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Patent Enablement: What level of detail do I need for a patent?

A question I get asked often is, “I have an idea, I think it is new, but I do not totally understand the technology I am working with or how to code my invention, what level of description do I need to know when writing a patent?”

First, the law on this subject is governed by 35 USC 112, first paragraph, otherwise known as the enablement standard. 35 USC 112, first paragraph is reproduced below (emphasis added):

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.

Section 2164, of the Manual of Patent Examining Procedure (MPEP, essentially the patent examiner’s at the USPTO “rulebook”) provides guidance to the meaning enablement under 35 USC 112, first paragraph. Section 2164 of the MPEP states the following, emphasis added:

The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. The information contained in the disclosure of an application must be sufficient to inform those skilled in the relevant art how to both make and use the claimed invention However, to comply with 35 U.S.C. 112, first paragraph, it is not necessary to “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir. 2003) (an invention directed to a general system to improve the cleaning process for semiconductor wafers was enabled by a disclosure showing improvements in the overall system).

Essentially, to meet the enablement requirement, a patent application is met when at the time of filing the application one skilled in the art, having read the specification could practice the invention without “undue experimentation.” In re Wands, 858 F.2d 731. However, to complicate the matter even more, under experimentation is not a single, factual determination but is based on many considerations, which are laid out in the case of ALZA Corp. v. Andrx Pharms. LLC, 603 F.3d 935.  The following are a list of non-exlusive factors that courts and Examiner’s will look at to determine if a patent application is enabling. (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

The issue of enablement is even further complicated because the federal circuit has provided different lines of reasoning when applying the enablement standard. In a first line of reasoning, the federal circuit has held that a disclosure of a single example of making and using the claimed invention is sufficient for enabling a person to practice the scope of patent application without undue experimentation. In a second line of reasoning, the federal circuit has held that a range of examples is desired to meet the enablement requirement. These lines of reasoning are based in part on the technology described in the invention. For mechanical arts, typically only a single example will be sufficient to meet the enablement standard. For chemistry related patents, the federal circuit desires a range of examples to meet the enablement standard.

For software related patents, I believe a detailed description of one embodiment should be sufficient to meet the enablement requirement. However, to meet the enablement standard for software patents, a patent attorney or other person drafting the patent application must include details of the computer implementations of signals communicated and processed. For example, if an inventor has invented a mobile application, where a backend server receives instructions from a smart phone, the application should be written in terms such as the following “the server is configured to receive data from a mobile computing device. The received data may be commands input via a graphical user interface displayed on the mobile computing device.” Also, while drafting patent applications concerning software, patent attorneys should avoid anthropomorphic phrases that give computing elements human characteristics. For example, a processor doesn’t “decide” anything, instead the processor “execute computer readable code that determines x,y,z.” Further a mistake made by new patent attorney’s is to give characteristics to inanimate computer elements. For example, a “database” or “memory” doesn’t “determine” or “see” anything, the database merely holds data. The processor may utilize the database to compare a NAME value for a first entry with a NAME value for a second entry within the database to determine if the NAME values are the same.

In summary, to meet the enablement standard a patent application should enable one skilled in the art to make and use the invention. However, the enablement standard will vary based on courts and technology used. Therefore, it is best to include several examples within a patent application. For this reason, a decent patent application should be at a minimum 20 pages.

Posted in Patent Basics on 02/25/2013 08:55 pm
 

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