22 See The Discovery Function of the Patent System, supra note 17, at 2025 & n.103 (citing Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Hearing Before the Fed, arguing that discovery does not it is a matter of when the invention is self-discovered through commercialization); Discovery Function of the Patent System, supra note 17, at 2013-17 (claiming that the patent system fails in its mission to disseminate information).
IDENTIFYING THE PROBLEM
No Experimentation Required!
- Constructive Reduction to Practice
- Prophetic Examples
- W hat Is It?
- W hy Is It Used?
- D rawbacks
- IMPROVING THE TEACHING FUNCTION OF PATENTS
59 The written description is the part of the patent (or patent application) that fully describes the invention. bearing in mind that in accordance with the central claims regime the claim merely defined examples of the invention).
Imposing a Working Example Requirement
Raising the Standard of Disclosure
A New Examination Protocol
On the other hand, the applicant may determine that it is very difficult or impossible to actually reduce all or parts of the invention in practice. 34; both serve to ensure that the patent applicant was in full possession of the claimed subject matter at the filing date of the application." classes of chemical compounds, which were broad enough to include some speculation, have no option, regardless of the presence of specific operational examples.
Given that a PHOSITA usually cannot predict experimental results with any reasonable probability of success, there is a danger that embodiments not actually reduced to practice either cannot be made, will not work for their intended purpose, or will require a PHOSITA to engage in unnecessarily extensive experimentation to find out how to practice the invention.1 14 Even the courts have recognized that working examples are most useful for inventions at this end of the spectrum because it is in these areas that where PHOSITA often "has little or no knowledge independent of the patentee's instruction And in terms of training, innovators in unpredictable fields (and especially newer technologies) are highly dependent on the technical literature and would therefore certainly turn to another source if the relevant patent lacked working examples, the examiner preliminarily rejects the broad generic claim of non-activation and requests that the applicant provide additional working examples to enable its full scope. In response, the applicant amends the written description to include an additional working example that replaces one more variable on the core structure.
As a result, the applicant obtains a patent where the claim scope obtained is truly consistent with the teaching provided in the written description.1 19.
Drawing Support from History
After interpreting the claims, assessing the level of skill in the art, and evaluating the teaching provided, the examiner determines that the disclosure only teaches a PHOSITA how to make five hundred compounds, not billions. In the operative case, the Federal Circuit has explained that the Patent Office "has the initial burden of challenging an allegedly correct assertion of utility in discovery.". The Pfaff court noted Alexander Graham Bell's telephone patent, which was granted even though he filed before the invention was actually reduced to practice, because "'it is sufficient if he describes his method with sufficient clarity and precision. to enable those skilled in the matter to understand what the process is and whether it shows any practical way of putting it into operation.''
Genentech relied, to its detriment, on the oft-quoted statement that "a patent need not teach, and preferably omit, what is well known in the art." Medrad, Inc., 481 F.3d Fed. Cir. 2007) (explaining that the written description need not necessarily describe how to make and use every embodiment of the invention because PHOSITA's "'knowledge of the prior art and routine experimentation can often fill in the gaps'" (citing AK. It is [written description], not the knowledge of a person skilled in the art, which must provide the new aspects of an invention to constitute sufficient possibility.13 6.
The lack of any actual detail, coupled with the fact that no one had been able to produce any human protein through fragmented fusion expression at the time of filing, led the court to easily conclude that a PHOSITA would require unnecessary experiments to get the claimed result. .13 7 Indeed, the speculative statement in the written description "provide[d] only a starting point, a direction for further research In sum, a possible description for inventions of this type should provide PHOSITA with "a specific and useful learning. "1 3 9.
Potential Benefits
- It Will Simplify the Enablement Inquiry
- It Will Yield More Robust Patents
- It Will Bridge the Disconnect Between Science and
- It Will Make Patents a Competitive Source of
- CRITICISMS AND LIMITS OF THE TEACHING FUNCTION
164 Dennis Crouch asserts that "enabling must begin with the knowledge of a person skilled in the art and progress from there." Patently-O, http://. 170 Although patent laws encourage prompt filing, "the public interest is also considered to be served by allowing an inventor time to perfect his invention." TP Labs., Inc. RESNIK, RESEARCH RESPONSIBILITY 51 (2d ed. The ability of other researchers to repeat experiments following the method in the published report is crucial to the progress of science.”).
