IP In Depth: Avoiding Unnecessary Disclosures In Patent Applications

The disclosure of an invention in a patent application must meet the "enablement" provision of the U.S. Code, which states that 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."1

In patent applications, inventors are required to describe their inventions sufficiently to meet the "enablement" requirement; however, there is no requirement that inventors have to explain the details of how their inventions work. The distinction between disclosing how to practice an invention and explaining how an invention works is important to understand when drafting patent applications.

Meeting Enablement Requirements

Sufficiency of disclosure for purposes of enablement does not require an excessive amount of detail. As held by the U.S. Patent Office Board of Patent Interferences in Staehelin et al. v. Scher et al.: "the law does not require a specification to be a blueprint in order to satisfy the requirement for enablement."2

The most common test that is applied to determine sufficiency of disclosure for purposes of enablement is based upon the amount of experimentation that might have to be conducted to practice an invention. A finding that an undue amount experimentation is necessary to practice a disclosed invention can lead to a determination that the enablement requirement has not been met. However, "[A] reasonable amount of routine experimentation required to practice a claimed invention does not violate the enablement requirement."3 A list of factors that are to be considered in evaluating whether any necessary experimentation is undue can be found in the Manual of Patent Examining Procedures(MPEP), section 2164.01(a).

Inventing vs. Discovering

While striving to meet the enablement requirement, a patent applicant should avoid raising or discussing unnecessary details about how his/her invention works. The Constitutional provision for our patent laws categorizes "inventors" with their "discoveries." As a result, the courts have long held that there is no distinction between "inventing" and "discovering."4 Thus, while "inventing" can and often involves some degree of formal investigation, experimentation, testing, etc., inventing can just as well involve an unexpected discovery devoid of any formal...