Bye Bye Functional Claims

by Dennis Crouch

Oral arguments from Amgen v. Sanofi suggest the potential of a blockbuster Supreme Court decision further derogating functional claim limitations (all of which are also genus claims).  A key question is whether the court will include limiting language that that directs impact primarily upon the “unpredictable arts.”

At oral arguments, the Supreme Court was quite hostile to the patentee counsel Jeffrey Lamken and his attempt to defend Amgen’s functionally claimed genus of antibodies.  I believe that Lamken took the wrong turn by first repeatedly telling the court that the claim covered only about 400 antibodies, before eventually admitting that a scope covering millions of yet unidentified antibodies.  I could taste the bitterness in the further questions.  Several members of the court struggled with the expressly functional claim limitation that permitted Amgen to claim all antibodies that achieve its stated results.  Lamken suggested that the “PTO regularly issues patents which have that sort of functional piece.”  Of course, the PTO also regularly issues invalid and overbroad patents.  In questioning, the court clearly thought we had a potential eligibility problem because of the functional limit. In his response Paul Clement picked-up on that issue and explained that the functional genus claim is “a work-around of Myriad. Because basically they’re pointing to something that exists in nature [the PCSK9 pathway] and they’re saying, we claim everything that works to bind there en bloc.”

In Amgen v. Sanofi, the Supreme Court  agreed to reevaluate the doctrine of enablement as applied by the Federal Circuit.  Although juries twice sided with the patentee, the district court and the court of appeals both rejected the jury verdict and concluded that lacked an enabling disclosure as a matter of law.  The Federal Circuit particularly noted (1) that functional limitations are much more difficult to enable than are structural limitations and (2) that each embodiment covered by a genus claim must be enabled.  Here, the court noted that Amgen had failed to enable the “far corners of the claimed landscape.”

Amgen has requested the court to incorporate a meaningful limitation into the enablement test.  In that framework, a patent challenger would need to show both (1) that some embodiments requires undue experimentation in order to recreate and (2) that those failures would be meaningful to skilled artisans.  And, Amgen suggests that functional genus should not face heightened scrutiny.  Lastly, Amgen suggested that the Wands Factors should be given less weight – that today they are being used as the test, rather than for functional support.  The particular Wands problem for the patentee here is the notion that antibodies are “unpredictable” and therefore require more disclosure.

The case is a very big deal, and not just for antibodies.  Every claim covers myriad undisclosed embodiments; Everyone is using lots of functional limitations; and Every patent suffers from unenabled far corners.

The claim here:

1. An isolated monoclonal antibody, wherein, when bound to PCSK9, the monoclonal antibody binds to at least one of the following residues: S153 … or S381 of SEQ ID NO:3, and wherein the monoclonal antibody blocks binding of PCSK9 to LDLR.

The Amgen invention centers around a pathway that others discovered regarding LDL, AKA “bad cholesterol,” the liver’s role in destroying bad cholesterol, and a new protein PCSK9.  The liver has LDL receptors (LDLRs) that bind and break-down LDL.  But, the body also makes a protein known as PCSK9 that competitively binds to those receptors and blocks the liver LDL-breakdown action.  In creating its invention, Amgen set out to find monoclonal antibodies that bind to PCSK9 and block its operation — and thus allow the liver to do its LDL-breakdown work.  The process for doing this was somewhat straightforward. They first injected a humanized-mouse with PCSK9 in order to cause an immune reaction to attack the foreign body.  The mouse created a bunch of antibodies (about 3,000) that bind to PCSK9.  These were then all tested (using standard rapid testing tools) to determine which ones bind the “sweet spot” of PCSK9 — and thus would have the impact of “block[ing] binding of PCSK9 to LDLR.”  This process brought it down to about 400 antibodies.  However, Amgen did not actually take the time to figure out the amino-acid sequence for of each of these. Rather, it did so for 16 of them and called it good.  Sanofi’s product is – most likely – one of the 400 discovered by Amgen, but was not literally described in the Amgen patent. Rather, Amgen described the process, and also described the use of a codon-replacement process to check similar antibodies (that is where the millions come-into play).

