Memo to the Supreme Court: The Enablement Requirement Needs Your Guidance-Again

""Allowing after-arising technology to validate an otherwise deficient specification...invites information from any and all sources, which multiply every day, to fill any and all gaps in a patent specification that existed as of the filing date." A petition for certiorari is currently pending before the United States Supreme Court which raises serious concerns as to fundamental principles of patent law, especially relating to the enablement requirement of 35 U.S.C. §112."

"On January 10, 2025, the Federal Circuit issued its precedential decision in Novartis Pharms. Corp. v. Torrent Pharma Inc., 125 F. 4 th 1090 (Fed. Cir. 2025). It held that a claim which had been construed to cover first and second species for infringement purposes, and which was enabled only as to the first species, was excused from needing enabling support as to the second species because it constituted "after-arising technology" that was patented long after the filing date of the patent in suit."

"Efforts by the accused infringer, MSN Pharmaceuticals, Inc., to obtain rehearing at the Federal Circuit were unavailing. Thus, MSN has now filed a petition for certiorari which raises questions about whether and in what types of cases after-arising technology can impact an enablement analysis. That petition, however, does not fully explore the ramifications of allowing after-arising technology to effectively validate a patent that might otherwise be invalid for lack of enablement."

The Federal Circuit carved an after‑arising technology exception to the enablement requirement of 35 U.S.C. §112. The court held that a claim construed to cover two species but enabled only for the first could avoid invalidation for the second because later‑developed technology rendered that second species feasible. The accused infringer’s rehearing request was denied and a petition for certiorari was filed to address whether and when after‑arising technology affects enablement. Allowing post‑filing developments to fill specification gaps invites external information to validate claims and raises substantial, potentially far‑reaching consequences for patent doctrine.

Read at IPWatchdog.com | Patents & Intellectual Property Law