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How Broadly Can I Claim?

The short version

Broad claims are not forbidden. They are expensive, and they are expensive in two separate currencies. Enablement asks whether the specification lets a skilled person make and use everything claimed. Written description asks whether it shows the inventor actually possessed it. A patent can satisfy one and fail the other.

Neither page is published alone, because fixing one problem while believing you have fixed both is the failure mode.

Both decisions concern claims defined by what something does rather than what it is, which is a shape that recurs constantly in software. A claim to any system that achieves a result is functionally the same move as a claim to any antibody that binds a target.

Two requirements, two failure modes. In Amgen, the Supreme Court held that two proposed methods for finding the rest of a claimed class amounted to "little more than two research assignments." That is enablement. In Juno, a specification disclosed two examples of an enormous functional class and a $1.2 billion verdict fell, because two examples did not show possession of the class. That is written description. A specification can teach how to make things and still fail to show the inventor had the category in hand.

The Pair

Amgen v. Sanofi Two methods for finding the rest of a claimed class were "little more than two research assignments." Breadth is allowed; it has to be paid for in disclosure. Read the Case Juno v. Kite Two examples of an enormous functional class did not show the inventor possessed the class. A section 112 case where the number is the consequence, not the subject. Read the Case

What These Pages Do Not Decide

  • How broad your claims should be. Neither decision says narrow claims are the answer; both say breadth has to be matched by disclosure.
  • Whether your specification enables or supports your claims.
  • What structural characteristics would suffice. Juno was explicit that missing sequences were not the fatal defect, which means the answer is specific to what is claimed.

Educational, not legal advice. Consult a qualified patent attorney about claim scope and the disclosure that has to carry it.

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