A key quote from Clement was be the following: “I think functional genus
claims are terrible.”  The essence of his argument is that they have the potential of giving the patentee a broad scope covering numerous radically different solutions.  The result though is that nobody has incentives to look for the others because of the covering patent.  “They retard the science.”  In his view, a more limited monopoly is much better — “We’re better off with two competing independently developed therapies.”

Colleen Sinzdak argued on behalf of the US Gov’t as amicus and in support of Sanofi.  Sinzdak was in complete agreement with Clement, arguing that broad genus claims are “a danger to innovation and especially in the medical field.”

The Government argued that a genus claim is only proper if each and every embodiment within the genus has been enabled. “It really is that simple. … you really do need to enable each of the different embodiments that you’re claiming.”  Sinzdak argued that in an unpredictable, fast-moving field, the law should be more stringent in order to allow an early patent to unduly grab land and shut-down further research.   Sinzdak suggested that the court force narrow claims and then let folks rely upon the doctrine of equivalents if necessary.

Lamkin’s important rebuttal point: Although Amgen did not literally disclose every embodiment, and some covered embodiments are quite structurally different from those disclosed, “the key fact in this case is that Sanofi has not identified one antibody that would require undue experimentation to make.”

50 thoughts on “Bye Bye Functional Claims

  1. 12

    “a scope covering millions of yet unidentified antibodies”

    To be fair, they’re probably hypothetical at this point.

  2. 11

    That claim is ridiculous and I’m honestly surprised Amgen took this dog to the Supremes.

    RG, down below: “ I’d also be wary of a holding that simply swipes at functional language in general or that compares the 26 structural disclosures to the millions of possible embodiments, because computer arts often have 0 to 5 structural disclosures and more than millions of possible embodiments.”

    Zero is typical, unless you are including make-believe “structure” (i.e., mathematical relationships and other abstractions). Punching a giant hole in the ludicrous farcical balloon of software/logic/instruction patents would be a great result for everyone (except for a subset of patent attorneys).

  3. 10

    The entire “just use Means Plus” thrust is a fallacy based on a misperception of what “terms sounding in function” pertain to.

    Which is why I first posted (at 3) that the title of this article was rather Clickbait.

    Let’s just add Prof. Crouch’s own coined term of “Vast Middle Ground.

    1. 10.1

      … I will note a bit of surprise though that the comments have not ventured to, “at point of novelty

  4. 9

    They can get narrower claims more appropriately tied to what they actually invented and disclosed. Sky is not falling if a company can’t pre-empt future research with broad claims sweeping in inventions yet to be discovered. Quite the opposite is true. We are better off if two or more competing solutions are found.

    1. 9.1

      Wrong! There should be only one patent claim that claims everything that is possible that hasn’t already been claimed.

  5. 8

    Reminds me of the Morse (Morse code) patent case. He basically claimed ‘means for electromagnetic communication’ and was reading the claims on radio waves v. telegraph lines. As i recall, SCOTUS conflated enablement, when it should have been rightfully considered a 112 issue. The law (via congress) was then changed to allow means plus function claims via amendment to 112. (My sequence could be off here). CAFC at times has tired to fix an otherwise screwed up claim by reading the 112 ‘means for’ into claim that did not use the legal phrase ‘means for’ directly in the claim. Presumption of validity and all that. In short, SCOTUS should strike the claim as improper form under 112 and that the court does not have an automatic obligation (under Markman) to rewrite the claim into proper 112 means plus function format that the inventor failed to claim and call it a day. But we won’t. We (i fear) will get another 2-3 step SCOTUS test that will suck otherwise valid and reasonable claims into yet another subjective vortex like Alice.

    1. 8.1

      That case came up in the discussion, with the (rather smart) pivot from Morse Claim 8 (not allowed) to Morse Claim 7 (allowed and upheld).

        1. 8.1.1.1

          Maybe we will get a little judicial restraint from SCOTUS this time around and not waxing on about innovation policy and judicial tests and the like. Legislative assistant Breyer is gone.

  6. 7

    Innovation-killing Medusa, thy name is Alice.

    Appearing in a courtroom near you in 3 . . . 2 . . .

