Arising most commonly as a defense to an infringement claim, enablement requires a patent to describe the claimed invention in sufficient detail to permit a person having ordinary skill in the relevant field to replicate and use the invention without needing to engage in "undue experimentation." If a patent claim is not "enabled"--i.e., if a person having ordinary skill in the art (PHOSITA) who studied the patent cannot make or use the invention without undue experimentation--the claim is invalid and can no longer be asserted. This penalty deters patent applicants from claiming more than they invented and allows others to develop improvements without fear of infringement.[...] This Note introduces a cohesive treatment of the enablement doctrine and in doing so, seeks to calibrate the doctrine so that it more properly strikes the balance between pioneers and improvers. To this end, Part I introduces the tests that have troubled scholars and highlights these tests' apparent inconsistencies. Part II proffers a theory that reconciles the tensions in the fragmented case law by expanding patentees' obligations under the enablement requirement. This may appear to have harsh effects, as failure to enable carries the penalty of invalidating the patentee's claim. As I will argue, this is a necessary consequence because the alternative would expand the scope of the patentee's rights beyond her invention, providing her with a windfall at the expense of both improvers and (more significantly) society. These benefits justify the proposed standard, but we need not accept its costs without mitigation. Part III introduces and defends three reforms motivated by an understanding of the costs associated with the standard proposed in Part II. First, the Federal Circuit should reconsider its approach to "undue experimentation." To be an effective policy lever, enablement doctrine must account for an array of factual considerations which affect the ease with which skilled persons can make and use the claimed invention, i.e., whether undue experimentation is required. Recognizing this, the Federal Circuit established a multi-factor test for undue experimentation, known as the Wands factors. Courts, however, are not required to consider the Wands factors. Consequently, many courts--including subsequent Federal Circuit panels--have come to rely on just one of these factors as a proxy for the entire multi-factor test. This shortcut leads to outdated views of the PHOSITA and hindsight bias, which contaminate courts' enablement analysis. To avoid this result, the Federal Circuit should reemphasize the role of the PHOSITA and mandate consideration of the Wands factors. Second, the Federal Circuit should resurrect the moribund maxim that claims should be construed narrowly when such construction is necessary to preserve their validity. This maxim would allow courts and parties to litigation to tailor claims to their proper scope as an alternative to the all-or-nothing course of invalidation. Thus, while a patentee's obligations under the proposed enablement standard would be greater, so too would her ability to salvage her claims in the face of a successful enablement defense. Moreover, this option would promote a closer relationship between what a patentee invents and the scope of her patent rights. Finally, current enablement doctrine fails to adequately address the relationship between enablement and later-developed technology. To obtain patent protection, a patentee must enable the embodiments of her invention which fall within the scope of her claims. A critical but unresolved issue is how to treat embodiments that become possible only as a result of technology which arises after the patent application is filed. Because enablement is measured at the time of filing, embodiments that are made possible only after advancements in the art need not be enabled. There is no controversy here. In some cases, however, the Federal Circuit has allowed patent claims to extend to technology developed after filing; in other circumstances, it has declined to do so. This approach inappropriately allows some applicants to capture an invention that they most likely never conceived and "certainly ha[ve] not enabled." This final reform disentangles the inconsistent case law and proposes policy levers for isolating after-arising technologies which merit protection from those that do not.
Timothy C. Saulsbury,
Pioneers versus Improvers: Enabling Optimal Patent Claim Scope,
Mich. Telecomm. & Tech. L. Rev.
Available at: https://repository.law.umich.edu/mttlr/vol16/iss2/4