The
Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to "make and use" the claimed invention, 35 U.S.C. §112, or whether it must instead enable those skilled in the art "to reach the full scope of claimed embodiments" without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial "time and effort."
Section 112 of the Patent Act requires a patent's specification to "enable any person skilled in the art... to make and use" the patented invention. 35 U.S.C. § 112(a). In
-
Teach those skilled in the art to make and use the claimed invention using the "roadmap" provided in the specification; or
- Enable those skilled in the art to practice the full scope of the claimed invention without undue experimentation.
This case is sure to be closely watched by those in the biologics space, where claiming a molecule based upon its "function" is a common claim strategy.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
BakerHostetler
© Mondaq Ltd, 2022 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source