1. Patents II Disclosure Requirements Class 12 Notes Law 507 | Intellectual Property | Spring 2004 Professor Wagner

2. 2/13 Today’s Agenda 1.Patent Disclosure Requirements a)Enablement b)Written Description c)Best Mode

3. 3/13 Review: Requirements for Patentability A valid patent must be... 1.Fully disclosed (§ 112) 2.Not subject to a statutory bar (§ 102) (Class 13) 3.Novel (§ 102) (Class 13) 4.Nonobvious (§ 103) (Class 14)

4. 4/13 The Disclosure Requirement 35 U.S.C. § 112. - 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....

5. 5/13 The Disclosure Requirement 35 U.S.C. § 112. - 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....

6. 6/13 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.)

7. 7/13 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?

8. 8/13 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?

9. 9/13 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” oIs this meaningfully distinct from Enablement? oIn what cases would this be useful? Consider different technologies: might W/D apply differentially? (Is this a good thing?)

10. 10/13 The Best Mode Requirement 35 U.S.C. § 112. - Specification The specification … shall set forth the best mode contemplated by the inventor of carrying out his invention…. 1.How is this requirement distinct from Enablement or Written Description? 2.Why require this disclosure separately?

11. 11/13 The Best Mode Requirement The Components of the Best Mode Analysis 1.Subjective component: Did the inventor have a best mode of making the invention? 2.Objective component: If #1 is true, then consider whether the disclosure is sufficient. What is the standard for disclosure quality?What is the standard for disclosure quality?

12. 12/13 The Best Mode Requirement Illustrations 1.You (the inventor) select a mode by chance or convenience. Must you disclose? 2.You select a mode because it makes the invention easier/cheaper to produce. Must you disclose? 3.You mistakenly or inadvertently fail to disclose your best mode. Problem? 4.Assume you work on a research team: a)A (noninventor) colleague determines a better mode than you do, and tells you before filing. b)A (noninventor) colleague determines a better mode than you do, but does not tell you before filing. (Tells you 1 day after filing?)

13. 13/13 Next Class Patents III Novelty & Loss of Rights