Posts Tagged: enablement


Federal Circuit Invalidity Determination for Idenix Underscores Continuing Intra-Circuit Split

One day before the now-famous Arthrex decision was issued, the U.S. Court of Appeals for the Federal Circuit (CAFC) decided an appeal by Idenix Pharmaceuticals LLC …
By Nancy Braman
1 month ago 2

The PPH Program at the USPTO: Favorable Stats Don’t Alleviate Big Risks

Since 2006, the U.S. Patent and Trademark Office (USPTO) has participated in the Patent Prosecution Highway Pilot Program (the PPH Program). Generally, the program is designed to …
By Kate Gaudry
1 month ago 6

Pinning False Blame of Lack of Enablement In Issued Patents On the USPTO

Last week, the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, held an oversight hearing on the U.S. Patent and Trademark Office (USPTO) with …
By Ron Katznelson, Ph.D.
7 months ago 20

Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention

From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that …
By Gene Quinn
10 months ago 0

District of Delaware Makes it Harder to Corner the Market on Antibody Patents in MorphoSys v. Janssen

Patents covering an antibody are often claimed by the antibody’s function (the residues where it binds to the antigen) rather than its structure (amino-acid sequence). This …
By Zachary Silbersher
10 months ago 2

Delaware Jury Awards $24 Million Royalty to Bio-Rad and University of Chicago, Finds Patent Infringement Willful

A jury in the United Stated Federal District Court for the District of Delaware recently delivered a verdict awarding nearly $24 million dollars in reasonable royalty damages to …
By Steve Brachmann
1 year ago 1

How to Write a Patent Application

Writing a patent application is not as easy as many think. Indeed, the concept of usefully describing the invention, which on its face seems easy enough to …
By Gene Quinn
1 year ago 1

Which Invalidity Avenue to Take: Inter Partes Review Verses Post-Grant Review

The United States Patent and Trademark Office (USPTO) provides invalidity tools via inter partes review (IPR) and post-grant review (PGR), but which route is better? ...  PGRs are …
By Ryan Kenny
1 year ago 5

CAFC invalidates Boston University patent claim for lack of enablement

“In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation—indeed, that it is impossible,” the Federal …
By Steve Brachmann
1 year ago 2

Idenix Loses Patent on HCV Treatment that Supported $2.54 Billion Infringement Verdict

In invalidating the Idenix patent, the Delaware district court effectively overturns what had been the largest award for royalty damages in a U.S. patent infringement case …
By Steve Brachmann
2 years ago 4

Patent Drafting: Understanding the Enablement Requirement

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology …
By Gene Quinn
2 years ago 13

Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill …
By Gene Quinn
2 years ago 2

Generic Examples of Claimed Compounds Do Not Satisfy Enablement Requirement

On June 21, 2017, In Storer v. Clark, the Federal Circuit affirmed a Patent Trial and Appeal Board’s interference decision, which awarded priority to Clark’s pending application (…

Patentability: The Adequate Description Requirement of 35 U.S.C. 112

The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough …
By Gene Quinn
2 years ago 1

Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for …
By Gene Quinn
3 years ago 4