What Is Patent Enablement? | Avoid Rejections & Protect Your Invention

Automated transcript supplied by Transistor and lightly formatted for readability. Expand this section to read along.

[00:00:00] Hello and welcome to the Patent Pending Made Simple podcast. I’m your host Samar Shah, and with me is Jamie Brophy. Jamie, how are you doing? Hey, I’m good. Samar. How are you doing? I am glad to be able to record with you again. I think we’re gonna talk about, pretty forgotten but important requirement.

Particularly as it relates to mechanical arts. Is that right Jamie? Yes. We are gonna talk about enablement today, and we actually did touch upon this a little bit in our episode about. Whether you need a prototype before filing a patent application. And you know in there we talked about how the enablement requirement just means that your patent application has to describe your invention in enough detail.

Somebody that has some skill in this relevant field can make and use your invention just from reading your patent application. So that’s basically what enablement means. And I think we’ll get into a little bit more of the details in this episode. But yeah, it’s a pretty important requirement. And do you have anything to add to that S Yeah, no, I think this is good. From a big picture perspective sometimes we as patent attorneys or inventors get locked into our own little silo, right? Or our own way of thinking about this. But as you said, Jimmy, this really is a mechanism for allowing progress within at least in the US patent system, in the US and worldwide, right?

The idea is that inventions are built on top of each other, and if you show somebody how to do something. New that you an inventor has come up with, then maybe they will build on top of that invention and continue to make progress in scientific and commercial endeavors and in progress as a whole, as a society. So really related to that and I think it’s a part of our legal and patent system that I really appreciate. I think this is the whole point of our patent system is to encourage people to disclose their innovations and then in exchange for them disclosing their innovations, they get the exclusive right to make and use their invention for limited period of time.

And, in order to promote innovation, that invention has to be described in sufficient detail. Exchange for the right to exclude others from making and using your invention. So yeah, I think that’s pretty much the whole basis for our patent system. Yeah. Yeah. I agree.

And I wish, the patent office and the patent examiners kept that in mind when they give us obviousness rejections and say, eh, it would be obvious to, build on top of other inventions. And my argument is usually look, hold, that’s the whole point of our patent system, is to build on top of other inventions.

so yeah, if you don’t have sufficient detail in your application, you run the risk of getting what’s called an enablement rejection. When we get rejections which as we’ve discussed in on this podcast, happens most of the time, there’s a couple different types of rejections you can get.

The main ones that we’re usually concerned with are the rejections over prior art, where the examiner says, your invention’s not new, not novel, not. Obvious in view of the prior art. Enablement rejection is a different kind of rejection where the examiner can basically just say your claimed invention is not enabled.

There’s not sufficient detail in your patent application. that becomes problematic because if there’s not sufficient detail in your patent application, it can be difficult to overcome that rejection. The best defense to getting an enablement rejection is to make sure that they’re.

There’s sufficient detail in your application. Sometimes people come to us and they’re more in like the concept stage. They haven’t quite worked out how the invention’s gonna be made or how the invention is gonna be used. And in those situations, we’ll say this isn’t quite ready for a patent application yet.

You need to work out some of those details. That’s right. I think that’s. Really, good overview of this and what inventors should be thinking about before we jump into some of the prescriptive things that inventors can do. I’m gonna take a minute to just talk about the legal Standard. I’ll, walk everyone through, a little bit of legal history here. What you outlined is actually a great way to think about this. The legal backdrop for this is, and the legal standard was determined by actually the Supreme Court in this case called Mineral separations, where they said that a specification meets the enablement requirement.

If the reader or a person of ordinary skill in the art, somebody as skilled as the inventor, for example, wouldn’t need to conduct undue experimentation in order to practice the invention. And it’s a perfect Supreme Court standard because it is both vague and fuzzy, but can be applied on a practical level.

What does undue experimentation mean? Nobody really knows, right? That’s something for litigators to figure out and a jury to figure out. Often in patent Cases. if you say for example, that my, semiconductor has, multiple data processing capabilities, but you don’t tell the reader how.

I would argue that’s maybe close to undue experimentation, right? Unless that would be obvious to the reader, right? To somebody who manufactures semiconductors. So that’s the level of detail you do need to take into account. Two things. Who is the person affording school in the art?

