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I wonder what is the real effect of "a combination there of". If I write "a,b,c" vs "a,b,c, a combination thereof". I understand the logical difference. Is there a precedent in which usage in the phrase was tested by court?

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The statutory patent language has been construed as mandating satisfaction of three separate and independent requirements referred to as the written description requirement, the enablement requirement, and the "best mode requirement. An inventor, therefore, must both describe the claimed invention adequately and enable its reproduction and use,as well as set forth the best mode of carrying it out.

what is the real effect of "a combination there of". If I write "a,b,c" vs "a,b,c, a combination thereof

As described above to satisfy the statutory requirement, the use of term combination thereof protects all the permutations and combinations possible and equivalents that are not disclosed by the inventor and would protect from invalidation due to failure to disclose.

Is there a precedent in which usage in the phrase was tested by court?

I am not aware of any specific case, but i would try to explain you with the following example.

Eg: case 1: You describe your invention as composition a,b,c, a combination thereof and the patent claim granted was a composition comprising a,b,c if a person tries to practice your invention with addition of a new element d he is considered as infringing your invention, Though the component d is not disclosed in the patent as you have described as combinations thereof your patent is still valid on his invention.

case 2: You describe your invention as composition a,b,c and the patent claim granted was a composition comprising a,b,c if a person tries to practice your invention with addition of a new element d he is considered as infringing your invention,the component d is not disclosed in the patent your patent may be valid but the alleged infringer has a ground under written description requirement for invalidating your patent.

The above example is based on assumption, in actual scenario there are many other factors come in to role during litigation.

  • Thanks. Hod does adding d infringing my patent? I claimed only a,b,c, ac, bc, ac,abc – nmnir Jan 17 at 10:34
  • @nmnir that's based on the claim term "Comprising" as it allows to protect unclaimed alternates. Please be noted this a broad scenario that i had explained and actual differs by Case by case. please refer an old answer patents.stackexchange.com/questions/20127/… – RishiM_IPR Jan 17 at 10:47

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