The Enablement Pendulum Swings Back

Abstract:     
Possibly in response to criticisms that the U.S. patent system affords too much legal protection to patent owners, the courts have begun to chip away at patent rights. Curiously enough, the Supreme Court has heard a relatively large number of patent cases over its last three terms, which suggests to several commentators and members of the patent bar that the Court is unhappy with the Federal Circuit's stewardship of the patent system and has, among other things, invited the court to rethink its approach to modulating patent rights. And it appears that the Federal Circuit has accepted the invitation. In this Article I examine the Federal Circuit's new enablement standard and explore its potential impact on patentees. In short, the enablement requirement ensures that the patent discloses the claimed invention in sufficient detail so that a person having ordinary skill in the art (PHOSITA) can make and use it without undue experimentation. I set the stage for the discussion by briefly exploring the contours of the enablement requirement. I then describe the two strands of enablement jurisprudence which have emerged over the past half-century and the limits of this dichotomy. Next, after exploring how the Supreme Court's lesson about the importance of the PHOSITA in KSR v. Teleflex may partially explain the Federal Circuit's adoption of the "full scope" enablement standard, I briefly discuss several recent cases where the court applies the new standard. Finally, I discuss the implications of full scope enablement by providing lessons for patentees and presenting thoughts on the future of claim drafting.

Number of Pages in PDF File: 17

Keywords: patents, patentability, disclosure, enablement, Federal Circuit

JEL Classification: O34, K39

Accepted Paper Series