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Patent Statements of Law

Eric E. Bensen

Overviews (Sample excerpt):

Ch. 18 Enablement

§ 18[1] Overview

       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]. To that end, it is fundamental that the full scope of a claim be enabled. § 18[3][a].

        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 and 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].


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