Improving Patent Quality – Putting Teeth Into the Enablement Requirement
The U.S. Patent & Trademark Office (PTO) recently requested public comment on how applicants can improve patent quality. The PTO’s Notice describes possible procedures such as requiring applicants to correlate claim terms to the specification and state whether examples are intended to be limiting or merely illustrative and requiring applicants to provide glossaries of potentially ambiguous, distinctive, and specialized terms used in the specification and/or the claims. It also mentions requiring applicants to specify default dictionaries to be used in ascertaining the meaning of claim terms. One may expect patent holders to be less than enthusiastic about the added expense and difficulty of complying with such requirements.
There may be another or an additional way to improve patent quality: putting teeth into the enablement requirement during examination. In our experience, one key issue with “patent quality” concerns the scope of the claims relative to the described embodiments. In many cases that we have seen which involve questions of patent quality, a patent holder asserts claims against products or methods that bear little relationship to the disclosed embodiments. This has been especially true in cases involving “non-practicing entities” or “patent assertion entities.”
Under U.S. Patent Law, the full scope of the claimed invention must be enabled. In Sitrick v. Dreamworks, LLC, et al., 516 F.3d 993 (Fed. Cir. 2008), the Federal Circuit granted summary judgment of invalidity on the grounds that the asserted patent claims covered multiple embodiments but were enabled only as to one. The claims involve integrating a user’s audio signal or video image signal into a pre-existing video image signal. The described embodiments concerned only video games. However, the specification stated that the invention could be used for movies. The Federal Circuit ultimately held that because the claims covered video games and movies, they were invalid for lack of enablement because the specification did not teach one skilled in the art how to use the invention with movies.
All of this may be well and good, but because of the way U.S. Patent Law is applied, the accused infringer in Sitrick bore the burden of proving a lack of enablement by clear and convincing evidence. The clear and convincing evidence standard is applicable to invalidity challenges and is higher (more stringent) than the preponderance of the evidence standard that the patent holder must meet to prove infringement. However, one may ask why the Patent Office did not raise the issue of enablement during prosecution of the patent in Sitrick, especially if the claim language and specification suggested that the claims could be read on movies or other embodiments other than the video game embodiment that was described.
In our experience, the Patent Office rarely raises enablement challenges, at least outside of the so-called “unpredictable arts” such as biotechnology or chemistry. The Manual of Patent Examining Procedure (“MPEP”) provides detailed guidelines for addressing enablement challenges during prosecution. MPEP 2164.01. However, in our experience, the issue is rarely raised in the mechanical, software, or electrical arts during prosecution. Examiners are directed to apply the “broadest reasonable interpretation” during examination (MPEP 2111). However, the particular interpretation is rarely articulated in a direct way. Instead, it is usually articulated implicitly by an examiner’s prior art rejections which reveal how the claims are being read on the prior art. While that may suffice when there is close prior art, what happens when there is no close prior art?
It can be difficult to examine claims for enablement during an ex parte patent prosecution because enablement standard is “undue experimentation”, i.e., claims are not enabled if undue experimentation would be required to practice the full scope of the claimed invention. The Patent Office is not in a position to carry out the type of testing or analysis that is often required to determine what level of experimentation would be required. Thus, it seems that in many cases, at least outside of the “unpredictable arts” the examination process focuses almost exclusively on prior art invalidity or obvious issues of claim indefiniteness. The patent holder benefits from this weakness in the ex parte prosecution process because patents are presumed valid and an accused infringer’s burden of proof for proving a lack of enablement is the same as it is for any invalidity defense, even though the Patent Office is often unable to thoroughly examine for enablement. In many of the cases we have seen, it is unclear whether or to what extent enablement was even considered during the ex parte examination process.
Perhaps one way to address the problem of issuing patents with excessively broad claims is to put more teeth back into the enablement requirement. One way to do this would be to require examiners to compare the claims to the specification and to identify undisclosed (or poorly described) embodiments upon which the claims may read. In those cases where the disparity warrants it, examiners could ask Applicants to explain whether they contend that the claims cover such undisclosed embodiments, and if so, how the application enables them.
The authority for allowing examines to make this type of request appears to be provided by the “Requirements for Information” rule set forth in 37 C.F.R. § 1.105. The rule does not allow examiners to request opinions or to force applicants to develop new information–such as by conducting experiments–that does not already exist. However, the rule does allow examiners to require applicants to point out which specific parts of an application provide enablement for particular claim elements and the meaning that applicants ascribe to claim elements. Thus, it seemingly would allow examiners to flesh out enablement problems and use an applicant’s responses to determine if an enablement rejection should be made. It would also create a more detailed record of the meanings ascribed to claim language, which would be helpful during claim construction proceedings.
The current system allows patent holders to profit from the weakness of the examination process with respect to enablement or other validity issues that are not easily addressed in ex parte proceedings (including other issues such as inventorship and the on sale/public use bars). Patent holders are able to obtain broad patents that may not be enabled while still enjoying the same presumption of validity and burden of proof that they enjoy when faced with any invalidity challenge in court.
In our experience, foreign patent offices pay more attention to the relationship and relative breadth between the claims and the specification. This seems more likely to prevent the issuance of patents with claims that encompass non-enabled embodiments and the leverage that patent holders get from asserting broad yet potentially invalid patents in infringement proceedings. Perhaps it’s time that the PTO considers paying more attention to these issues as well.