It is one of legal requirements of patent specification. According to US patent law, Patent specification must comply with enablement requirement so that a person in ‘ordinary skill in the art' of invention can make and use that invention without ‘Undue experimentation'. The patent specification should have this sufficiency of disclosure at the time of application filed.
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining level of ordinary skill in the art may include: (A) "type of problems encountered in the art;" (B) "prior art solutions to those problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the technology; and" (E) "educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate. [1]
Undue experimentation:
It is primary check for enablement in patent specification. The following factors are considered for determining whether disclosure of invention satisfies the enablement requirement or not. [2]
- The breadth of the claims;
- The nature of the invention;
- The state of the prior art;
- The level of one of ordinary skill;
- The level of predictability in the art;
- The amount of direction provided by the inventor;
- The existence of working examples; and
- The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Enablement of claims:
The scope of the claims should have reasonable correlation to scope of enablement provided in specification. If the invention results are predictable then mostly claims can be enabled by the specification. But in case of unpredictable inventions (Ex: Software to predict Natural disasters), broad claims might not be enabled in the specification.
Lack of Enablement:
It is not possible to conclude the enablement of patent specification based on above factors. Patent examiner will consider all evidence related to each factors and conclude the enablement of the specification. Any part of specification can support for enablement including Background of the invention, drawings etc. [2]
Enablement check in terms of software patents:
The enablement of software patent is determined from the view of software person who is having knowledge in particular software skill and programming knowledge. The same will be applicable, if the patent specification contains software programs.
References:
1. http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141_03.htm
2. http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2164_01_a.htm