Like how skilled are they and how much experimentation would they be willing to do or would typically do when they analyze a patent in your field of art? So there’s a fuzzy standard about the reader or the practitioner, and then there’s the fuzzy standard of undue experimentation, right? Can, would this amount to them having to try to solve the invention all over again. Or do they have guidelines or helpful details in your document to guide them along the way to reproduce your invention or replicate it? So that’s the legal standard that we come from. And no wonder is confusing because it is very fuzzy, as is often the case in the world of patent law.

Yeah I think you’re exactly right and it’s undue experimentation that’s a. Subjective, standards. So you know who’s to say whether the amount of experimentation is, undue or not. But I think, in general, a person having some skill in this art should be able to read your patent application and make and use your invention without having to do too much trial and error.

A little bit of trial and error is fine, but not. Not too [00:06:00] much. Yeah. Yeah. It’s a little fuzzy like you were saying. Yeah. And and it really depends, right? Because in some fields, let’s say But generally there are some fields of art where the reader might do very little additional experimentation beyond what’s presented in the text of the document in other fields, I imagine. Biomolecules or small molecules, the amount of experimentation that’s done is higher. So the threshold for what is undue experimentation is different depending on the field of art.

So you really gotta take into account a bunch of different factors including the breadth of the claim, right? How you’ve written the claims, the nature of the invention, the nature of the field of arc that you’re. In how predictable is this field of art? Usually if it’s brand new field of art, usually there’s a lot of experimentation that’s permitted.

If it’s a very mature, or a stable field of art, you might be expected to do less experimentation. It also depends on how much direction you provided in the application and examples that you’ve given all that kind of weighs for or against. So it’s quite complex and quite fact sensitive, and indeed quite fuzzy, as you said, Jimmy.

But we’re here to help, I think. Yeah, that’s right. And I think we should also say that your patent application doesn’t have to teach or disclose things that are well known in the arts. Like for example, in the mechanical arts, if you’re saying two pieces are attached together you can just say that They’re attached with any known attachment mechanism, they can be screwed together or friction fit together. It’s good to give some examples, but you don’t have to teach, exactly how to attach two pieces together. somebody that has some mechanical aptitude would be able to figure that out.

Or another way to think about this is if you, let’s say you’re trying to claim using a Velcro type of, attachment, right? So you would say these two things are attached together using a hook and loop closure system. But then you don’t have to describe like how to manufacture like the various Velcro components, right?

Like you don’t need to describe that. I mean that’s well known. Everybody knows how Velcro works at this point, or certainly somebody who’s skilled in the art would understand that.

So summer, should we talk about like how to make sure that your invention is sufficiently enabled or some tips on making sure that your patent application describes your invention in sufficient detail?

Yeah. Why don’t we do that and maybe the first step here is, ‘cause I’m sure a lot of our listeners are reading, are listening to this and they’re saying I don’t know. When do I need to go into more details? When do I not need to go into Details? can we first talk about some clues when you know, that maybe would tip off?

I work mainly in the mechanical arts and so I find that. A lot of times with my clients when they’re telling me about their invention, they tell me about what it can do or what the advantages of their invention are over the prior art.

And that’s great. You definitely wanna include that stuff in your patent application. But as far as the claims and the detailed description of your. Patent application, you really wanna be talking about more like the physical aspects of your invention that make it so that it can do those things so that you’re saying it can do like what are the parts, how are they connected together, how do they work together?

Stuff like that is what you mainly wanna focus on in the detailed description and the claims specifically the claims. Try to avoid using too much functional language in the claims. And by functional language, this, you would claim like a part that’s configured to perform a certain function.

And instead of, claiming the physical aspects of the part, you’re claiming what it can do instead of what it is. you wanna focus on what it is, what are the physical aspects, what shape is it, what material is it, stuff like that. When I was litigating patents, those are some of the things that I would look at.

If the claims had too much functional language, if they’re like, oh, these two things do this or this does this, but they don’t tell you how. I’m like, okay, let’s dig into enablement. and then the other place I would say is if you are inventing in kind of unpredictable spaces or unpredictable arts or arts where, a personal art would not be doing a lot of experimentation or research to replicate or come up with a solution where people are using a lot of intuition to solve problems, then I think those are some other clues that, Hey, I should maybe slow down and describe things in more detail potentially.

Okay, so we’ve touched on this already, Jamie, in terms of how to fix the problem, but yeah, could you maybe summarize that and then may, maybe we can dig into nuances if there are any. Yeah, I I think in summary, I would focus on the physical aspects of your invention.

