How is the written description requirement different from the enablement requirement?
The written description requirement is separate and distinct from the enablement requirement. This distinction is explained in the MPEP, citing Ariad Pharm., Inc. v. Eli Lilly and Co.:
“If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.”
The MPEP further clarifies:
- An invention may be described without the disclosure being enabling (e.g., a chemical compound for which there is no disclosed or apparent method of making).
- A disclosure could be enabling without describing the invention (e.g., a specification describing a method of making and using a paint composition made of functionally defined ingredients within broad ranges would be enabling for formulations falling within the description but would not describe any specific formulation).
In essence, the written description requirement ensures that the inventor has possession of the claimed invention, while the enablement requirement ensures that others can make and use the invention.
To learn more:
Topics:
First Paragraph,
MPEP 2100 - Patentability,
MPEP 2161 - Three Separate Requirements For Specification Under 35 U.S.C. 112(A) Or Pre - Aia 35 U.S.C. 112,
Patent Law,
Patent Procedure