THE WRIGHT ENABLING DISCLOSURE FOR BIOTECHNOLOGY PATENTS

The disclosure in a patent specification must enable others to make an d use the claimed invention. In the competitive biotechnology industry , companies often seek broad claims to protect contemplated embodiment s of their inventions that have not yet been reduced to practice. In I n re Wright, the Federal Circuit recently challenged this approach whe n it upheld the rejection, for lack of enablement, of all but the narr owest claims to a vaccine genetically engineered to protect against re troviruses. This decision unreasonably elevates the established standa rd for enablement by limiting biotechnological patent protection to on ly those embodiments of a claimed invention whose success can be demon strated by working examples. This Note critiques that decision and pro poses a limited policy-based approach to guide consistent determinatio ns of enablement for patent claims.