Sufficiency of disclosure or enablement is a
patent law
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of time in exchange for publishing an enabling disclosure of the invention."A p ...
requirement that a
patent application
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...
disclose a
claimed
invention in sufficient detail so that the
person skilled in the art
A person having ordinary skill in the art (abbreviated PHOSITA), a person of (ordinary) skill in the art (POSITA or PSITA), a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws t ...
could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a
given period of time in exchange for a disclosure to the public how to make or practice the invention.
Background
The disclosure requirement lies at the heart and origin of patent law. An
inventor, or the inventor's
assignee, is granted a
monopoly
A monopoly (from Greek el, μόνος, mónos, single, alone, label=none and el, πωλεῖν, pōleîn, to sell, label=none), as described by Irving Fisher, is a market with the "absence of competition", creating a situation where a speci ...
for a given period of time in exchange for the inventor disclosing to the public how to make or practice their invention. If a patent fails to contain such information, then the bargain is violated, and the patent is unenforceable or can be revoked.
Jurisdictions
Europe
Article 83 of the
European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to ...
states that an application must ''disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art''. Sufficiency is considered by the examiner during examination of a patent application and the requirement of Article 83 must be complied with in order for a patent to be granted. Insufficient disclosure is also a ground for
opposition
Opposition may refer to:
Arts and media
* ''Opposition'' (Altars EP), 2011 EP by Christian metalcore band Altars
* The Opposition (band), a London post-punk band
* '' The Opposition with Jordan Klepper'', a late-night television series on Com ...
under .
For instance, an insufficiency of disclosure might arise if references to
standardisation documents are provided to support essential aspects of the invention, but if these references are not sufficiently precise so that "the skilled person would have to make ... undue efforts to find and get together the information it needs to carry out the invention".
Insufficiency is also a ground for revocation under Section 72 of the
UK Patents Act.
United States
Undue experimentation
Under the
patent law in the United States
Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited ...
, the patent specification must be complete enough so that a person of "ordinary skill in the art" of the invention can make and use the invention without “undue experimentation". There is no precise definition of "undue experimentation". The standard is determined based on the art of the invention.
In the "predictable arts", such as
mechanical
Mechanical may refer to:
Machine
* Machine (mechanical), a system of mechanisms that shape the actuator input to achieve a specific application of output forces and movement
* Mechanical calculator, a device used to perform the basic operations of ...
inventions and
software
Software is a set of computer programs and associated software documentation, documentation and data (computing), data. This is in contrast to Computer hardware, hardware, from which the system is built and which actually performs the work.
...
inventions, very little description is required. A mere flow chart of a piece of software, for example, is adequate. Source code is not normally required. In the “unpredictable arts”, such as
chemistry and
pharmaceuticals, a very complete description is required.
In a 2005 U.S. court case, several of
Jerome H. Lemelson
Jerome "Jerry" Hal Lemelson (July 18, 1923 – October 1, 1997) was an American engineer, inventor, and patent holder. Several of his inventions and works in the fields in which he patented have made possible, either wholly or in part, innovatio ...
patents covering bar code readers were held to be invalid because the specification was not complete enough for a person of ordinary skill in the art of electrical engineering to have made and used the claimed invention at the time the patent was filed (1954) without undue experimentation. In this case the court held that a person of ordinary skill in the art was a degreed
electrical engineer with two years of experience as of the filing date of the original patent application, 1954. One of the challenges of this court case, which was decided in 2005, was to find experts on the state of the art who were alive in 1954.
Best mode
In the
United States
The United States of America (U.S.A. or USA), commonly known as the United States (U.S. or US) or America, is a country primarily located in North America. It consists of 50 states, a federal district, five major unincorporated territori ...
, the sufficiency of disclosure requirement is complemented by an additional requirement, generally not found in other national patent jurisdictions: the "best mode requirement". According to the requirement, the disclosure must also contain the inventor's "best mode" of making or practising the invention. For example, if an inventor knows that a liquid should be heated to 250 degrees for optimal performance, but discloses in the patent that the liquid should be heated to "above 200 degrees", then the inventor has not disclosed his "best mode" for carrying out the invention. The best mode must be disclosed for the entire invention, and not only its innovative aspects.
