Eric E. Bensen

Patent Statements of Law

Eric E. Bensen

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Overviews (Sample):

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Chapter 18 Adequate Disclosure—Enablement

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§ 18[1] Overview

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            The enablement requirement prevents both inadequate disclosure of an invention and overbroad claiming by ensuring that the claimed invention can be made and used without undue experimentation. § 18[2].

            It is fundamental that the full scope of a claim be enabled. § 18[3][a]. When a range is claimed, the specification must reasonably enable the full scope of the range. § 18[3][b]. In the case of a functional claim limitation, the enablement question will turn on the effort needed to obtain embodiments outside of those disclosed as examples. § 18[3][c].

            The central question in an enablement determination is whether a patent’s disclosure alleviates any need for “undue experimentation” by those of ordinary skill in the art. § 18[4][a]. Whether the experimentation required to practice the invention is “undue” is typically a fact intensive question. § 18[4][b]. That some routine experimentation may be required is not inconsistent with satisfaction of the enablement requirement. § 18[4][c]. However, the level of experimentation required may be undue where, for example, the specification teaches away from the subject matter claimed, there is evidence that the patentee was unable to make the invention or where the disclosure provides only a starting point for research in an unpredictable and poorly understood field. § 18[4][d].

            Sufficient enablement may be provided by either illustrative examples or terminology. § 18[5][a]. To enable, a disclosure need not detail every aspect of the invention, § 18[5][b], describe every iteration of the invention, § 18[5][c], provide working examples of the invention, § 18[5][d], or enable commercial success for the invention, § 18[5][e]. A disclosure need not state what is well known in the art, § 18[5][f], and, in fact, the knowledge of one of ordinary skill in the art can supplement a patent’s disclosure for a enablement purposes, § 18[5][g]. However, because one skilled in the art would not be familiar with the novel elements of an invention, those elements must be enabled. § 18[5][h]. In some instances, an applicant may be required to enable a means for making the invention. § 18[5][i]. In the case of a biological invention, the enablement requirement may be satisfied by and in some cases may require a deposit of a biological organism in a cell depository. § 18[5][j].

            Enablement is determined as of the effective date of the application. § 18[7][a]. While a later publication may be evidence of the state of the prior art at the time of the application, a later publication cannot be used to either supplement the original disclosure or render an otherwise in enabled invention invalid. § 18[7][a].

            Because a claim need not specifically exclude inoperative embodiments, the fact that a disclosure fails to enable some potential embodiments is not by itself inconsistent with the enablement requirement. § 18[6].

            A challenger must prove invalidity for lack of enablement by clear and convincing evidence while for purposes of an appeal, enablement is a question of law based on underlying facts. § 18[8].

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