35 U.S.C. 112(a) sets out the requirement:
"The specification shall 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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. "
Case law has provided the additional requirement that the specification must enable persons skilled in the art to make and use the invention "without undue experimentation." See, e.g., Amgen, Inc. v. Hoeschst Marion Roussel, Inc. 314 F.3d 1313, 1334 (Fed. Cir. 2003).
Two points are relevant here. The first is that the patent must describe the invention in such clear and exact terms that "persons skilled in the art" can make and use the invention. Thus, the specification need not include information that such persons would already know. A patent on an improved radio antenna, for example, need not disclose the entire theory and practice of how to build a radio, beginning with Marconi. This is because persons skilled in the radio art would know the basics already and would only have to be informed of the inventor's improvement in order to take advantage of the invention.
The second point is that the patent disclosure need not be so detailed that the invention can be practiced without experimentation. The only requirement is that such experimentation not be "undue." Granted, the definition of "undue" varies depending on the nature of the invention and expectations in industry. In fact, experimentation that takes a great deal of time may not be considered "undue" if the experiments are routine and the specification provides clear guidance as to what must be done. The test is whether, under the circumstances, the amount of experimentation required would be unreasonable.
"The specification shall 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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. "
Case law has provided the additional requirement that the specification must enable persons skilled in the art to make and use the invention "without undue experimentation." See, e.g., Amgen, Inc. v. Hoeschst Marion Roussel, Inc. 314 F.3d 1313, 1334 (Fed. Cir. 2003).
Two points are relevant here. The first is that the patent must describe the invention in such clear and exact terms that "persons skilled in the art" can make and use the invention. Thus, the specification need not include information that such persons would already know. A patent on an improved radio antenna, for example, need not disclose the entire theory and practice of how to build a radio, beginning with Marconi. This is because persons skilled in the radio art would know the basics already and would only have to be informed of the inventor's improvement in order to take advantage of the invention.
The second point is that the patent disclosure need not be so detailed that the invention can be practiced without experimentation. The only requirement is that such experimentation not be "undue." Granted, the definition of "undue" varies depending on the nature of the invention and expectations in industry. In fact, experimentation that takes a great deal of time may not be considered "undue" if the experiments are routine and the specification provides clear guidance as to what must be done. The test is whether, under the circumstances, the amount of experimentation required would be unreasonable.
RSS Feed