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

20 Pages Posted: 30 Mar 2009 Last revised: 1 Apr 2009

Bernard Chao

University of Denver Sturm College of Law

Date Written: March 23, 2009

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.

Keywords: patent, enablement

JEL Classification: K11, K41

Suggested Citation

Chao, Bernard, Rethinking Enablement in the Predictable Arts: Fully Scoping the New Rule (March 23, 2009). Stanford Technology Law Review, Vol. 3, 2009. Available at SSRN: https://ssrn.com/abstract=1370654

Bernard H. Chao (Contact Author)

University of Denver Sturm College of Law ( email )

2255 E. Evans Avenue
Denver, CO 80208
United States

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