    1. 7.1

      I agree. It sounds like we might end up in a place where you need to individually enable every member of the genus and, (per UMN v. Gilead case discussed last week), you can’t use “multiple R-group” descriptions to actually do that. Nor, IIRC, can you just mechanically list out hundreds of different structures.

      Which brings us back to 101. What do you do when the real innovation was the discovery of the pathway, and once you have that, the specific thing used to disrupt that pathway is obvious and/or subject to almost infinite variations?? Alice/Myriad rules out claiming the actual innovation (i.e., curing the disease by blocking the pathway) and this case/UMN might prevent you from trying to claim more than a handful of specific ways to actually do that. So, we’re down to filing 50 different applications on the same day, each claiming 50 different variations?? And, eventually, foreign filing all 50 apps….

      Now, for big-pharma, that might actually work. But also think about the typical software startup filing a case with typical method language (e.g., “filtering…”). Yikes.

      1. 7.1.1

        Nor, IIRC, can you just mechanically list out hundreds of different structures.

        Why not?

        (Hello, Chatbot….)

        1. 7.1.1.1

          It’s physically possible… but I took Mr. Holman’s March 9 post as casting cold-water on the strategy.

          @Kyle: DoE might work… as long as you didn’t have to amend your claims. And MPF is pretty risky given the enhanced written description requirements (e.g., the “nonce word” –> MPF language –> invalidity SJ pipeline has, err, claimed many patents over the last 10 years)

      2. 7.1.2

        These cases are probably better handled through MPF claiming and/or use of doctrine of equivalents. That way we can directly evaluate evidence of whether the defendant actually free rode on the patentee’s work.

        Fwiw, Amgen’s patents do not disclose or clinically validate the PCSK9 inhibition to treat high LDL pathway anyway. Amgen may have been on firmer ground suing on a later patent disclosing clinical evidence.

        1. 7.1.2.1

          “These cases are probably better handled through MPF claiming and/or use of doctrine of equivalents.”

          +1

      3. 7.1.3

        It sounds like we might end up in a place where you need to individually enable every member of the genus and, (per UMN v. Gilead case discussed last week), you can’t use “multiple R-group” descriptions to actually do that. Nor, IIRC, can you just mechanically list out hundreds of different structures.

        Or you could, you know, list the same 26 structures that were listed here, claim in means-plus, and accept that someone who discovers a binding that results in substantially different outcomes should get a patent for their discovery as well.

        What do you do when the real innovation was the discovery of the pathway, and once you have that, the specific thing used to disrupt that pathway is obvious and/or subject to almost infinite variations??

        If the infinite variations are equivalent means-plus will protect you. If you are worried and they are not and there truly is no difficulty in experimentation, then you can test them all yourself. But you seem to want knock-on protection for examining things that you didn’t examine just because you found the general path, and that logic leads to slowing the progress by removing incentive for others to examine while not providing you any extra incentive for examining.

      4. 7.1.4

        OC: “ What do you do when the real innovation was the discovery of the pathway, and once you have that, the specific thing used to disrupt that pathway is obvious and/or subject to almost infinite variations??”

        This is an old issue and the answer is old: you keep the pathway secret until you’ve identified and characterized the “disrupters” that work best. And you hope that those disrupters aren’t already known in the art and/or already used for the same therapeutic purpose you envision.

        1. 7.1.4.1

          Slightly modified:

          you keep the item secret until you’ve identified and characterized the aspects that work

          Sounds in: you do not get to have patents for mere research plans.

          Also sounds in: most all Pharma patents filed well before actual possession has been achieved (as shown in the drop-out rate of items already filed, but still
          F
          A
          I
          L
          out at the FDA.

          Not sure if Malcolm is aware of this view (given his tendency of one-bucketing).

