Rethinking Enablement in the Predictable Arts: Fully Scoping the New Rule

Abstract:     
In exchange for granting inventors a limited monopoly, the patent laws require inventors to "enable" the public to make and use their invention. In Liebel-Flarsheim Co. v. Medrad, Inc., Automotive Technologies International, Inc. v. BMW of North America, Inc., and Sitrick v. Dreamworks, L.L.C., the Federal Circuit made it far easier to show that patents are invalid based on lack of enablement in the predictable arts. These decisions rely on the enablement doctrine to invalidate claims that appear to be far broader in scope than what the written description of the patents suggests.

This Article: (1) explains the rationale underlying the enablement doctrine; (2) traces how the doctrine has evolved into various inconsistent tests; (3) analyzes the three new decisions; and (4) rejects the "full scope" rule that these decisions advance. Specifically, this Article argues that in the predictable arts, the full scope rule is extremely difficult to apply and will cause unnecessary litigation. Moreover, the enablement doctrine is a blunt instrument that rewards unintended beneficiaries and cannot consider all the facts important to an overbreadth analysis. Therefore, the enablement doctrine is not well suited to addressing the problem of generic or overbroad claims.

Number of Pages in PDF File: 20

Keywords: patent, enablement

JEL Classification: K11, K41

Accepted Paper Series