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Full-Text Articles in Law
Patenting The Unexplained, Sean B. Seymore
Patenting The Unexplained, Sean B. Seymore
Vanderbilt Law School Faculty Publications
It is a bedrock principle of patent law that an inventor need not understand how or why an invention works. The patent statute simply requires that the inventor explain how to make and use the invention. But explaining how to make and use something without understanding how or why it works yields patents with uninformative disclosures. Their teaching function is limited; one who wants to understand or figure out the underlying scientific principles must turn elsewhere. This limited disclosure rule does not align with the norms of science and tends to make patent documents a less robust form of technical …
Patenting Around Failure, Sean B. Seymore
Patenting Around Failure, Sean B. Seymore
Vanderbilt Law School Faculty Publications
Many patents cover inventions that do not work as described. Fingers often point to the U.S. Patent and Trademark Office (Patent Office), which is criticized for doing a poor job of examining patents. But the story is more complicated for at least three reasons. First, from an information standpoint, the Patent Office is at a clear disadvantage because the inventor has little incentive to disclose failure because it might compromise patentability. Second, an inventor is not required to actually make everything that is claimed (or verify that everything that is claimed actually works) before filing a patent application. Third, inventors …
Heightened Enablement In The Unpredictable Arts, Sean B. Seymore
Heightened Enablement In The Unpredictable Arts, Sean B. Seymore
Vanderbilt Law School Faculty Publications
A bedrock principle of patent law is that an applicant must sufficiently disclose the invention in exchange for the right to exclude. The essential facet of the disclosure requirement is enablement, which compels a patent applicant to enable a person having ordinary skill in the art (PHOSITA) how to make and use the full scope of the claimed invention without undue experimentation. Enablement problems may arise when the applicant claims an invention broadly with a dearth of supporting data or examples. This is problematic in unpredictable fields like chemistry because a PHOSITA often needs a specific and detailed teaching in …