Patent Law Practice Center

The Patentability Black Hole

Inventors in the unpredictable arts often have to face an unpredictable paradox when patenting an invention.  There seems to be a disconnect between requirements for an inventor to disclose an invention versus the prior art to render an invention unpatentable. Fenwick & West refer to this as the “patentability black hole”.  In this article, Fenwick & West discuss this dilemma and how to solve this patent law paradox.

An inventor faces a number of significant hurdles and pitfalls in patenting his invention. Having a patent specification providing proper and sufficiently thorough disclosure of the invention being claimed by the patentee can, by itself, be a large hurdle, especially in the biosciences where experimental data is essential. Section 112, first paragraph, of Title 35 of the United States Code sets forth the disclosure requirements that all patentees must meet. This section is commonly interpreted as requiring that a patent specification contain a full written description showing that the inventor was in possession of the claimed invention at the time the patent application was filed (the “written description” requirement) and that a patent specification enable a person of ordinary skill in the relevant field to make and use the invention based on the specification (the “enablement” requirement). See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1340 (2010). (more…)