Patents - Disclosure

What are two constraints of the breadth of a claim?

(a) the mass of publicly available information on your problem-"the prior art" and (b) the actual work the inventor has done, inventor may not claim beyond what they have invented and described

What are the modern Patent Act three requirements?

1. Enablement

2. Written Description

3. Best mode (inventor’s preferred or best-known way of performing the invention)

Amgen v. Sanofi

Amgen obtained patents for broad amount of antibodies, but disclosed only limited number of antibodies. Sanofi argued disclosure required excessive trial and error

Rule of Law: A patent must enable the full scope of what it claims; broad functional genus claims are invalid if they require undue experimentation rather than teaching how to make and use all embodiments.

How did Amgen case tighten enablement?

requiring that the full scope of a broad functional genus be enabled, which may make broad life-science genus claims effectively unattainable.

When can a broad genus claim be valid?

if testing shows the claimed category is a meaningful, predictable class

What does the “combination lock” analogy underscore?

merely showing some embodiments work does not enable all

Prior art enablement vs Patentee enablemnt

• Prior art need only enable one embodiment within the claim to anticipate it.

• §112 enablement is stricter because it ensures the patentee actually teaches the public how to make and use the entire claimed invention

What does enablement depend on?

whether practicing the full scope of the claims would require undue experimentation

What are blocking patents?

earlier patent that prevents a later invention or improvement from being used or without a license, permitted in patent law

If the defect is abstraction…

No amount of disclosure could save the claim

What is the standard for the written description requirement?

Applicant must show the inventor was “in possession” of the invention as later claimed

How do Courts assess the fulfillment of the written description standard?

Compare original disclosure with final claims of an issued patent, whether specific feature and embodiments were in fact important aspects

Written description vs enablement

Written description more restrictive, does not need to explicitly teach PHOSITA, just needs to teach enough that they can make and use without “undue experimentation”

What are the two classes of cases where written description does additional work beyond enablement?

1. Opportunistic Claiming (filed claim after seeing competition’s product)

2. Gun-Jumping (filed claim before they have sufficient support)

Gentry Gallery v. Berkline Corp

P patented sofa with console that housed controls, every description in specification treated console as only location for controls. P later asserted broader claims that controls could be anywhere
Key Takeaway: Under §112’s written description requirement, claims cannot be broader than what the specification shows the inventor actually possessed—when a feature is described as essential, the patentee cannot later omit it from the claims.

What is the best mode requirement a safeguard against?

against incomplete disclosure of the most effective ways of practicing invention

How did the AIA curtail the best mode requirement?

No longer basis for invalidating patent claim