The purpose of the “best mode” requirement is to ensure full disclosure, such that the inventor may not “disclose only what he knows to be his second-best embodiment, retaining the best for himself.”
The "best mode requirement" only applies to what the inventor knows at the time the application is filed, not to what is subsequently discovered.
Post-
AIA, US law no longer permits invalidation of a US patent for failure to disclose the best mode, although technically the best mode is still required to be disclosed by the language of 35 U.S.C. Section 112.
Enablement
The patent law in the United States requires, among other things, that the patent specification "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." 35 U.S.C. 112(1).
The requirement "to enable" a person of ordinary skill in the art to make and use the invention is colloquially referred to as the "enablement" requirement. It is a key part of the patent "bargain"--an inventor gets a monopoly in return for teaching the world about their invention. A patentee who claims more than they enable is not holding up their side of the bargain: they are taking advantage of patent law's monopoly while keeping their invention secret.
A patent "enables" the invention if it allows a person of ordinary skill in the art to practice the invention. Patents may fail this test if they claim more than they teach--for example, a patent that claims all light bulbs but that only explains how to make a particular type of light bulb.
A patent that does not meet the enablement requirement may be declared invalid in whole or in part by a court or upon re-exam. Enablement is determined as of the filing date of the patent, and patent-owners cannot use experiments conducted post-application to establish the validity of their patents.
Inventors who do not wish to teach the world about their invention still have some protection under trade secret law, which protects valuable secrets from being misappropriated through unfair means (such as theft or industrial espionage). But unless inventors apply for a valid, enabling patent, they cannot take advantage of patent law's monopoly rights, and thus cannot stop competitors from developing the same product or process through proper means (such as independent invention or reverse engineering). Enablement is the price an inventor pays for this stronger protection.
Written description and possession
In the United States, the would-be patentee must provide a "written description" of the invention, sufficient to demonstrate that they actually possessed the invention at the time of filing. "Written description" determines the scope of claims.
[Merges, Duffy. Patent Law and Policy: Cases and Materials. 5th edition. 2011. Lexi Nexis]
The purpose of this rule is to avoid applicants speculatively filing for patents for inventions that they have not yet invented in order to get priority over competitors. Without this requirement, an applicant might delay scientific and technical progress by blocking competitors from inventing something that the applicant has not yet invented. The written description requirement thus reinforces the idea that patents are a reward for inventing by requiring the applicant to show they possess the invention.
This issue often arises where a patent over-claims--for example, attempting to claim an entire genus of products while only describing one or two of its component species. This would only demonstrate that the inventor had actually invented the narrower species, not the whole genus. Patent law's goal of advancing technological progress would be thwarted if the inventor could shut off competition in other species within the genus that they had not actually invented.
See also
*
Incredible utility
In United States patent law, incredible utility is a concept according to which, in order for an invention to be patentable, it must have some credible useful function. If it does not have a credible useful function despite the assertions of th ...
*
Reduction to practice In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual (the invention is actually carried out and is found to work for its intende ...
*
Sufficiency of disclosure in Canadian patent law
In Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.
Components of ...
References
Further reading
* Matthew J. Dowd, Nancy J. Leith and Jeffrey S. Weaver, ''Nanotechnology and the Best Mode'',
Nanotechnology Law & Business
''Nanotechnology Law & Business'' is a quarterly peer-reviewed law journal covering all legal, business, and policy aspects of nanotechnology. It was established in 2004 and the editors-in-chief are Don Featherstone ( Sterne, Kessler, Goldstein & F ...
, September 200
(pdf file)
* Steven B. Walmsley, ''Best Mode: A Plea to Repair or Sacrifice This Broken Requirement of United States Patent Law'', 9 Mich. Telecomm. Tech. L. Rev. 125 (2002), available at http://www.mttlr.org/volnine/walmsley.pdf
External links
* : ''The Description'' (in the
Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed und ...
)
* {{EPC Article, 83: ''Disclosure of the invention'' (in the
European Patent Convention
The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to ...
)
35 U.S.C. § 112 ''Specification'' (in the
United States Code)
Patent law