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Enablement

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Overview Edit

U.S. patent law Edit

The first paragraph of 35 U.S.C. §112 (the enablement requirement) states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. However, it is not necessary to "enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect."[1] Detailed procedures for making and using the invention may not be necessary if the description of the invention itself is sufficient to permit those skilled in the art to make and use the invention. A patent claim is invalid if it is not supported by an enabling disclosure.

Disclosure is the quid pro quo for conferring patent rights, and enablement ensures that the patent applicant has upheld his or her end of the bargain. Moreover, enablement is a basic element in determining patent breadth. A patent's coverage reaches no farther than what its disclosures enable, so the more follow-on developments that a patent’s disclosures enable without undue experimentation, the broader its claims may be. Patent breadth, in turn, affects the division of rewards between initial and independent follow-on innovators. A patent broader than what actually has been enabled thus risks damaging follow-on innovation competition without providing the requisite public benefit.

The enablement requirement is separate and distinct from the description requirement.[2]

References Edit

  1. CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1338, 68 U.S.P.Q.2d (BNA) 1940, 1944 (Fed. Cir. 2003) (full-text) (an invention directed to a general system to improve the cleaning process for semiconductor wafers was enabled by a disclosure showing improvements in the overall system).
  2. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 U.S.P.Q.2d (BNA) 1111, 1116-17 (Fed. Cir. 1991) (full-text) ("the purpose of the 'written description' requirement is broader than to merely explain how to 'make and use'"). See also MPEP §2161.

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