In re Libby, 255 F.2d 412, 415 (C.C.P.A. It is not necessary for a patentee to understand the scientific principles underlying his invention as long as he makes a disclosure sufficient to enable others skilled in the art state to practice the invention. "). explaining that an inventor's ignorance of the scientific principles is immaterial as long as the patent's disclosure sets forth the "thing" that must be done in order for it to be reproduced); Life Techs., Inc . J.) ("It is of no importance whether the thing is simple or complicated, or it. In rejecting this hypothesis, McManis and Noh argue in the alternative that when the patent is published, communication between researchers.
It could, to some extent, shift from the scientific literature to the patent record, with the granted patent becoming a focus of citations both in the scientific literature and in subsequent patent applications from academic researchers seeking to distinguish their follow-on innovation from the prior art. " McManis & Noh, supra (manuscript at 33).
Conflicting Policy Concerns
But see Kewanee Oil Co. which explains that one purpose of the patent system is to promote the disclosure of inventions that stimulate further innovation and allow the public to practice the invention once the patent expires). As implemented by patent law, the grant of the right to exclude entails the obligation to disclose the operation of the invention, thereby adding to the stock of knowledge without reducing the patent-supported incentive to innovate. Similarly, if the invention is publicly used, sold, or subject to an offer for sale in the United States, the applicant must file within one year of the event.
In particular, the extensive ex ante incentives of the current regime may discourage ex post improvement activity. A future inventor, in the further progress of science, may discover a mode of writing or printing at a distance [by electromagnetism] without using any part of the process or combination set forth in the plaintiff's specification. In such a situation, the holder of the narrower ("subservient") patent cannot practice its invention without a license from the holder of the dominant patent.
At the same time, the holder of the dominant patent cannot exercise the specific improved feature claimed in the more limited patent without a license.
Teaching Whom ?
But although the written description does not have to become a scientific treatise, it is also true that a scientific publication and the patent document in many respects share similar goals, namely to reveal something new,2 1 7 to teach fellow craftsmen how to the invention or discovery,2 18 and to spur further innovation in the field.2 19 And as discussed above, one long-term consequence of the proposal is that the written description will eventually resemble a . because the patent document is not intended to be a production specification."). 217 Professor Rebecca Eisenberg argues that both the scientific community and the patent system favor full disclosure. Second, many non-academic patent holders prefer not to disclose the technical details of their inventions. outside of the patent system.
ORG., Intellectual Property Rights (IP) and Innovation in Small and Medium Enterprises It has been estimated that patent documents contain 70% of the world's accumulated technical knowledge and that most of the information contained in patent documents is either not published never elsewhere or is first discovered through the publication of the patent application."), available at http://www.wipo.int/sme/. examining the difficulties of reverse engineering); the Patent System Discovery Function, on supra note 17, at 2016-17 (examining the economic limitations of reverse engineering); Edwin Mansfield, How Rapidly Does New Industrial Technology Leak Out?, 34 J. It is precisely in these contexts, when the patent system is the only means of discovery, that the proposal is the most important.
231 Although the patent holder can exclude others from practicing the invention until the patent term expires, there is hope that the patent will promote innovation by encouraging others to design around the invention and create new products and processes.
The Disclosure-Dedication Rule
Second, the patentee can take steps at the drafting stage to avoid public commitment problems. One commenter suggests that the patentee should draft the broadest claim to extend to the limits set by the prior art. History Prosecution estoppel is a judicially created doctrine that prohibits a patentee from "'recovering, through litigation, coverage of subject matter removed during the prosecution of the patent application.'" Festo Corp.
For example, if a patent has not been issued, the patentee may either amend the pending claims to include unclaimed subject matter,2 4 8 add new claims directed to that subject matter,2 49 or file a continuation application.25 0 If the patent has issued, the patentee may file an application for reissue within two years of the date of issue and seek to expand the scope of the original claims to include previously discovered but undisclosed matter.2 5 1. And whereas this proposal will bridge the gap between patent laws and scientific research norms, it will also highlight the debate over the adequacy of disclosure and the appropriate scope of claims. It has the same written description as the parent and enjoys the benefit of the earlier filing date.
stating that an extended claim may be made within two years of the issuance of the original patent in a reissue application); see also Johnson &Johnston Assocs.
