Disclosure Puzzles in Patent Law

Since its inception, patent law has required that inventors publicly disclose information about their inventions in exchange for receiving patent rights. This foundational requirement is policed through multiple doctrines: patents fail <i>enablement</i> if “undue experimentation” is needed to practice the invention, and they lack adequate <i>written description</i> when they fail to establish the inventor’s “possession” of the invention. <br> <br> Despite disclosure doctrines’ centrality, fundamental puzzles about their application remain unresolved. What are the boundaries between enablement and written description? Do equivalents claimed via the doctrine of equivalents have to be enabled or described? Are the rules different for after-arising technologies? Federal Circuit caselaw provides few clear answers. In <i>Amgen v. Sanofi</i>, the Supreme Court recently took up one such puzzle: must a patent enable the full scope of the claim or merely some number of working examples? But the Court failed to address longstanding puzzles surrounding this issue. For example, most patents cover devices that add new elements to the invention and thus have effectively infinite scope, so how could the “full scope” ever be disclosed? <br> <br> More fundamentally, these puzzles reveal a deep conceptual tension. Disclosure doctrines exist to restrict patentees from claiming property rights over inventions that they did not really invent or bring to the public. Yet at the same time, if patentees were confined strictly to the <i>precise</i> invention they created, patents would be nearly worthless. The disclosure rules must chart a course between these two competing objectives. <br> <br> In this Article, we tackle these questions and more. We attempt to bring conceptual order to the disclosure doctrines, reconciling them with one another and with the broader animating principles of patent law. These puzzles must be solved if patent law is to fulfill its promises; if they are not, the resulting doctrinal gaps will expose the patent system to strategic behavior by nefarious noninventors—including those aided by new generative artificial intelligence tools—who learn how to acquire the patent <i>quo</i> without paying their <i>quid</i>. Our Article aims to plug these gaps.