  7. 6

    On July 20, Armstrong and Aldrin entered the LM again, made a final check, and at 100 hours, 12 minutes into the flight, the Eagle undocked and separated from Columbia for visual inspection. At 101 hours, 36 minutes, when the LM was behind the moon on its 13th orbit, the LM descent engine fired for 30 seconds to provide retrograde thrust and commence descent orbit insertion. After eight minutes, the LM was at “high gate” about 26,000 feet above the surface and about five miles from the landing site. Partially piloted manually by Armstrong, the Eagle landed in the Sea of Tranquility in Site 2 at 0 degrees, 41 minutes, 15 seconds north latitude and 23 degrees, 26 minutes east longitude. This was about four miles downrange from the predicted touchdown point and occurred almost one-and-a-half minutes earlier than scheduled. It included a powered descent that ran a mere nominal 40 seconds longer than preflight planning due to translation maneuvers to avoid a crater during the final phase of landing.
    NASA online

    Amgen’s Antibody target site is described as follows. There are many other targets disclosed as well, but this, I believe is the best hope.

    In some embodiments, the antibody is positioned 5 angstroms or less from at least one of the following residues of PCSK9: S153, I154, P155, R194, D238, A239, 1369, S372, D374, C375, T377, C378, F379, V380, or S381. I could not locate ipsis verbis for the language of claim 1, but it could be somewhere.

    Some refer this to functional claiming. I think it goes beyond functional claiming. I mean I would think to have functional claiming there must be some sort of binding constant?

  8. 5

    If the “patent bargain” is exclusive rights in return for an enabling disclosure, and if the supreme court has yet to tell us with precision what it is that has to be enabled in return for the grant of rights, then this case is long overdue.

    But who can be sanguine about the outcome? Is it not the recent record of the court that, in relation to the law of validity of patents, it obfuscates rather than clarifies the existing law?

    When might we expect the court to hand down its opinion? After the summer, I suppose.

  9. 4

    “the key fact in this case is that Sanofi has not identified one antibody that would require undue experimentation to make.”

    I think it is also true in this case that Amgen did not identify any antibodies that required undue experimentation to make. Since using animals to generate initial antibodies for human treatment is so well established and routine is doing so even novel enough to be inventive? Even if it is enabled is it novel and nonobvious?

    To this lay person it seems the novelty in the current state of the art is in further modifications to the animal antibodies (i.e. humanizing them) or bioengineering antibodies from scratch without ever using an animal immune response in the first place.

    1. 4.1

      The novelty of the antibodies in this case lies in discovering useful therapeutic applications for them. Of course, that long post-dated the patents-in-suit (another reason they’re un-enabled), so instead we’re treated to an abstract discussion about “millions” and whether they’d have a certain binding profile. Instead, we should be asking “what is the asserted utility of this invention, and can a POSA achieve that utility by following the disclosure?”

      Amgen’s contribution in these patents was to pick up a preexisting hypothesis–that antibodies that bound to PCSK9 could decrease LDL cholesterol–and preliminarily investigated a batch of those antibodies in lab bench tests. They discovered some interesting things about PCSK9, but nothing of sufficient real-world value to the public to warrant a patent. That came later when Amgen (and Sanofi and Pfizer) ran clinical trials.

      1. 4.1.1

        The invention is that an antibody binding to amino acids in the “sweet spot” on PCSK9 prevents its binding to the LDL receptor. The identification of this spot is clearly key, otherwise others would develop antibodies that do not bind to this area and still work.

        Contrary to what Clement said about genus claims, the claim does not cover radically different solutions. It covers monoclonal antibodies, that bind to one or more of the specified amino acids. Antibodies with different sequences can do that.

        1. 4.1.1.1

          Characterizing the binding pocket is important (though Regeneron had already selected a lead compound before these patents were published). But it doesn’t enable real world use of the antibodies.

        2. 4.1.1.2

          Contrary to what Clement said about genus claims, the claim does not cover radically different solutions. It covers monoclonal antibodies, that bind to one or more of the specified amino acids. Antibodies with different sequences can do that.

          Yes, all functional claims have different structures that achieve the function, that’s why the claim is to the function and not the structure.

          Since you already have decreed that none of the claimed solutions are radically different, you’d agree that if it is later found that one embodiment is 500% more effective at decreasing LDL than another, no patent should issue on that discovery, right?

          1. 4.1.1.2.1

            No, I would not.

