Patents II Disclosure Requirements

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Patents IIDisclosure Requirements

• Class Notes February 26, 2003
• Law 507 Intellectual Property Spring 2003
• Professor Wagner

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Todays Agenda

• Patents Rewards vs Property Rights
• Patent Disclosure Requirements
• Enablement
• Written Description
• Best Mode

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Patents Rewards vs Property Rights

• Why not simply subsidize invention/innovation
  directly?
• Government-sponsorship of research
• Cash rewards for inventive activity
• Wont these schemes create the same incentives,
  with less of the costs?

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Review Requirements for Patentability

• A valid patent must be . . .
• Fully disclosed ( 112)
• Not subject to a statutory bar ( 102) (Feb. 26)
• Novel ( 102) (Feb. 26)
• Nonobvious ( 103) (Feb. 28)

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The Disclosure Requirement

• 35 U.S.C. 112. - Specification
• 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. . . .

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The Disclosure Requirement

• 35 U.S.C. 112. - Specification
• The specification shall contain a
• 1 written description of the invention, and
• 2 a description 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
• 3 shall set forth the best mode contemplated by
  the inventor of carrying out his invention. . . .

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The Enablement Requirement

• The Incandescent Lamp Patent (1895)
• MS patent claims fibrous or textile material
• Question have MS enabled all such materials?
• Why does the Court invalidate the patent?
• What does the Court want to see in the
  description?
• (Do you agree with the courts distinction?)
• Why do you think the Court detailed Edisons
  experiments w/r/t bamboo?
• What happens to the patent? (Is it entirely
  invalid?) (see claims, p. 198.)

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The Enablement Requirement

• How might Enablement be said to be at the core
  of the patent bargain?
• What are the two basic purposes of the Enablement
  requirement?
• By what standard do we measure Enablement?
• PHOSITA (Who is this?)
• Do you have to describe everything about your
  invention?
• How do you prove your case?

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The Written Description Requirement

• Gentry Gallery v. Berkline (Fed. Cir. 1998)
• Claims recliner sofa, controls anywhere
• Disclosure recliner sofa, controls on the
  console
• What was wrong with this patent?

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The Written Description Requirement

• Gentry Gallery v. Berkline (Fed. Cir. 1998)
• Why is the Gentry patent not invalid on
  Enablement grounds?
• Does Gentry Gallery offer some suggestions about
  strategic patent drafting?
• What is the difference between Written
  Description Enablement? (or What is the
  purpose of written description?)
• Doctrine W/D requires description of the
  invention or proof of possession of the
  invention
• Is this meaningfully distinct from Enablement?
• In what cases would this be useful?)
• Consider different technologies might W/D apply
  differentially? (Is this a good thing?)

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The Best Mode Requirement

• 35 U.S.C. 112. - Specification
• The specification shall set forth the best
  mode contemplated by the inventor of carrying out
  his invention.
• How is this requirement distinct from Enablement
  or Written Description?
• Why require this disclosure separately?

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The Best Mode Requirement

• The Components of the Best Mode Analysis
• Subjective component Did the inventor have a
  best mode of making the invention?
• Objective component If 1 is true, then
  consider whether the disclosure is sufficient.
• What is the standard for disclosure quality?

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The Best Mode Requirement

• Illustrations
• You (the inventor) select a mode by chance or
  convenience. Must you disclose?
• You select a mode because it makes the invention
  easier/cheaper to produce. Must you disclose?
• You mistakenly or inadvertently fail to disclose
  your best mode. Problem?
• Assume you work on a research team
• A (noninventor) colleague determines a better
  mode than you do, and tells you before filing.
• A (noninventor) colleague determines a better
  mode than you do, but does not tell you before
  filing. (Tells you 1 day after filing?)

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• Next Class
• Patents III
• Novelty Loss of Rights