Boothe v. Director of Patents, G.R. No. L-24919, Jan. 28, 1980

Leonard and Marvin applied for Letters Patent claiming the right of priority granted to foreign applicants. Receipt of petitioners’ application was acknowledged by respondent Director on March 6, 1954. Their Application for Letters Patent in the US for the same invention indicated that the application in the US was filed on March 16, 1953. They were advised that the "Specification" they had submitted was "incomplete" and that responsive action should be filed with them four months from date of mailing, which was August 5, 1959. On July 3, 1962, petitioners submitted two complete copies of the Specification. Director of patents held that petitioners' application may not be treated as filed. Is the director correct?

Yes, it is imperative that the application be complete in order that it may be accepted. It is essential to the validity of Letters Patent that the specifications be full, definite, and specific. The purpose of requiring a definite and accurate description of the process is to apprise the public of what the patentee claims as his invention, to inform the Courts as to what they are called upon to construe, and to convey to competing manufacturers and dealers information of exactly what they are bound to avoid. To be entitled to the filing date of the patent application, an invention disclosed in a previously filed application must be described within the instant application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility. (Boothe v. Director of Patents, G.R. No. L-24919, Jan. 28, 1980)