Sufficiency of disclosure
Encyclopedia
Most patent
law
systems require that a patent application
disclose a claim
ed invention
in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the jurisdiction.
, is granted a monopoly
for a given period of time in exchange for the inventor disclosing to the public how to make or practice his or her invention. If a patent fails to contain such information, then the bargain is violated, and the patent is unenforceable or can be revoked.
states that an application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Sufficiency is considered by the examiner during examination of a patent application and the requirement of Article 83 must be complied with in order for a patent to be granted. Insufficient disclosure is also a ground for opposition
under .
For instance, an insufficiency of disclosure might arise if references to standardisation documents are provided to support essential aspects of the invention, but if these references are not sufficiently precise so that "the skilled person would have to make ... undue efforts to find and get together the information it needs to carry out the invention".
Insufficiency is also a ground for revocation under Section 72 of the UK Patents Act.
In the "predictable arts", such as mechanical
inventions and software inventions, very little description is required. A mere flow chart of a piece of software, for example, is adequate. Source code is not normally required. In the “unpredictable arts”, such as chemistry
and pharmaceuticals, a very complete description is required.
In a 2005 U.S. court case, several of Jerome H. Lemelson
patents covering bar code readers were held to be invalid because the specification was not complete enough for a person of ordinary skill in the art of electrical engineering to have made and used the claimed invention at the time the patent was filed (1954) without undue experimentation. In this case the court held that a person of ordinary skill in the art was a degreed electrical engineer with two years of experience as of the filing date of the original patent application, 1954. One of the challenges of this court case, which was decided in 2005, was to find experts on the state of the art who were alive in 1954.
, the sufficiency of disclosure requirement is complemented by an additional requirement, generally not found in other national patent jurisdictions: the "best mode requirement". According to the requirement, the disclosure must also contain the inventor's "best mode" of making or practicing the invention. For example, if an inventor knows that a liquid should be heated to 250 degrees for optimal performance, but discloses in the patent that the liquid should be heated to "above 200 degrees", then the inventor has not disclosed his "best mode" for carrying out the invention. The best mode must be disclosed for the entire invention, and not only its innovative aspects.
The "best mode requirement" only applies to what the inventor knows or could have known at the time the application was filed, not as to what was subsequently discovered.
): Disclosure of the invention (in the European Patent Convention
)
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
law
Law
Law is a system of rules and guidelines which are enforced through social institutions to govern behavior, wherever possible. It shapes politics, economics and society in numerous ways and serves as a social mediator of relations between people. Contract law regulates everything from buying a bus...
systems require that a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
disclose a claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
ed invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the jurisdiction.
Background
The disclosure requirement lies at the heart and origin of patent law. An inventor, or the inventor's assigneeAssignment (law)
An assignment is a term used with similar meanings in the law of contracts and in the law of real estate. In both instances, it encompasses the transfer of rights held by one party—the assignor—to another party—the assignee...
, is granted a monopoly
Monopoly
A monopoly exists when a specific person or enterprise is the only supplier of a particular commodity...
for a given period of time in exchange for the inventor disclosing to the public how to make or practice his or her invention. If a patent fails to contain such information, then the bargain is violated, and the patent is unenforceable or can be revoked.
Europe
Article 83 of the European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
states that an application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Sufficiency is considered by the examiner during examination of a patent application and the requirement of Article 83 must be complied with in order for a patent to be granted. Insufficient disclosure is also a ground for opposition
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
under .
For instance, an insufficiency of disclosure might arise if references to standardisation documents are provided to support essential aspects of the invention, but if these references are not sufficiently precise so that "the skilled person would have to make ... undue efforts to find and get together the information it needs to carry out the invention".
Insufficiency is also a ground for revocation under Section 72 of the UK Patents Act.
United States
Under the patent law in the United States, the patent specification must be complete enough so that a person of "ordinary skill in the art" of the invention can make and use the invention without “undue experimentation". There is no precise definition of "undue experimentation". The standard is determined based on the art of the invention.In the "predictable arts", such as mechanical
Mechanics
Mechanics is the branch of physics concerned with the behavior of physical bodies when subjected to forces or displacements, and the subsequent effects of the bodies on their environment....
inventions and software inventions, very little description is required. A mere flow chart of a piece of software, for example, is adequate. Source code is not normally required. In the “unpredictable arts”, such as chemistry
Chemistry
Chemistry is the science of matter, especially its chemical reactions, but also its composition, structure and properties. Chemistry is concerned with atoms and their interactions with other atoms, and particularly with the properties of chemical bonds....
and pharmaceuticals, a very complete description is required.
In a 2005 U.S. court case, several of Jerome H. Lemelson
Jerome H. Lemelson
Jerome "Jerry" Hal Lemelson was a prolific American engineer, inventor, and patent holder...
patents covering bar code readers were held to be invalid because the specification was not complete enough for a person of ordinary skill in the art of electrical engineering to have made and used the claimed invention at the time the patent was filed (1954) without undue experimentation. In this case the court held that a person of ordinary skill in the art was a degreed electrical engineer with two years of experience as of the filing date of the original patent application, 1954. One of the challenges of this court case, which was decided in 2005, was to find experts on the state of the art who were alive in 1954.
Best mode
In the United StatesUnited States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
, the sufficiency of disclosure requirement is complemented by an additional requirement, generally not found in other national patent jurisdictions: the "best mode requirement". According to the requirement, the disclosure must also contain the inventor's "best mode" of making or practicing the invention. For example, if an inventor knows that a liquid should be heated to 250 degrees for optimal performance, but discloses in the patent that the liquid should be heated to "above 200 degrees", then the inventor has not disclosed his "best mode" for carrying out the invention. The best mode must be disclosed for the entire invention, and not only its innovative aspects.
The "best mode requirement" only applies to what the inventor knows or could have known at the time the application was filed, not as to what was subsequently discovered.
Enablement
The patent law in the United States further requires, among other things, that the patent specification "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." 35 U.S.C. 112(1). The requirement "to enable" a person of ordinary skill in the art to make and use the invention is colloquially referred to as the "enablement" requirement. A patent that does not meet the enablement requirement may be declared invalid by a court or upon re-exam. Enablement is determined as of the filing date of the patent, and patent-owners cannot use experiments conducted post-application to establish the validity of their patents.See also
- Defensive publicationDefensive publicationA defensive publication, or defensive disclosure, is an intellectual property strategy used to prevent another party from obtaining a patent on a product, apparatus or method for instance. The strategy consists in disclosing an enabling description and/or drawing of the product, apparatus or method...
- PatentabilityPatentabilityWithin the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
- Reduction to practiceReduction to practiceIn United States patent law, the reduction to practice is a concept meaning the embodiment of the concept of an invention. The date of this embodiment is critical to the determination of priority between inventors in an interference proceeding....
- Sufficiency of specification in patent law in CanadaSufficiency of specification in patent law in CanadaIn Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.- Disclosure requirements :...
- Unity of inventionUnity of inventionIn most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...
Further reading
- Matthew J. Dowd, Nancy J. Leith and Jeffrey S. Weaver, Nanotechnology and the Best Mode, Nanotechnology Law & Business Journal, September 2005 http://www.skgf.com/media/news/news.204.pdf (pdf file)
- Steven B. Walmsley, Best Mode: A Plea to Repair or Sacrifice This Broken Requirement of United States Patent Law, 9 Mich. Telecomm. Tech. L. Rev. 125 (2002), available at http://www.mttlr.org/volnine/walmsley.pdf
External links
: The Description (in the Patent Cooperation TreatyPatent Cooperation Treaty
The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...
): Disclosure of the invention (in the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
)