            All antibodies have a similar macro structure, i.e., the Y-like structure. The business-end of the antibody comprises a binding site that is usually made up of amino acids from two polypeptide chains (heavy and light, although some antibodies comprise only heavy chains). The amino acid sequences of the chains determine the 3-D structure on a more micro level. So, they are not “radically” different as they are all antibodies. The claims are not directed to “any molecule that binds to the sweet spot.” THAT would not be enabled.

            Skilled artisans know how to develop antibodies to a particular location on a molecule once that location is identified.

            The question then becomes whether the species is obvious over the genus. The species would have to be claimed with more specifics regarding sequence as that is what imparts the improvement of being 500% more effective. That is a significant unexpected result.

            1. 4.1.1.2.1.1

              So, they are not “radically” different as they are all antibodies.

              How do you square the fact that you’re saying no species is radically different but then claiming a particular species has a significant unexpected result? Your standard for “not radically different” is “same genus” but then you admit that there’s a material different in functionality within the genus, so why is the genus a proper standard for measuring difference?

              The question then becomes whether the species is obvious over the genus. The species would have to be claimed with more specifics regarding sequence as that is what imparts the improvement of being 500% more effective. That is a significant unexpected result.

              Why are we in obviousness? You just agreed that the patentee enabled and possessed each species within the genus and told you any species would do. He anticipated using just this structure to do just this function.

              This isn’t a situation where we have one teaching that we’re combining with a second teaching of known substitutes and are surprised that the known substitute is uncommonly effective. Here the patentee claims enablement and possession of a genus to perform a function and you’re using a member of the exact stated genus to do the exact stated function and it’s uncommonly good. It suggests that either (1) the patentee did not actually meet 112a with respect to the full scope because it turns out that different species within the genus are “radically” different from each other or (2) the second person didn’t do anything beyond what the patentee did.

              1. 4.1.1.2.1.1.1

                YOU moved the goalposts Random with your “500%” difference and PatentMom answered you.

                Try not to be so obtuse.

              2. 4.1.1.2.1.1.2

                I did not agree it anticipated it. I agreed it encompassed it.

                Are you not aware that a species can fall within a broad genus claim, but not be specifically identified by that claim, so it can be separately patentable? That is why I said it would have to list the sequence.

                Check out the case law/discussion in MPEP 2131.02 and 2144.08.

                1. Are you not aware that a species can fall within a broad genus claim, but not be specifically identified by that claim, so it can be separately patentable? That is why I said it would have to list the sequence.

                  Does a species have to be specifically identified by a claim in order to constitute prior art? Of course not.

                  Does a patentee have to enable and possess the full scope of a genus? Of course.

                  So if you conclude the claim is valid, you’re saying that one of ordinary skill would recognize that patentee has enabled and possesses all species within the scope. This is a claim to one of the species in the scope that has particular intrinsic qualities.

                  I did not agree it anticipated it. I agreed it encompassed it.

                  Would one of skill view the patentee as having demonstrated possession of the breadth of the genus or not?

                  “Compare In re Meyer, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979) (A reference disclosing “alkaline chlorine or bromine solution” embraces a large number of species and cannot be said to anticipate claims to “alkali metal hypochlorite.”);

                  That’s assuming the question! Of course if you hypothetically draw a genus that includes a large number of varied species one might conclude that *that fact pattern* does not anticipate any given species. But someone opined on this very issue for this case, who was that?

                  Contrary to what Clement said about genus claims, the claim does not cover radically different solutions.

                  Oh yeah, it was you. So we return to my original point – given that you’re concluding that species within the genus are not radically different, and (presumably) concluding that 112a is met over the breadth of the genus, the natural result is that the species was possessed by the patentee and communicated to the public. If one of ordinary skill would not understand the species to be possessed by the patentee the claim to the genus wouldn’t be valid.

                  It’s one thing to argue in the abstract that a reference does not allow you to envisage a species. It’s another thing to argue a reference that you’re saying has a 112a-valid claim to the genus does not allow you to envisage the species while simultaneously calling the genus homogeneous (or at least “not radically different”) across it’s scope.

                  Your logic suggests that you could receive a patent on the genus, wait years, merely individually list the species that make up that genus, not have your patent be prior art against your species, and extend the monopoly of the genus ad infinitum. Does that seem like the correct result to you?

