"Undue experimentation" - why isn't the patent office more demanding to minimise it (e.g. provide parts list)?

Question

The majority of the patents I've looked at read to me as outlines of research projects rather than detailed descriptions of how to make something. (I am a person of ordinary skill in the art; I have a degree in the field)

Typically the components cited are "motors" or "controllers" or "actuators". Now, there are two issues here:

1. Broad claims that establish the territory that is claimed.

2. Enablement of those skilled in the art to make the invention.

This language is appropriate for (1), but it is way too vague to satisfy (2).

I would consider reciting "a motor" without further details, to automatically mean "undue experimentation", owing to the huge number of conceptual types of motors with widely differing properties, not to mention the sheer number of different components with "motor" in their name that may be bought. (For example, Google patent search gives at least a 1000 matches for US utility patents with "motor" in the title.)

So, clearly, the "undue experimentation" is an enormous grey area.

My question is: why does the patents office errs, in this grey area, on the side of the inventor, rather than on the side of the public?

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Looking for answers here: http://www.uspto.gov/web/offices/pac/mpep/s2164.html (2164 The Enablement Requirement)

Some relevant excerpts:

The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue.

This can be interpreted by the examiner to say that the inventor shouldn't hold back the details. It's easy to disclose them, right? And if you, the inventor, don't disclose them, the experimentation will be considered undue. (This interpretation is within the English meaning of "undue".)

Time and difficulty of experiments are not determinative if they are merely routine.

It evades me why this statement was considered acceptable to include. It opens up the system to abuse, for example if I specify that "to determine parameter X, the practitioner should try all possible combinations of [some mathematical structure that has very many combinations]" in some routine way, where I have already done this, and know the parameter X. Preferably, the law should compel the inventor to disclose this "shortcut". (Note that this is not the same as best mode, because they will arrive at exactly the same answer.)

And the example that follows the above quote:

$50,000 and 6-12 months

is considered not undue, but

many months or years

is undue.

Here is a court ruling that enablement has not been met because

“an unreasonable amount of work would be required to arrive at the detailed relationships appellant says that he has solved.”

This is similar to what I'm saying above: the inventor is making it more difficult for the public to practise the invention, by withholding details that they clearly know.

But again it highlights the greyness of the grey area, by its use of the term "unreasonable" rather than quantifying what that means in terms of dollars and months.

This is my complaint repeated in the official text:

Thus, the teachings set forth in the specification provided no more than a “plan” or “invitation” for those of skill in the art to experiment using the technology in other types of cells.

Once again they avoid facing the issue of how much:

No exact numerical standard has been fixed by the courts, but the “amount of required experimentation must, however, be reasonable.”

Note the word "reasonable" rather than numbers of dollars and months.

Some numbers are quoted, however:

• 4 hours — reasonable
• 1 to 2 years — “a clearly unreasonable requirement”

I guess, given the "6-12 months" above, this means that 1 year is our standard.

And this seems too high to me. Why does the patent office not stipulate this to be, say, 1 week?

This would be in the public interest, improve the quality of patents, and reduce patent abuse. Would it have any negative consequences? I can't think of any.

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Another take on this is that the effort (which we can count in the common denominator of dollars, or months of work for one person; which are similar), the effort to create a working solution can be seen as a set of steps, some large, and many small. The law seems to require that each of these steps has a predictable bound, but is reluctant to specify an actual quantitative bound. What is the logic behind this? What does such a shy strategy achieve? Especially in light of the fact that the inventor, if enablement is taken into account, must be in full possession of the exact recipe for at least one embodiment. So to require them to disclose it does not seem to be undue from the public's point of view. After all, a patent is a contract which exchanges a monopoly for a full disclosure, and such full disclosure is easy to make.

This is not the same as asking the inventor to provide a working prototype (clearly, this is often unreasonable), but they should be able to provide a parts list, and a means they would use for obtaining each part (e.g. citing a distributor of a component). So while it may be beyond their means to actually implement a prototype, the test for "invention" rather than a "plan" should be that a specification refers to actual examples of parts and methods (while claims should be allowed to refer to generic parts). In case of software patents, source code should be provided (into the public domain) as part of the specification, while abstract high-level pseudocode used in the claims. I'm saying this from a commonsense perspective. Clearly, the established convention disagrees. And the question is why?

Answer 1

The USPTO tries to follow the law and the rules. To show a person skilled in the art how to make and use an invention doesn't mean you need to give them production blueprints - especially in the "predictable arts". Also, the implementation the inventor describes doesn't need to work particularly well. One way to think about it might be "is there more inventing to do to get it to basically work?". In most cases, which motor is used is irrelevant to the theory of operation. If it does matter, then the applicant should provide the details.

