Insights on the Future of §112: Satisfying the Requirements of Enablement and Written Description under Amgen v. Sanofi

October 24, 2023 10:30am

Mary C. Till
Senior Legal Advisor
Office of Patent Legal Administration
U.S. Patent and Trademark Office

Jason Murata
Partner
Axinn, Veltrop & Harkrider LLP

Emily Larrimer Savas
Partner
Locke Lord LLP

Emer Simic
Partner
Neal, Gerber & Eisenberg LLP

  • Analyzing the Supreme Court’s decision in Amgen v. Sanofi relative to the enablement requirement
    • Taking stock of what the decision means when a patent claims a class of novel compounds or antibodies
  • Understanding the impact of the decision on the ability to protect broader foundational innovations
  • Reviewing the impact of other influential §112 cases, such as Juno, Biogen and Idenix
  • Reconciling whether patentees must disclose enough information to “enable” people of ordinary skill in the relevant art to “reach the full scope” of a claimed invention
  • Assessing how the decision could make changes to the Federal Circuit’s approach
  • Implementing best practices for patent prosecution in view of the Court’s decision