As with most things in life, we may have to give something in order to gain something back, and this is also the case in patent law. The grant of a patent is a ‘bargain’ with the government: an inventor, by disclosing to the public how to use their invention, receives a monopoly to exploit the invention for a limited term.
The inventor is rewarded e.g., from selling the exclusive product, or from licensing deals and, hopefully, will be encouraged to develop more inventions. Innovation will be further promoted within society because of the technical information made available to the public, so that a third party can build upon the publicly shared knowledge (e.g. to create an improved drug, or a better phone).
The basic requirements for obtaining a patent are well-known:
- An invention must have novelty, meaning that it has to be new and it has not been disclosed or used anywhere in the world;
- An invention must involve an inventive step which means the invention is not obvious to a skilled person in the art based on what is already known;
- The invention must be useful in some way;
- The invention must be considered appropriate for patent protection. Patentable subject matter varies between countries but, in general, an invention cannot be a discovery, scientific theory, method for performing a mental act, a presentation of information, etc.
- The last criteria is “enablement”, a critical part of patent law, that often gets overshadowed by the other requirements. Enablement is the part of the patent bargain that requires a patent application to disclose a claimed invention in sufficient detail so that others can make or use the invention. It is one of the fundamental requirements for obtaining a patent, and failure to meet this requirement is a ground for patent invalidation.
Enablement is often overlooked because novelty and inventive step are usually determined first during substantive examination of a patent application and a lot of cases are rejected before examination of enablement begins. Determining whether the enablement requirement has been met can be tricky as it is more subjective, unlike novelty which is fact-based i.e., does prior art exist? Enablement is interpretation-based and is subject to interpretation by different people.
In order to determine enablement, a patent examiner has to decide: can a person “skilled in the art”, with the relevant technical knowledge, skill and expertise, make and use the invention without undue experimentation, based on what is described in the patent application?
A number of factors will be considered by examiners in the course of making the decision, including:
- The nature of the invention. The field of the invention and whether it relates to a predictable or unpredictable art is one of the key questions;
- What is already known. Certain information that is already well known does not need to be repeated but, if the invention requires something new, then the application must disclose that information.
- Are there working examples to show how the invention is made and to confirm that the effect it claims to achieve can actually be achieved?
- Is there enough data to support the whole scope of the invention?
- Is the applicant being greedy and claiming too much? Broad claims require more detailed disclosure.
It is interesting to note that enablement is judged as of a patent’s filing date so that knowledge or data discovered later cannot be relied upon to satisfy enablement.
“Enablement” means the applicant must provide the complete information which enables “a person skilled in the art” to make or use what the applicant claims to have invented. This involves a notional person who is competent in the relevant field and possesses common general knowledge at the time of filing, but who is not inventive.
Someone trying to patent a time machine would have to disclose the technical means by which a person skilled in the art can implement their time machine invention. Given our current understanding of science, an invention for a time machine is likely to receive an enablement objection due to:
- A lack of a working prototype or detailed method which means that there is a failure to enable “making” the invention.
- A lack of operative instructions so that there is a failure to enable “using” the invention.
- Undue experimentation would be required to practice the invention.
If it can be shown that a patent has been granted to a principle that does not work in practice, this patent may be revoked by the courts. Although a time machine is a fanciful invention, the enablement requirement acts as a crucial gatekeeper to ensure that the patent system only grants rights to inventions that actually deliver on their promises and can be practiced by others. the enablement requirement acts as a crucial gatekeeper to ensure that the patent system only grants rights to inventions that actually deliver on their promises and can be practiced by others.
For further information, please contact:
Catherine Zheng, Partner, Deacons
catherine.zheng@deacons.com
