Week 1:
Introduction to Patents; Validity: Disclosure Requirements
* The preferred form of filing at the PTO is the following:
1) Title
2) Cross-reference to related inventions
3) Statement regarding federally sponsored research
4) Background of the invention
5) Summary of the invention
6) Brief description of the drawings
7) Detailed description of the invention
8) Claims
9) Abstract of the disclosure
10) Drawings
11) Oath or declaration
Enablement
* Enablement is the “heart” of the patent quid pro quo. The inventor must inform the public how to make and use the invention so that others can improve upon it.
O’Reilly v. Morse (pg. 157). Here, the objection to Morse’s patent is that he has tried to make it too broad by attempting to claim patent rights over any type of electromagnetic communication which allows you to make/print “intelligible characters” (claim 8). The SC holds this to be way too broad of a claim. Instead of enabling, Morse would have a patent on any type of EM communication!
* This is one of the central policy goals of enablement, the advancement of the Art. Morse’s claim 8 would actually stifle invention.
In re Glass (pg. 169). Here, the patentee of a process for “growing” crystals (such as boron, sapphire, graphite, etc.) has failed to include such variables as temperature, pressure, and vapor saturation. The vagueness is fatal, as a PHOSITA would be unable to reproduce the invention based on the disclosure. Note also that there seems to be a best mode problem here as well.
* The sufficiency of the disclosure is as of the filing date, not at the time of a challenge.
* The enabling disclosure must also contain information on how to use the invention otherwise it will fail for enablement and under § 101 for lack of utility.
* Note that for microorganisms, enablement may require deposit of precursor microorganisms if said microorganisms are not readily available to other inventors.
In re Hogan (pg. 177). Here, the issue is whether or not the later inventions by others show that the patent at issue was not enabling. The patent at issue is a variation (in some form) of a patent traceable all the way back to 1953 (it was 1977 at the time this appeal is heard). The later Art shows how to make long
roves upon that drug in various ways. However, in its patent, it does not disclose the “new” best mode. It appears that the actual inventor, Crookes, did not know of the best mode at the time of filing (Glaxo may have intentionally isolated him from this knowledge). Nonetheless, the court rules that the inventor must actually know of the best mode, and Glaxo appears to win. Perhaps this case would have been better challenged under inequitable conduct.
Great Northern v Henry Molded Products (pg. 200). Here, Henry Molded failed to disclose a particular aspect of its patented device (diamond indentations), and thus the patent is invalid.
* Note that the best mode requirement may, but need not always, require some level of “production detail”. On the other hand, a best mode need not be required to facilitate exact duplication. Somewhere in there is the magical happy-zone the courts are looking for.
