In an expert analysis published by Law360, Partner Alexis Cohen delves into the recent precedential opinion set forth by the U.S. Court of Appeals for the Federal Circuit regarding Float’N’Grill LLC. The decision clarifies what is necessary to meet the original patent requirement of Title 35 of the U.S. Code, Section 251 and what differentiates it from a written description requirement.
Excerpt: “The original patent requirement has frequently been described in a manner that suggests it is the same as the written description requirement of Title 35 of the U.S. Code, Section 112(a). The Federal Circuit in the 2009 Revolution Eyewear v. Aspex Eyewear decision described the original patent requirement as being analogous to the written description requirement under Section 112.[8] Other iterations of the original patent requirement sound very similar to the written description requirement."
The original patent requirement differs from the written description requirement namely in its ability to support narrower claims. Original patent requires the reissue claims have support in the original specification, and additionally focuses on both assessing the heart of the invention and what is necessary to achieve it. In light of the Float'N'Grill decision, Alexis Cohen offers advice for practitioners moving forward, and notes some of the lessons that should be taken from it.