Lack Of Enablement Analysis

Memphis also specializes in this relatively underused basis to invalidate patents. In the United States, patent law (35 U.S.C 112) requires that:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention”

Similar requirements are set forth in patent laws of other countries.

Our experience shows that many times the patent writers and the assisting legal team “manage” to assert claims that have no “enablement basis” in the original specifications.  This is particularly the case in “continuation” patents.

As Technologists, we learn the specifications and when required, conduct a thorough enablement assessment. Here we check whether based on the specifications, a working “best mode” implementation of the claimed invention can be derived by a person skilled in the relevant art.