                  Moreover, if your competitor claims a functional genus like this one, you can just swoop in, engage in routine experimentation, and file hundreds of claims individually naming species to snatch their invention right out from under them, right? Amgen would be limited to the 26 structures they disclosed, and someone else who read their patent, performed only routine experimentation, and took the time to list out all of the species could claim every other species in the genus? Cause I gotta tell you, I personally could compete with Amgen in terms of patent R&D if that was the standard. I might get a hand cramp, but I could do it.

              3. 4.1.1.2.1.1.3

                Here is a paragraph from MPEP 2131.02.

                “Compare In re Meyer, 599 F.2d 1026, 202 USPQ 175 (CCPA 1979) (A reference disclosing “alkaline chlorine or bromine solution” embraces a large number of species and cannot be said to anticipate claims to “alkali metal hypochlorite.”); Akzo N.V.v.International Trade Comm’n, 808 F.2d 1471, 1 USPQ2d 1241 (Fed. Cir. 1986) (Claims to a process for making aramid fibers using a 98% solution of sulfuric acid were not anticipated by a reference which disclosed using sulfuric acid solution but which did not disclose using a 98% concentrated sulfuric acid solution.). See MPEP § 2144.08 for a discussion of obviousness in genus-species situations.”

                1. RandomGuy, there you go, changing the goal posts again. Your example was not of random species being claimed. Your example was of a species that was 500% more effective.

  10. 3

    Very clickbait title there.

    I would though draw emphasis to the species of “ unpredictable arts” as opposed to more grown-up so-called predictable arts…

    … such as more traditional mechanical and computing arts.

    (Yeah, the typical anti’s such as Malcolm and Random are sure to recognize and accept that, eh?)

    1. 3.1

      I would though draw emphasis to the species of “ unpredictable arts” as opposed to more grown-up so-called predictable arts…

      … such as more traditional mechanical and computing arts.

      Just to be clear – I’m not anti-patent, and in fact my position would lead to a lot more disclosure and a lot more patents than you. It’s unquestionable that if you uphold the patent here you have one entity which may further invent and if you defeat the patent you have at least five entities that have already invented.

      I agree that it is more accurate to emphasize the unpredictable arts. But I’d also be wary of a holding that simply swipes at functional language in general or that compares the 26 structural disclosures to the millions of possible embodiments, because computer arts often have 0 to 5 structural disclosures and more than millions of possible embodiments.

  11. 2

    I hate to say it, but if previous SCOTUS decisions are taken into consideration, they are going to issue a decision that makes matters worse, not better. When it comes to patent law, they seem to be making an effort to muddy the waters. I really hope I’m wrong on this.

    1. 2.1

      There is definitely a sense of Catch-22 here — notably drawn to a sense of Double-Edged Sword that inures to the legal fiction of Person Having Ordinary Skill In The Art.

      Aiming at “making it tougher” for Applicants when playing with PHOSITA in view of 112 (as a leading edge of that sword) will necessarily “make it easier” for Applicants in view of 103 (as a trailing edge of that sword).

      See KSR for the switch in swinging of the sword.

      I also note that ANY attempt to deny the sword simply rends asunder the Rule of Law (not that this won’t be attempted).

  12. 1

    “the key fact in this case is that Sanofi has not identified one antibody that would require undue experimentation to make.”

    That would be a good argument if counter invention were required to prove lack of enablement or possession, but historically cases have not called for it.

    Lamken suggested that the “PTO regularly issues patents which have that sort of functional piece.” Of course, the PTO also regularly issues invalid and overbroad patents.

    Also of note is the argument that the courts must be wrong because the PTO issued the claim and the two juries found them valid. The PTO has the burden and no resources to prove the size of the claimed genus, so its unsurprising they don’t make an enablement rejection. Then its unsurprising that the jury follows what the PTO has done. Now the argument is that the courts should follow the non-analysis done by the PTO and the jury. Why even have the requirement at all if nobody performs an analysis under it?

    Gorsuch is not my favorite justice, but he seems to be aware that the best thing the court could do is really pin the requirement on the specification to show it meets the full scope of the claims.