Make sure you’re describing specifically the points of novelty of your invention, how those work together, how to make and use it. I would just. Suggest, making sure that you have sufficient detail in your application to try to avoid the enablement rejection. Yeah, I think that’s good advice.

Would you consider a prototype we touched on this at the beginning of the episode, Jamie, but do you see prototypes playing a role here as being helpful, or is it worth. Potentially looking at? Yeah, I think so. Like we already mentioned, we did do an episode on whether you have to have a prototype before you file a patent application.

And you do not have to have a prototype. But depending on how complex the invention is or how expensive it is to make a prototype. I think it’s generally a good idea. During the prototyping process you might encounter problems that you were not expecting. and that’s fertile ground for the novel aspects of your invention.

You’re gonna have to go through the trial and error process and the experimentation to solve that problem. And that’s probably where the the crux of your invention is. So I think it’s a good idea to do a prototype, if you can, to identify, what those sticking points might be.

Yeah, I think it’s a good idea, particularly when you, as you mentioned Jamie, it’s related to the point of novelty of your invention, right? So if you have, let’s say you invented a new kind of a medical gown, for example, right? Then I think you’re okay to be high level in that particular. Patent application, but let’s say your patent application is about an improved Velcro system or an improved hook and loop closure system, then it behooves you to describe it in much more detail, right? Because even though both inventions are talking about.

Velcros or [00:12:00] hook and loop closure systems, the amount of detail that’s required in these two application is vastly and significantly different as it relates to the actual Velcro components. So think about that, think about what is novel here, and try to explain how that works. Don’t just, don’t just yada the most important or novel part of your pet pet application or your invention.

I’m sure this is something maybe we need to work on, is incorporating a Seinfeld episode in every one of our podcast episode. I’m sure that’s possible. Yeah I think that pretty much covers it for enablement. It’s a simple thing, but.

Also as we’ve discussed here, gets a little confusing. Sometimes you have to describe your invention in sufficient detail, but you don’t have to describe what’s already known. So yeah I think that about covers it for enablement. Do you have anything else to add? Samar, oh, should we talk about what happens if you get an enablement rejection?

Just one quick note before we go there. I understand why inventors are loath to. or why they would run into an enablement problem. I think inventors, you as an inventor, you’re like, I have invented this great thing. Now. I don’t want to specify all the details about my thing ‘cause I just give it.

I’m just giving somebody a roadmap on how to design around my invention. So I understand. Why inventors want to describe things in a functional way. ‘cause they want to claim every version or variation or permutation of their invention. I get it. And that is. Also something that you and I, Jamie wrestle with all the time, right?

We’re always thinking of how do I protect my client’s rights in a way that somebody doesn’t just knock them off or find a way around the patent. So this is something we think about all the time as well, but you really have to balance that need against the enablement requirement, right? Otherwise, all the patents would just be like, oh.

Here’s an improved faster engine, right? Without telling you how it’s faster or why it’s faster. So I get it. You do wanna protect the broad version of your invention and the permutations of it, but you can’t just. Call it a day and just say, okay, it’s a faster engine. You really have to go into details, and I think that’s what we’re about to do, Jamie.

What are some practical tips? What are some things you could do if you received that enablement requirement? Yeah as we’ve discussed here, I think hopefully your invention is described in sufficient Detail.

But if you do get an enablement rejection, then you would, one option is that you can present an argument that somebody of ordinary skill would understand how to make and use your invention based on what you’ve disclosed in combination with their general knowledge of this field.

You can present arguments that the examiner may or may not. Find persuasive. You can submit an affidavit that says the same thing it can be tricky. If there is an enablement problem with your application, it might be really difficult to overcome that rejection.

Those are just a couple strategies you can use to overcome it. Do you have anything else to add to that Samar? No, I don’t think so. I don’t think I have ever ran into an enablement requirement that I had to overcome. I don’t think you have Jamie either. ‘cause we spend a lot of time thinking about this this is what we do as patent practitioners. So I don’t know if I have any more insight onto how to overcome it. I think all the things that we talked about will prevent you from getting that rejection in the first place, but I can’t say that I have a lot of practical insights on how to overcome it beyond that.

