1. Patents II Disclosure Requirements
Class Notes: February 26, 2003
Law 507 | Intellectual Property | Spring 2003
Professor Wagner

2. Today’s Agenda Patents: Rewards vs Property Rights
Patent Disclosure Requirements
Enablement
Written Description
Best Mode
2/26/03
Law 507 | Spring 2003

3. Patents: Rewards vs Property Rights
Why not simply subsidize invention/innovation directly?
Government-sponsorship of research
Cash rewards for inventive activity
Won’t these schemes create the same incentives, with less of the costs?
2/26/03
Law 507 | Spring 2003

4. Review: Requirements for Patentability
A valid patent must be . . .
Fully disclosed (§ 112)
Not subject to a statutory bar (§ 102) (Feb. 26)
Novel (§ 102) (Feb. 26)
Nonobvious (§ 103) (Feb. 28)
2/26/03
Law 507 | Spring 2003

5. The Disclosure Requirement
35 U.S.C. § Specification
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention
2/26/03
Law 507 | Spring 2003

6. The Disclosure Requirement
35 U.S.C. § Specification
The specification shall contain a
[1] written description of the invention, and
[2] [a description] of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and
[3] shall set forth the best mode contemplated by the inventor of carrying out his invention
2/26/03
Law 507 | Spring 2003

7. The Enablement Requirement
The Incandescent Lamp Patent (1895)
M&S patent: claims “fibrous or textile material”
Question: have M&S enabled all such materials?
Why does the Court invalidate the patent?
What does the Court want to see in the description?
(Do you agree with the court’s distinction?)
Why do you think the Court detailed Edison’s experiments w/r/t bamboo?
What happens to the patent? (Is it entirely invalid?) (see claims, p. 198.)
2/26/03
Law 507 | Spring 2003

8. The Enablement Requirement
How might Enablement be said to be at the “core” of the ‘patent bargain’?
What are the two basic purposes of the Enablement requirement?
By what standard do we measure ‘Enablement’?
PHOSITA (Who is this?)
Do you have to describe everything about your invention?
How do you prove your case?
2/26/03
Law 507 | Spring 2003

9. The Written Description Requirement
Gentry Gallery v. Berkline (Fed. Cir. 1998)
Claims: recliner sofa, controls anywhere
Disclosure: recliner sofa, controls on the console
What was wrong with this patent?
2/26/03
Law 507 | Spring 2003

10. The Written Description Requirement
Gentry Gallery v. Berkline (Fed. Cir. 1998)
Why is the Gentry patent not invalid on Enablement grounds?
Does Gentry Gallery offer some suggestions about strategic patent drafting?
What is the difference between Written Description & Enablement? (or … What is the purpose of written description?)
Doctrine: W/D requires “description of the invention” or proof of “possession of the invention”
Is this meaningfully distinct from Enablement?
In what cases would this be useful?)
Consider different technologies: might W/D apply differentially? (Is this a good thing?)
2/26/03
Law 507 | Spring 2003

11. The Best Mode Requirement
35 U.S.C. § Specification
The specification … shall set forth the best mode contemplated by the inventor of carrying out his invention….
How is this requirement distinct from Enablement or Written Description?
Why require this disclosure separately?
2/26/03
Law 507 | Spring 2003

12. The Best Mode Requirement
The Components of the Best Mode Analysis
Subjective component: Did the inventor have a best mode of making the invention?
Objective component: If #1 is true, then consider whether the disclosure is sufficient.
What is the standard for disclosure quality?
2/26/03
Law 507 | Spring 2003

13. The Best Mode Requirement
Illustrations
You (the inventor) select a mode by chance or convenience. Must you disclose?
You select a mode because it makes the invention easier/cheaper to produce. Must you disclose?
You mistakenly or inadvertently fail to disclose your best mode. Problem?
Assume you work on a research team:
A (noninventor) colleague determines a better mode than you do, and tells you before filing.
A (noninventor) colleague determines a better mode than you do, but does not tell you before filing. (Tells you 1 day after filing?)
2/26/03
Law 507 | Spring 2003

14. Novelty & Loss of Rights
Next Class
Patents III
Novelty & Loss of Rights
2/26/03
Law 507 | Spring 2003