""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."
A Federal Circuit precedential decision excused lack of enablement for claim scope covering a later-developed species by treating that species as after-arising technology. The court held a claim enabled for a first species but not for a second species could nevertheless cover the second because the second was patented after the original filing date. An accused infringer sought rehearing and then filed a certiorari petition questioning when after-arising technology may influence enablement. The petition raises substantial concerns about the enablement requirement of 35 U.S.C. §112 and the broader consequences of allowing post-filing developments to fill disclosure gaps.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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