On February 10, 2023, Unified Edge filed an amicus brief with the Supreme Court concerning the test for whether a patent has met the statutory requirement for enablement—i.e., the requirement that the specification sufficiently disclose the claimed invention in such full, clear, and exact terms as to enable any person skilled in the art to make and use it.
The brief explains why the Supreme Court should maintain—across all fields of endeavor, including high tech—the Federal Circuit’s vigorous check on functional patent claims that the Federal Circuit has applied over decades of its case law (which in turn rests on 170 years of the Supreme Court’s jurisprudence). The fact-intensive investigation into enablement required by the Federal Circuit's Wands factors provides the appropriate, flexible framework for Patent Office examiners, fact-finders, trial court judges, and reviewing appellate courts to apply in assessing compliance with the statutory requirement for enablement.
Reversal—and replacement of the full scope enablement test with Amgen’s proposed permissive standard—would invite patentees even further to pursue wildly unsupported functional claims in the Patent Office across a wide range of industries, threatening innovation and contributing to already out-of-control litigation defense and settlement costs.
Unified Edge is part of the Unified Network and advocates for the right policies, focusing on researching, organizing, providing, and promoting data-backed studies and evidence to further regulatory, business, and policy goals. Unified Edge works to keep its members up to date and informed on ongoing policies, data, and the regulatory landscape in order to move the law forward in a just, reasoned, and data-backed way. Unified Edge is represented by Lisa Ferri, Andrew Pincus, and Rich McCormick of Mayer Brown LLP and by in-house counsel, Jonathan Stroud and Ashraf Fawzy.
Read the amicus brief below:
