I.

Chapter 4- Disclosure and Enablement

A. Disclosure and Enablement
1. Disclosure is the price the inventor pays for the rights to a monopoly
a) Disclosure benefits society
2. Logical to limit patent rights to only what is property disclosed
3. Ever present tension = the desire to restrict the patentee’s property right
to that which she has actually invented, while at the same time guarding
against too skimpy a right, which in fact would be not right at all given the
ease of inventing around it
4. Requirements
a) Enablement
b) Written Description
c) Claim Definiteness
d) Best Mode
B. Enablement
1. Limits how broadly patent claims may reach
2. Regulates what degree of speculation is tolerable
3. Patent Breadth and “Undue Experimentation”
4. The Incandescent Lamp Patent
a) Consider context of prior
b) What elements exactly were being changed
c) Difficulty with lightbulbs were the carbon burners and their too
rapid disintegration or evaporation
(1) Finding a suitable material
d) Claim of infringement goes against the fibrous or textile material,
covered by the patent to Sawyer and Man
e) Defences
(1) Defective on its face in its attempt to monopolize all fibrous
and textile materials for the purpose of electrical
illumination
(2) Sawyer and Man were not the first to discover them
f) Would not be too broad if they had listed some underlying
characteristic that rendered the benefit from those materials
g) Sawyer and Man identified carbonized paper as an effective
material
(1) Then attempted to broadly patent all fibrous and textile
materials
(2) Instead should be only limited to the carbonized paper
(a) Or whatever the specific quality of fibrous and
textile materials that they discovered
h) Edison discovered a very particular fiber - bamboo - that worked
best because the fibers ran parallel to flow
i) If the description is so void that no one can tell, except by
independent experiment, then the patent is void
 j) Unwarranted extension of the monopoly - denies further
advancement of the field
k) Because paper happens to belong to a particular field does not
grant them the entire field
l) Holding:
(1) Lack of enablement because the patentee claimed the
whole category without specifying the particular
characteristic that enabled that category
(2) Enablement required that they justify their broad patent by
identifying the element that underlied the category
(a) They did not do so, so they did not justify their
possession of the whole field
5. Modern Equivalent: 4 elements
a) A written description
b) An enabling disclosure
c) A disclosure of the best mode for practicing the invention
d) Definite claims
6. Sawyer & Man explained
a) Claim was that carbonized fibrous or textile worked better than
carbon filaments
(1) Enablement problem arises because many embodiments
would not be useful, i.e. many within that category would
not work
(2) Specification issue- if they had identified the underlying
characteristic of that category, it would not have been too
broad
(a) Persons must conduct “independent experiments”
to find working embodiments of the invention
7. The scope of the patent must be less than or equal to the scope of the
enablement
a) That way a person could use the patent without undue
experimentation
8. Commensurate scope - infringement damages should not be based on
what th inventor lost but by how similar the technologies are.
a) IP protection should be proportionate to the significance or merit
of the creative work protected by the right
9. The 8 Wands factors
a) The quantity of experimentation necessary
b) The amount of direction or guidance presented
c) The presence or absence of working examples
d) The nature of the invention
e) The state of prior art
f) The relative skill of those in the art
g) The predictability or unpredictability of the art
 h) The breadth of the claims
C. Speculation and Prophesy
D. Janssen Pharmaceutica v. Teva Pharms. USA Inc.
1. Affirm: lack of enablement
2. Facts:
a) Dementia drug
b) No basis for its stated claim of an effective cognitive enhancing
amount of galanthamine
c) Specification listed 4 studies of galanthamine improving cognitive
ability in a variety of different animals
d) Examiner determined that it was an obvious claim then given the
discoveries in the studies
e) Patentee argues that it was not obvious because none of the
studies cover a situation in which the animals had cognitive
decline prior to taking galanthamine, as the patentee does in the
claim
(1) Experimental work will be available in two to three months.
And later submitted to the examiner
(a) No results were ever submitted
3. Precedent:
a) Did not demonstrate utility - relevant animal testings were not
finished
(1) Included minimal disclosure of utility
b) Specifications and claims did not “teach one of skill in the art how
to use the claimed method
(1) Because the application only surmised how the claimed
method would be used
4. Reasoning:
a) If a patent claim fails to meet the utility requirement because it is
not useful or operative, then it also fails to meet the how-to-use
aspect of the enablement requirement
b) Neither in vitro test results nor animal test results involving the use
of galantamine to treat alzheimer’s like conditions were provided