Patents IIPatents IIDisclosure RequirementsDisclosure Requirements

Class Notes: February 26, Class Notes: February 26, 20032003

Law 507 | Intellectual Property | Spring Law 507 | Intellectual Property | Spring 20032003

Professor WagnerProfessor Wagner

2/26/032/26/03 22Law 507 | Spring 2003Law 507 | Spring 2003

Today’s AgendaToday’s Agenda

1. Patents: Rewards vs Property Rights

2. Patent Disclosure Requirements

a) Enablement

b) Written Description

c) Best Mode

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Patents: Rewards vs Property Patents: Rewards vs Property RightsRights

Why not simply subsidize Why not simply subsidize invention/innovation directly?invention/innovation directly?

1. Government-sponsorship of research2. Cash rewards for inventive activity

Won’t these schemes create the same incentives, with less of the costs?

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Review: Requirements for Review: Requirements for PatentabilityPatentability

A valid patent must be . . .A valid patent must be . . .

1.1. Fully disclosed (§ 112)Fully disclosed (§ 112)

2. Not subject to a statutory bar (§ 102)

(Feb. 26)

3. Novel (§ 102) (Feb. 26)

4. Nonobvious (§ 103) (Feb. 28)

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The Disclosure RequirementThe Disclosure Requirement

35 U.S.C. § 112. - Specification35 U.S.C. § 112. - Specification

The specification shall contain a written The specification shall contain a written description of the invention, and of the description of the invention, and of the manner and process of making and using it, in manner and process of making and using it, in such full, clear, concise, and exact terms as to such full, clear, concise, and exact terms as to enable any person skilled in the art to which it enable any person skilled in the art to which it pertains, or with which it is most nearly pertains, or with which it is most nearly connected, to make and use the same, and connected, to make and use the same, and shall set forth the best mode contemplated by shall set forth the best mode contemplated by the inventor of carrying out his invention. . . .the inventor of carrying out his invention. . . .

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The Disclosure RequirementThe Disclosure Requirement

35 U.S.C. § 112. - Specification35 U.S.C. § 112. - Specification

The specification shall contain a 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. . . .

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The Enablement RequirementThe Enablement Requirement

The Incandescent Lamp Patent (1895)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.)

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The Enablement RequirementThe Enablement Requirement

How might Enablement be said to be at How might Enablement be said to be at the “core” of the ‘patent bargain’?the “core” of the ‘patent bargain’?

What are the two basic purposes of the What are the two basic purposes of the Enablement requirement?Enablement requirement?

By what standard do we measure By what standard do we measure ‘Enablement’?‘Enablement’?• PHOSITA (Who is this?)• Do you have to describe everything about

your invention?• How do you prove your case?

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The Written Description The Written Description RequirementRequirement

Gentry Gallery v. Berkline (Fed. Cir. 1998)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?

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The Written Description The Written Description RequirementRequirement

Gentry Gallery v. Berkline (Fed. Cir. 1998)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 What is the difference between Written Description & Enablement? (or … What is the Description & Enablement? (or … What is the purpose of written description?)purpose of written description?)• Doctrine: W/D requires “description of the invention”

or proof of “possession of the invention” o Is this meaningfully distinct from Enablement?o In what cases would this be useful?)

• Consider different technologies: might W/D apply differentially? (Is this a good thing?)

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The Best Mode RequirementThe Best Mode Requirement

35 U.S.C. § 112. - Specification35 U.S.C. § 112. - Specification

The specification … shall set forth the The specification … shall set forth the best modebest mode contemplated by the contemplated by the inventor of carrying out his inventor of carrying out his invention….invention….

1.1. How is this requirement distinct from How is this requirement distinct from Enablement or Written Description?Enablement or Written Description?

2.2. Why require this disclosure separately?Why require this disclosure separately?

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The Best Mode RequirementThe Best Mode Requirement

The Components of the Best Mode The Components of the Best Mode AnalysisAnalysis

1.1. Subjective component: Subjective component: Did the Did the inventor have a best mode of making inventor have a best mode of making the invention?the invention?

2.2. Objective component: Objective component: If #1 is true, If #1 is true, then consider whether the disclosure is then consider whether the disclosure is sufficientsufficient..

• What is the standard for disclosure quality?What is the standard for disclosure quality?

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The Best Mode RequirementThe Best Mode Requirement

IllustrationsIllustrations

1.1. You (the inventor) select a mode by chance or You (the inventor) select a mode by chance or convenience. Must you disclose?convenience. Must you disclose?

2.2. You select a mode because it makes the You select a mode because it makes the invention easier/cheaper to produce. Must invention easier/cheaper to produce. Must you disclose?you disclose?

3.3. You mistakenly or inadvertently fail to You mistakenly or inadvertently fail to disclose your best mode. Problem?disclose your best mode. Problem?

4.4. Assume you work on a research team: 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?)

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Patents IIIPatents IIINovelty & Loss of RightsNovelty & Loss of Rights