by: Manisha Singh Nair
A patent is a right to exclude others from practicing the patented invention which makes it imperative for others to know the contours of the invention.
An invention in a patent application is explained through specification and claims, however, patent claims gain precedence as they demarcate through their language the boundaries of an invention.
The claims thus define, in technical terms, the extent of the protection conferred by the granted patent or sought to be protected in a patent application. In the event of an improper drafting of claims, the aspects or elements of invention uncovered by it, become part of the prior art when the patent application is published or when the patent is granted.
Patent claims define the boundaries of patent protection. They give shape to the exclusive rights conferred on a patentee to exclude others from making or practicing the invention without consent. Due to this reason the scope, characteristics and structure of the claims becomes a key factor in receiving complete patent protection. Clear and complete claims supported by the description also act as a key element in sufficiently disclosing the inventive features.
One of the most important requirements of patent law is that a patent application discloses a claimed invention in sufficient detail so that, once it comes in the public domain after the expiry of the patent term, the person skilled in the art can carry out that invention. This requirement is known as sufficiency of disclosure or enablement, depending on the jurisdiction.
The rationale behind grant of a patent, or for that matter any IPR, is that after the expiration of the term of the grant the invention or any IP created enriches the public domain. This is sort of a quid pro quo wherein the protection of intellectual property is bargained for its being a part of a public domain. This puts an obligation on the patentee to describe his invention sufficiently clear and in complete terms so that once in public domain, it can be worked upon by any individual. This feature of the patent protection is known as the enablement requirement for patentability i.e. how to make and how to use the invention, which entails clear and complete disclosure of an invention in the patent application.
The disclosure requirement of the patent law reflects the quid pro quo arrangement between the state and the inventor. The government grants an inventor 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.
Most patent law systems require sufficient disclosure of the claimed invention.
In Europe, Article 83 of the European Patent Convention 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. 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 Article 100(b). Insufficiency in disclosing an invention in a patent application is also a ground for revocation under Section 72 of the UK Patents Act.
In the United States' patent law, the patent specification must be complete enough so that a person of “ordinary skill in the art” can make and use the invention without “undue experimentation”. The factor of “undue experimentation” is relative to the art of the invention. The sufficiency of disclosure requirement is complemented by an additional requirement: the “best mode requirement” which is the inventor's “best mode” of making or practicing the invention. The “best mode requirement” only applies to what the inventor knows at the time the application was filed, not as to what was subsequently discovered.
The U.S. patent law further requires, among other things, that patent specifications “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 referred to as the “enablement” requirement. A patent that does not meet the enablement requirement may be declared invalid by a court.
Requirements of “Enablement” in India
... that the description of the method or the instructions for the working of the invention as contained in the complete specification are by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention...
1. The standard for determining whether the specification meets the enablement requirement is presented by the question - Is any experimentation that may be needed to practice the invention of such a magnitude as to be considered unreasonable? Unreasonable experimentation requires that the description of the claimed invention must enable any person skilled in the art to make and use the invention from the description provided in the patent combined with information known in the art without undue experimentation.
2. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is not due. These factors include, but are not limited to:
· breadth of the claims;
· nature of the invention;
· state of the prior art;
· knowledge level of one with the ordinary skill in the art;
· level of predictability in the art;
· amount of direction provided by the inventor;
· existence of working prototypes;
· quantity of experimentation needed to make or use the invention based on the content of the disclosure.
3. The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as predictability in the art.
4. The specification needs to be enabling only to a person having “average skill and knowledge of the art to which it pertains, or with which it is most nearly connected.” The pertinent art to be considered regarding enablement is, in general, defined in terms of the problem solved by the invention rather than in terms of the technology area, industry, trade, etc. for which the invention is used.
5. An extended period of experimentation may not be unreasonable if the notional skilled person is given sufficient direction. The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.
6. All questions of enablement are evaluated against the claimed subject matter. The focus of the examination inquiry is whether everything within the scope of the claim is enabled.
The requirements for a disclosure of the invention are generally not laid down in specific detail which in turn allows flexibility to disclose adapted to the needs of the technical field and the nature of the invention.
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