Heightened Enablement in the Unpredictable Arts

Abstract

A bedrock principle of patent law is that an applicant must sufficiently disclose the invention in exchange for the right to exclude. The essential facet of the disclosure requirement is enablement, which compels a patent applicant to enable a person having ordinary skill in the art (PHOSITA) how to make and use the full scope of the claimed invention without undue experimentation. Enablement problems may arise when the applicant claims an invention broadly with a dearth of supporting data or examples. This is problematic in unpredictable fields like chemistry because a PHOSITA often needs a specific and detailed teaching in order to practice the full scope of the claimed invention. Yet the current patent examination framework allows a patentee to obtain a broad claim encompassing millions of compounds enabled by a trivial amount of supporting disclosure. The problem here is that undue patent scope can have a chilling effect on other scientists who are trying to elucidate how to make and use the claimed invention while the inventor does not know how to do so. In an effort to bridge the disconnect between patent law and the experimental sciences, I propose a new approach to the prima facie case of nonenablement for patent applications in the unpredictable arts. After examining the PHOSITA's role in the enablement analysis, I elucidate the problems with the current framework for the enablement inquiry, propose a new framework, and explain why it mitigates problems with the current framework. I conclude by discussing some of the concerns that accompany the new framework and explain how the proposal mitigates these concerns.