    The rule should be a claim that is not reasonably commensurate with the scope of disclosed embodiments is prima facie evidence of unenablement. The burden should shift to the applicant to prove that their embodiments fill the scope. They are always capable of swapping into means-plus claiming to get the disclosed embodiments + equivalents, and the burden to expand past that lies with the applicant, not the public to counter-invent when the office has no resources to do so.

    1. 1.1

      At the EPO, one of the guiding principles is that the scope of protection given by a patent should be “commensurate” with the “contribution” which the claimed subject matter makes to the art. For example, when the invention (new, useful, inventive and enabled) is inspirational, a whole new field of technology, greeted with praise from the inventor’s peers, then it is good for innovation to reward the inventor with relatively wide scope. But when the contribution is just mundane, not much more than routine, the granted scope of protection should be correspondingly modest.

      Functional claims can help, to deliver this “commensurate” reward.

      In the USA, is this “commensurate” notion given any credence whatsoever?

      1. 1.1.1

        For example, when the invention (new, useful, inventive and enabled) is inspirational, a whole new field of technology, greeted with praise from the inventor’s peers, then it is good for innovation to reward the inventor with relatively wide scope.

        I would think just the opposite. If you open up a new field and give a broad scope, you have just eliminated the desire to improve the entire field.

        In the USA, is this “commensurate” notion given any credence whatsoever?

        Sure, the scope must be commensurate with the enablement and possession. But that leads to the opposite conclusion you speak of.

        1. 1.1.1.1

          Thanks, Random, for that. I see your point but am not convinced by your argument.

          Might it help to take a concrete example and also to compare utility patents with design patents.

          At least in Europe, scope of protection given by a design patent varies, in proportion to the “design freedom” that the designer/inventor had. So let’s think about toothbrushes. Today, there are thousands of designs. Today, each new one, the subject of a Euro Design Registration, enjoys a very narrow scope of protection. But suppose we are back at the time when toothbrushes simply did not exist, and you have just conceived the concept. If you file a design application in Europe, you will get broad protection. What if you file for a utility patent though? Protection commensurate with what is enabled will be very broad, effectively a monopoly over all toothbrushes.

          Rightfully so? Or must the scope be strictly confined, driven by the over-riding public policy objective to give room for competitors immediately to bring competing (and likely better) toothbrush designs to the market?

    2. 1.2

      Yep. As an examiner who thinks fxnl language is almost always overbroad, I can confirm we have very few resources to reign this in. But your idea would help. Also, fxnl language became routine after applicant attnys abandoned means-plus-fxn which is narrower. IOW, the attnys saw a way to increase claim breadth and went for it. They started it. Then the PTO ok’d it via MPEP and various trainings. Examiners were left with one tool to reign this in: metes and bounds of structure to achieve claimed function under 112b. So blame this on clever attnys and PTO leadership dullness.

      1. 1.2.1

        Brother Anon,

        Your feelings are noted, as is the error of you seeking to place blame merely because of those feelings.

        You would do far better to stop drinking the anti-patent kool-aid.

      2. 1.2.2

        Also, fxnl language became routine after applicant attnys abandoned means-plus-fxn which is narrower. IOW, the attnys saw a way to increase claim breadth and went for it. They started it.

        Yeah, the court said “a disclosed embodiment supports a scope that includes things that do substantially the same thing in substantially the same way to get substantially the same result” and the attorneys said “that’s fine, we’ll give no embodiments and claim the same result” and they’ve been under the impression thats okay for like 30 years now.

    3. 1.3

      would be a good argument if counter invention were required to prove lack of enablement or possession, but historically cases

      So close, yet so very far away.

      Likely, you recognized the natural power of the logic, but also experience cognitive dissonance with your own long history of actively seeking out confirmation bias.

      A couple of threads to pull in your statement…

      What is this “requirement” you refer to?
      Who has (any) requirement to prove anything in the examination of applications?
      Why are you seeking “cases” – as opposed simply to the words of law as written by Congress?
      Which “history” are you leaning to? (see above re: your confirmation bias proclivity)

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