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Amgen v. Sanofi: The More You Claim, the More You Must Enable

Supreme Court, decided 18 May 2023, unanimous. Read from the opinion; quotations verified against the court's text.

Read this with Juno v. Kite. Enablement and written description are different requirements that fail broad functional claims for different reasons. A reader who fixes only one has fixed half the problem.
Holding

On May 18, 2023 a unanimous Supreme Court held that a patent claiming an entire class of things must enable a skilled person to make and use the entire class, that "the more one claims, the more one must enable," and that Amgen's two proposed methods for finding the rest of the claimed antibodies amounted to "little more than two research assignments."

Amgen described 26 antibodies and claimed every antibody that performs a certain function, potentially millions of them. To bridge the gap it offered a "roadmap" and a "conservative substitution" technique for finding the others.

A unanimous Supreme Court held that this was not enough. A specification "must enable the full scope of the invention as defined by its claims," and Amgen's methods "amount to little more than two research assignments."

The rule is not that broad claims are forbidden. It is that breadth has a price, paid in disclosure. The requirement is technology-neutral, so the same question arises whenever a claim defines a large class by what its members do while the disclosure teaches only part of it. How much teaching is enough depends on the field and the claims. Functional language is not defective on its own.

What This Case Is Not

"So keep your claims narrow" is not what the Court said. The quotable rule invites that corollary and the opinion does not support it. Breadth must be matched by disclosure. Presenting this as an argument for narrow claims misstates the holding and hands readers strategy advice they did not ask for.
  • It does not forbid broad claims.
  • It is not limited to biotech, and it does not condemn functional claiming. The question is whether the disclosure is commensurate with the breadth claimed.
  • It does not tell you whether your specification enables your claims.

Educational, not legal advice. Consult a qualified patent attorney about your own timing, disclosure and claims.

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