Teach Enablement


INTRODUCTION

If you have read any of my previous posts, I have habitually urged that any patent application “teach enablement”.  This is the sole and critical requirement of any provisional application.  Please recall that I recommend filing a DIY provisional application if you elect not to seek guidance of a qualified patent attorney.  My simple logic is that a provisional application cannot hurt you.  See my post Provisional Patent Applications.  Also see my post DIY Provisional Patent Applications.

As stated above, teaching enablement is the single critical requirement of a provisional application.  It is also required as part of any follow-on non provisional application.

To clarify what is enablement, I am borrowing text from the fourth addition of the excellent treatise of Janice M. Mueller entitled “Patent Law”, published by Wolters Kluwer. 

She states that “even assuming that the invention is novel, non obvious and useful, if the patent application does not satisfy the disclosure requirement of the first paragraph of 35 U.S.C. Section 112 (enablement) with respect to the invention, the applicant will not be granted a patent. 

WHAT IS ENABLEMENT?

The following excerpt from the treatise “Patent Law” should add clarity.

“For example, the inventor in In re Glass filed a patent application directed to methods and apparatus for artificially growing high strength crystal used to reinforce refractory material.  Although the USPTO did not challenge the novelty or utility of the claimed invention, the Court of Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit) affirmed the agency’s conclusion that the application’s disclosure was fatally deficient under the first paragraph of 35 U.S.C. Section 112. The application did not disclose essential process parameters such as temperature, pressure and vapor saturation conditions that the inventor had conceded were necessary to form the crystals, either because the applicant was not himself in possession of that information or simply chose to maintain it as a trade secret.  In either case, the inventor was not entitled to a patent on his invention because the application did not satisfy the enablement requirementof the first paragraph of 35. U.S. C. section 112.” 

DISCUSSION

The key point is that the inventor did not disclose within the specification of the application information required to practice the invention.  In this case, the applicant did not disclose necessary temperature, pressure and vapor saturation conditions necessary to practice the invention. 

CONCLUSION

Do not let this be you!