The catch of this adequate requirement is that once the first four patentability requirements are satisfied the applicant still must describe the inevnetion with enough particularity such that those skilled in the art will be able to make, use and understand the invention that was made by the ineventor. For the most part this requirement can be explained as consisting of three major parts.
- First is the enablement requirement,
- Best mode requirement and
- Description requirement
- Enablement Requirement: The enablement requirement requires the inventors to describe his or her invention in a manner that would allow the others in the industry to make and use the invention. Enablement looks to placing the subject matter of the claims generally in the possession of the public . The enablement requirement looks to the objective knowledge of one of the ordinary skill in the art.
- The Best mode Requirement: It requires the inventors to disclose his or her preferred way of carrying out the invention at the time the patent application is filed. There is no requirement that the inventors preferred embodiment be updated as the patent application works its way through the PTO. Best mode looks whether specific instrumentalities and techniques have been developed by the inventors and are known at the time of the filing as the best way of carrying out invention. It is the subjective factual one looking to state of the mind of the inventor.
The Best mode requirement has now been eliminated from the U.S. patent law for most part. The America Invent Act, prohibits a claim from being found to be invalid as a result of failure to present the best mode. The best mode requirements however continues to live. 35USC 112(a) continues to require patent application to contain the best mode of the invention, if in fact one exists. The best mode cannot be used to invalidate a patent claim once it is obtained the best mode requirement is now viewed as a paper tiger. Yes, it is required but there is no penalty for the inventor or the patent owner for failure to disclose the best mode as long as they do not get caught by patent examiner. Getting caught by a patent examiner is highly unlikely since best mode is subjective and there is really no mechanism for patent examiners ever to know what the inventor actually knows or believes. Still, the Patent Office has indicated that if a patent examiner stumbles across a best mode of violation they will reject claims accordingly.
3. Description Requirement: The last description requirement is a written description, which is also found in 35 USC 112(a). The written description requirement is separate and distinct from the enablement requirement. The written description requirement serves a teaching function, as “quid pro quo” in which the public is given meaningful disclosure in exchange of being excluded from practicing the invention for limited period of time.
If still in dilemma?
If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in patent application adequately defined the full parameters of the invention being claimed.
Perhaps the key to understanding the difference between the enablement requirement and written description requirement is that you can bootstrap knowledge of one of skill in the art into your application for enablement purpose, but no such bootstrapping is allowed under the written description requirement. In a sense the written description requirement is the four corner requirement. Once it is known, what is the four corner of your patent application and therefore, the invention that you actually possess, the law turns into the enablement questions and ask whether one of the skilled in the art would know how to make and use the invention.
