The Bargain of Disclosure: Enablement, Written Description, and Why Broad Claims Fail
By Casey Scott McKay ·
A patent is a bargain: the public grants exclusivity and the inventor grants a disclosure that teaches the invention. Section 112 is where that bargain is enforced, and it is the quietest way a valuable patent dies. This article explains the four distinct requirements packed into one statutory section, why enablement and written description are different tests that fail for different reasons, how claiming a function rather than a structure invites both a definiteness problem and an invalidity finding, and why the broadest claim a drafter can imagine is frequently the one that cannot be supported. It works through the genus problem that dominates life sciences and the algorithm problem that dominates software. It closes with the practical lesson: claim scope is limited by what you actually taught, and the specification decides that years before anyone litigates it.
IP and Technology > Patent Counseling Transactions | Article | Published 30 January 2024 - Updated 2 December 2025 | Casey Scott McKay - marksy.us
Summary. A patent is a bargain: the public grants exclusivity and the inventor grants a disclosure that teaches the invention. Section 112 is where that bargain is enforced, and it is the quietest way a valuable patent dies. This article explains the four distinct requirements packed into one statutory section, why enablement and written description are different tests that fail for different reasons, how claiming a function rather than a structure invites both a definiteness problem and an invalidity finding, and why the broadest claim a drafter can imagine is frequently the one that cannot be supported. It works through the genus problem that dominates life sciences and the algorithm problem that dominates software. It closes with the practical lesson: claim scope is limited by what you actually taught, and the specification decides that years before anyone litigates it.
Keywords: enablement, written description, Section 112, undue experimentation, Wands factors, possession, genus claims, functional claiming, definiteness, means plus function, claim scope, specification, best mode, priority support, biotechnology claims, antibody claims, software disclosure, algorithm disclosure, overbreadth, patent drafting
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