Enabling After-Arising Technology

Abstract:     
The enablement doctrine restricts the scope of an inventor’s patent claim so that it remains commensurate with the contribution to technological progress that the inventor has disclosed in her specification. When the Federal Circuit Court of Appeals (Federal Circuit) brings enablement to bear on claims that encompass after-arising technology (AAT), the resulting doctrine is chaotic. Distinct lines of cases recite different doctrines, and the choice among the doctrines determines whether claims encompassing AAT are enabled.

This Article searches for order in the chaos. It proposes that there are three rules that explain what the Federal Circuit does when grappling with the enablement of AAT: the foreseeability rule, the identity rule, and the complementarity rule. Courts and commentators have discussed the first two of these rules, but their effects are poorly understood and their policy justifications have not been clearly explained. The third represents an original contribution to scholarly literature on enablement. In addition, this Article examines the most plausible normative justification for each of the rules. Where the complementarity rule makes claims more commensurate with contributions to technological contributions, the foreseeability and identity rules are “second best” rules that undermine the commensurability of peripheral claims and disclosures in order to achieve other goals.

Accepted Paper Series