Disclosure-Dedication Rule

Subject matter disclosed in written description but not claimed in patent is dedicated to public, and cannot be recaptured under doctrine of equivalents.  The disclosure-dedication rule requires an inventor who discloses specific matter to claim it, and to submit the broader claim for examination.  Otherwise, that matter is dedicated to the public and may not be recaptured under the doctrine of equivalents.  The court held that the disclosure-dedication rule is designed to motivate patentees to draw the broadest claims that they consider to be patentable, and to submit these broad claims to the PTO for examination.  The disclosure-dedication rule, should thereby serve the important public notice function of patents-the mechanism whereby the public learns which innovations are the subjects of the claimed invention, and which are in the public domain.  The patentee noted in the specification that “other prior art devices use molded plastic…” The written description stated that “the elongated strap is made of resilient metal such as stainless steel although other resilient materials may be suitable for the strap.”  These passages demonstrate that, at the time the inventor applied for ‘239 patent, he knew that other materials, including plastic, could be used to make “parts” of his invention, and that the inventor asserted the metal design of the ‘239 patent as an improvement over the prior art.  The ‘239 patent, however, does not claim plastic parts, but instead includes an explicit “metal” limitation.  (PSC Computer Products Inc. v. Foxconn International Inc., 69 USPQ2d 1460, CA FA, 1/20/04).


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )


Connecting to %s