Article by Andrew Chin
In its first enablement ruling in nearly a century, the Supreme Court held last year in Amgen Inc. v. Sanofi that thought experiments do not enable patent claims if they “amount to little more than ... research assignments.” As patent scholars have pointed out, however, the enablement standard does not ensure that patent disclosures meet the scientific community's standards for reproducible results, necessitating further research to validate the claims they aim to support and undermining the value of patents as research literature.
This Article posits that the enablement requirement assigns the patent disclosure the more modest epistemological task of credibly conveying a posteriori knowledge of a method or means of achieving a desired effect. The patent system thus serves as a public repository of naturally contingent causal knowledge as opposed to a priori natural phenomena and abstract truths that exist independently of human intervention. These understandings not only harmonize leading enablement decisions but also recast the Court's controversial patent-eligible subject matter jurisprudence. Specifically, they demonstrate the vital gatekeeping role of the Mayo v. Prometheus test in maintaining the distinction between a priori and a posteriori technological knowledge and thereby preventing category mistakes in the enablement determination.
About the Author
Andrew Chin, Paul B. Eaton Distinguished Professor, University of North Carolina School of Law.
Citation
99 Tul. L. Rev. 777