When Enough Is Not Enough: Can Post Filing Experimental Data Bridge the Gap in Patent Disclosure of Non-Enabling Specifications in The Unpredictable Arts?, 18 J. Marshall Rev. Intell. Prop. L. 496 (2019)

Abstract

On issues of 35 U.S.C. §112, the Federal Circuit has been inconsistent in determining the extent to which patent applicants need to disclose examples of their claimed inventions in patent specifications to fully enable their patent claims. Confusion as to how many or what types of examples amount to sufficient disclosure is augmented for inventions in the unpredictable arts, such as chemistry, biotechnology, and pharmaceuticals. Current practice skewing towards disclosure of examples in greater numbers is a misguided effort to satisfy enablement, as shown by patents at issue in two recent Federal Circuit cases. A qualitative approach to disclosure is recommended, and post filing experimental data is proposed as a limited remedy to retroactively fill gaps in disclosure during patent prosecution