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Sufficiency of Patent Disclosure Rests on Bargain Rather Than Guessing

guess-true-patent

Gambling by Alan Cleaver licensed under CC BY 2.0

 

The patent system is based on a “bargain” between the inventor and the public: the inventor receives exclusive rights in his or her new and useful invention for a limited period in exchange for complete disclosure of the invention to the public.

 

Consistent with this policy rationale, the inventor is required to disclose everything that is essential for the invention to function properly. In particular, the patent disclosure must define the nature of the invention, and must describe how the invention is put into operation. A failure to meet the first condition would invalidate the patent application for ambiguity, while a failure to meet the second condition would invalidate it for insufficiency.

 

To meet the sufficiency requirements, the patent disclosure must correctly and fully answer each of the two questions: (1) “What is your invention?” and (2) “How does it work?”

 

Further, the disclosure must enable a person skilled in the field of the invention to produce the invention using only the instructions contained in the disclosure and to make the same successful use of the invention as the inventor did. In essence, insufficiency is a technical attack on the validity of a patent, and would succeed when the skilled person could not put the invention into practice. For example, obscuring the true invention and leaving the skilled reader guessing may amount to insufficient disclosure.

 

Thus, as noted by the Supreme Court of Canada, a key question would be:

 

“Is the public getting what it ought to be getting in exchange for exclusive monopoly rights?”

 

As one would expect, insufficient patent disclosure that fails to uphold the inventor’s end of the bargain will result in a voidable patent.