung v. Renishaw PLC, 945
F.2d 1173, 1181 (Fed. Cir. 1991). In order to satisfy the enablement requirement, the
inventor must set forth in the patent specification sufficient information to teach
someone skilled in the art how to make and use the invention. See In re Vaeck, 947
F.2d 488, 496 (Fed. Cir. 1991). Finally, if the inventor conceals a better mode for
carrying out the invention than that described in the specification, a resulting patent
may be held unenforceable. See Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923,

What Is HeinOnline?

HeinOnline is a subscription-based resource containing nearly 3,000 academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.

Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline with pricing starting as low as $29.95

Contact us for annual subscription options:

Already a HeinOnline Subscriber?

profiles profiles most