Washington Law Review


Karen S. Canady


The disclosure in a patent specification must enable others to make and use the claimed invention. In the competitive biotechnology industry, companies often seek broad claims to protect contemplated embodiments of their inventions that have not yet been reduced to practice. In In re Wright, the Federal Circuit recently challenged this approach when it upheld the rejection, for lack of enablement, of all but the narrowest claims to a vaccine genetically engineered to protect against retroviruses. This decision unreasonably elevates the established standard for enablement by limiting biotechnological patent protection to only those embodiments of a claimed invention whose success can be demonstrated by working examples. This Note critiques that decision and proposes a limited policy-based approach to guide consistent determinations of enablement for patent claims.

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