Yeah I don’t run into them very often either, but just as a. Like a preventative thing? I do. I have had conversations with my clients about enablement where they tell me about their invention, and I’m asking how a specific thing works or how these two pieces are connected, and if they say something like, I don’t know. That’s for the engineers to figure out. Then it’s okay, we might have an enablement problem here, so let’s figure this stuff out before we file your patent application.

I think it’s the latter. Jamie, I get rave reviews from your clients.

every now and then I’ll get emails, or actually more than every now and then I get emails from your clients and they’re like, thank you so much for connecting us and helping us with, connecting us with Jamie. We’re so happy with the work she’s done, and I think it’s because of this.

You’re proactive, right? Yeah. It is so expensive and painful. To, deal with these rejections and try to overcome them once you file the application. So I would say if your attorney is giving you some hints that you need to work on this, take it seriously and be grateful for it, I would say because it is so expensive and painful to deal with it later.

But yeah, I like to play devil’s advocate and say how did you solve this problem and how does this work? let’s figure all that stuff out before we go through the expense of preparing a patent application and filing a patent application.

I hate to see my clients spend a lot of money on their patent application when I am already anticipating, having an issue during the prosecution of the application. I’d rather have a smooth prosecution and, get them a patent as soon as possible.

It pays dividends down the road. We have dealt with easy applications and difficult applications there. Sometimes you do have to negotiate your way through an application. Sometimes it is just tough and you have to soldier on because your invention is going to be tough from an enablement perspective or obviousness perspective.

But hopefully your attorneys is doing that work and previewing some of those challenges for you if your attorney is. Painting an overly rosy picture, to me that’s a potential cause for concern that maybe they’re just telling you what you want to hear. Or they’re not anticipating all the things that could go wrong.

Or maybe you’re just lucky and everything is working out perfectly in your particular case, but I personally am with you. I, like that devil’s advocate role. And I think it’s well worth it and it produces better patents in the long run, I think. Yeah, I think so too. And summer, I think it’s also worth mentioning that the patent examiners at the patent office, they’re the ones that are gonna be reviewing your application.

They do have backgrounds in engineering or science. So if you’re just gonna try to, fudge it or pull one over on them, they’re probably gonna say, Hey, this doesn’t make any sense. I don’t understand how this Works. and they’ll call you out on it if they can, they do have that [00:18:00] background.

They understand engineering principles. So yeah, it’s hard to just Fudge stuff or describe stuff broadly and hope it goes through. Yeah. And even if you are able to pull one over the patent office, it’s a ferric victory in some ways. Like when I was a young practitioner, I had this like utmost confidence that I could get any patent allowed.

I just had this belief that I could, but, you can and get patents allowed by, Relying on legal arguments and being, tricky and you can try to get one past the examiner, but at the end of the day, what are you actually getting? Because that patent once you get it allowed, is unenforceable, right?

It’s not gonna be enforceable. It may not have any real practical value. ‘cause anybody who looks at the patent would be like. This is not gonna stand up to scrutiny in court. And so yeah, you have a piece of paper that you got past the goalkeeper, but you might have lost the war to win a battle that kind of thing.

It’s not just the patent is not the end goal here, right? I would say monetary awards are what you should be looking at injunction. Being able to enforce your rights, being able to sell your rights, and really for most of our clients, especially in the mechanical space, make money from your invention is the goal.

And just getting one past the examiner is not gonna necessarily help you do that. Samar, before we wrap this up, I don’t think we can end an enablement conversation without talking about some of the classic examples that people always talk about when it comes to enablement.

And to me, the ones that occur to me are the time machine example and the perpetual motion device. If you were to say, my invention is a perpetual motion, it’s got this perpetual motion. Piece to it. that’s not gonna fly. You’re definitely gonna get an enablement rejection if you haven’t figured out perpetual motion, in fact.

Yeah. Those are the classic examples that we would get at law school as well. And I actually had this debate with my patent law professor, and I was like, those things should be rejected on 1 0 1 grounds and not any one grounds. Yeah, that too.

I think that about covers it for enablement. Hopefully our listeners will get something from it and now they’ll know how much detail to put in their patent applications. I hope this was helpful.

Please reach out to us you can email me at samar@patentpending.ai or Jamie at jamie@patentpending.ai. We’d love to hear from you and if you have questions or topics that you want us to discuss please, let us know and we’ll try to cover them.

Absolutely. Okay, thanks Samar. Yep. Thanks Jamie.