Requirements of Enablement Written Description and Utility

application (as set forth in Art. 57 EPC). With regard to genetic patenting, the European Patent Convention explicitly states the industrial application (e.g., function) of a sequence or a partial sequence of a gene must be disclosed in the patent application (see Rule 23e (3) EPC).

Apart from the essentials of ''novelty'' and ''nonobvious-ness,'' the invention has to be described in such a manner as to comply with both the written description and the enablement requirement. These requirements are contained in 35 U.S.C. section 112. Similar regulations also exist in other patent laws, as exemplified by the Articles 83 and 84 EPC.

An underlying rationale of the patent system is to grant a patentee an exclusive right for commercialization of an invention, provided, however, that the invention is sufficiently disclosed. Consequently, the purpose of the enablement requirement is to assure that other parties skilled in the art can practice the full scope of the claimed invention without undue experimentation. Claims are typically drafted in broad terms to prevent competitors from circumventing a patented invention. The claims must be sufficiently supported by the patent specification, i.e., claim breadth of the claims and the disclosure (enable-ment) in the description of the invention should correspond with each other. Otherwise, obstacles in the patent prosecution process will become inevitable and even if a patent is finally issued, it could still be ruled invalid while in the process of being enforced.

To satisfy the written-description requirement, the invention shall be described in sufficient detail so that a person of ordinary skill in the art would recognize that the inventor was in possession of the claimed invention at the time of filing. The requirements of written description and enablement are distinct from each other. This implies that although a patent specification may sufficiently enable a person skilled in the art to practice the invention, it may still be ruled to have failed to comply with the written-description requirement. The case ''The Regents of the University of California vs. Eli Lilly and Co.''[1] provides an example for the significance of the written-disclosure requirement. The disclosure contained the nucleotide sequence of a rat proinsulin cDNA and a general method for obtaining the corresponding human cDNA. The patent claims were broad in scope, covering not only the rat cDNA but also the vertebrate, mammalian, and human cDNA. The latter ones were held invalid because the specification did not provide an adequate written description. In summary, the general tenor in U.S. decisions is that it is not sufficient for obtaining sound patent protection to merely disclose a wish or a plan for obtaining the claimed invention.

In addition, the patent systems typically require that the claimed invention must have a utility (as set forth in 35 U.S.C. section 101) or must be susceptible of industrial

Getting Started With Dumbbells

Getting Started With Dumbbells

The use of dumbbells gives you a much more comprehensive strengthening effect because the workout engages your stabilizer muscles, in addition to the muscle you may be pin-pointing. Without all of the belts and artificial stabilizers of a machine, you also engage your core muscles, which are your body's natural stabilizers.

Get My Free Ebook


Post a comment