Document Type

Working Paper

Publication Date

8-14-2016

SSRN Discipline

LSN Subject Matter eJournals; Innovation Disciplines eJournals; ERPN Subject Matter eJournals; IRPN Subject Matter eJournals; Intellectual Property Law eJournals; Innovation Research & Policy Network; Legal Scholarship Network; Entrepreneurship Research & Policy Network; Law School Research Papers - Legal Studies; Law & Society eJournals; Law & Society: Private Law eJournals; AARN Subject Matter eJournals; Anthropology & Archaeology Research Network

Abstract

The claims of a patent and its enabling disclosure must be commensurate in scope However because of the openended nature of most patent claims in fields of rapidlydeveloping technology it is almost inevitable that before the patent has expired the claims will read on embodiments that the specification does not teach The current law on scope enablement is the source of much confusion Because enablement must be judged from a filingdate perspective some cases dismiss later advancements eg a newlydiscovered species within a claimed genus as irrelevant Other cases in contrast hold patent claims invalid because they exceed the scope of what could be achieved when the application was filed A clear and balanced rule of scope enablement is essential to a patent system designed to "promote the Progress ofUseful Arts" Claims that exceed the scope of the patent's teachings can stand in the way of technological progress at the same time claims to important advancements "“ the advancements most susceptible to elaboration and improvement "“ should not be so severely limited in scope that they are all but worthless In this Article I propose an analytical framework designed to reconcile some of the apparent contradictions and to reward patentees in a manner that promotes technological advancement in rapidlydeveloping fields I propose that courts address patent claims that include nonenabled embodiments from the perspective of a reasonable applicant The claims should not be held invalid 1 if the nonenabled embodiments were unforeseeable 2 if the nonenabled embodiments are "tangential" ie the nonenabled aspects of those embodiments are unrelated to the patentee's contribution to the art or 3 if for some other reason a reasonable applicant could not have been expected to draft claims that would have excluded the nonenabled embodiments The model for this threepart test is the Supreme Court's rule on prosecution history estoppel as outlined in Festo Although enablement and prosecution history estoppel are very different areas of patent law in both cases respect for the limitations of a reasonable applicant leads to outcomes consistent with sound patent policy

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