7. Disclosure
Learning Objectives: Unit 7
Upon completion of this unit, you should be able to:
- Explain the modern requirement of disclosure.
- Explain the policy issues underlying the enablement and written description requirements.
- Analyze a hypothetical scenario involving enablement and written description issues.
Although an invention may meet the newness requirements of §§ 102 and 103, and may be claimed in a sufficiently definite manner, an inventor is still not entitled to a patent until the invention has been adequately disclosed. Put another way, an inventor is limited to claims that are commensurate with what was actually disclosed. As the readings reveal, this disclosure requirement serves multiple purposes.
The classic entry point into this discussion is The Incandescent Lamp Patent (1895), which involves the general concept of a disclosure requirement. Here, Thomas Edison is being sued for patent infringement by the owners of an earlier patent. In the excerpt provide, the Court is grappling with the question of whether the knowledge disclosed by the patentees, Sawyer & Man, is sufficient to support their claims.
The Incandescent Lamp Patent was decided in an era in which patent law doctrine was much more inchoate and less crystallized than its current form. Beginning around the enactment of the 1952 Patent Act, courts—in particular, the Court of Customs and Patent Appeals, which heard appeals of decisions by the USPTO to deny patents—began to formalize and crystallize patent law doctrine.
Today, the disclosure requirement takes two primary doctrinal forms: enablement, which involves the question of whether the technical disclosure of the patent is sufficient to enable one of ordinary skill in the art to make and use the invention without undue experimentation, and written description, which involves the question of whether a person of ordinary skill in the art would consider the inventor to have had “possession” of the claimed invention based on the application as initially filed. The statutory basis for both requirements is 35 U.S.C. § 112(a). However, the underpinnings of these modern doctrines remain rooted in the core principles discussed in the Incandescent Lamp Patent case.
The contemporary case that you will read is Amgen v. Sanofi, a patent infringement case involving antibody technologies. As in Incandescent Lamp Patent case, the accused infringer is defending by arguing that the patent owner’s patent is invalid–in this instance, by failing to meet the statutory requirement of enablement.
