Are expert affidavits sufficient to establish enablement in patent applications?
Expert affidavits alone are generally not sufficient to establish enablement in patent applications. The MPEP 716.09 provides guidance on this issue:
Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite.
The MPEP further illustrates this point with a case example:
In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991) (Expert described how he would construct elements necessary to the claimed invention whose construction was not described in the application or the prior art; this was not sufficient to demonstrate that such construction was well-known to those of ordinary skill in the art.)
This means that while expert testimony can be helpful, it cannot substitute for a clear and complete disclosure in the specification itself. The specification should contain all the necessary information for a person of ordinary skill in the art to make and use the invention without undue experimentation.
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