A few years ago a patent was invalidated for not giving the brand name of the glue the inventor used. Normally this would not be an issue but the inventor tried dozens of adhesives before finding one that would work at all in the application. You can't leave that kind of thing out.

Answer 2

"Why does the patent office not stipulate this to be, say, 1 week?"

Short answer: because the patent office doesn't make the rules; the patent office merely follows the rules written by Congress and interpreted by the Courts.

Answer 3

George White has the key - because it all relates to 'a person skilled (or of ordinary skill) in the art' - the famed and elusive "POSITA."

In other words, a person of ordinary skill in the field of the patent should be able to practice it without inventive steps. A new transmission design should be able to be designed without undue experimentation by an automative engineer - that doesn't mean it can be practiced by a machinist (unless they know/learn mechanical engineering).

On the other hand, an improved toothbrush (is probably not patentable) should probably not require an advanced degree to practice. It all boils down to what level of experience/knowledge/training/education is normally possessed by someone working in the field of the invention.

Answer 4

Especially in light of the fact that the inventor, if enablement is taken into account, must be in full possession of the exact recipe for at least one embodiment.

Not necessarily. An example of the invention can be "prophetic", describing predicted results as opposed to something the inventor actually did. The case Gould v. Quigg was over a patent for something that had not been built at the time the patent was filed. The court said "the mere fact that something has not previously been done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it." In cases like this, a lot of the sort of details that you're asking for may not yet exist. Your invention can require an apparatus that an implementer cannot readily obtain, but the patent has to disclose enough details about that apparatus.

Note the word "reasonable" rather than numbers of dollars and months. ... And this seems too high to me. Why does the patent office not stipulate this to be, say, 1 week?

Keep in mind that definitions for "reasonable" and "undue burden" will vary a lot from one application domain to another. The amount of time/money required to re-implement (say) a software algorithm is not really comparable to doing the same for a satellite-based sensor system. The time and cost of deploying the latter are so high that testing even a single experimental design (not unreasonable) could cost more than years' worth of experimentation on the former (most likely unreasonable). Software experiment/test cycles can be measured on the order of minutes, but it can take years for a custom gene sequence in a plant to express itself.

When you look at the incredibly broad range of things that can be covered by a patent, it's unlikely that you'd ever be able to come up with a concrete, universal "undue burden" threshold. In the legal world, they prefer to evaluate things like that on a case-by-case basis instead. The statute itself is very broad, but there's a lot of legal precedent here that fills in the gaps and provides good examples to go by.

There are good examples on the page you linked in the section "Examples of Enablement Issues-Missing Information". It talks about several examples that only included vague block diagrams without specific information about which block performs which function, or requirements to use obscure mathematical algorithms that aren't commonly known and aren't described in the disclosure. In these cases, an implementer is more or less having to do original research in order to fill in the gaps and get a working embodiment (the same original research done by the inventor that was supposedly novel enough to be worth patenting).

In your example, something like motor or controller selection is unlikely to be seen as unreasonable since that's the sort of thing that engineers do all the time. The parts used by the original inventor probably won't still be available by the time the patent expires, so you're most likely going to have to do this work anyway. On the other hand if there's a specific requirement that the part must meet in order for the invention to work (i.e., the flux capacitor must be tuned to exactly 88 MPH), then that's the sort of critical detail that has to be included. If you can use an electronic, pneumatic, or hydraulic actuator and everything still works the same, then there's no need for the extra detail.

Would it have any negative consequences? I can't think of any.

Some inventions are inherently expensive or time-consuming, even if you have 100% of the information that exists. Whatever hard threshold you want to set, there will always be inventions where the burden on the implementer is beyond that threshold and no amount of information disclosure would change that. It's not particularly fair to proclaim these inventions unpatentable simply because they're complicated. Evaluating the threshold based on the particular case at hand puts inventions of all sizes and complexity levels on a more even playing field.

My question is: why does the patents office errs, in this grey area, on the side of the inventor, rather than on the side of the public?

The purpose of patents is to encourage research, innovation, and risk taking. They protect inventors against competitors. Erring on the side of "the public" (which includes the inventor's competitors, actual and potential) reduces the value of the patent. If you err on the side of the inventor, the public can always challenge it and overturn it. If you err on the side of the public and require the inventor to overshare, that error is not reversible (the information was already made public and the inventor was harmed without remedy).