Essentially, to satisfy the enablement requirement an applicant must describe in the specification of a patent application “the manner and process of making and using” the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” it.  An inventor is therefore, required to disclose all of the non-obvious methods or processes of making and using his or her invention in order to advance the arts.  In exchange for that disclosure, the inventor gets a protected use of the invention for a period of time – generally 20 years from the date of such disclosure. 

The first paragraph of section 112 also requires that the specification contain two other things in addition to enablement:

·         a written description of the invention and

·         a best mode disclosure.

These requirements are distinguished from the enablement requirement by their purpose.  The purpose of a written description is to demonstrate that the inventor at the time the application was made had possession of the subject matter on which the claims were based.  The best mode requirement is to encourage the inventor not to conceal from the public the preferred embodiment of the invention they claim to have made.  That is, an inventor might be otherwise be encouraged to disclose only a second or third best embodiment to the public saving the best for himself.  

The invention to which this enablement disclosure requirement applies is the invention defined by the claims.  There may be other aspects of the invention described in the written description of the specification but the only invention subject to the enablement requirement is the invention actually claimed.   

The level of disclosure required is that which is sufficient for a person skilled in the art to make and use the invention.  Enablement has been interpreted by the courts to mean can a person skilled in the art make and use the claimed invention based on the disclosures provided in the specification together with information known in the art without undue experimentation.   

In general, determining whether or not undue experimentation is required to make and use an invention is highly subjective and dependant on many factors which, well, make generalizing difficult.  And, for invention in the insurance and broader financial services subject matter areas, even greater subjectivity exists – in part, because most patent examiners have little training or experience in these areas and making a judgment on undue versus reasonable experimentation is determined from the perspective of a person of ordinary skill in the art, a perspective the examiner may not have.  In addition what “experimentation” means in the context of a business method invention in the insurance or broader financial services areas may be difficult to define.   

The need for one skilled in the art to experiment a bit in order to make and use the claimed invention does not invalidate a claim for lack of enablement – but undue experimentation would.  How does one tell the difference?  Well, one way to address this question is by factually considering the following:

·         the level of direction and guidance provided in the specification;

·         the level of skill in the art at the time of the application; and

·         how well known the methods required to practice the invention are.

 For example (without implying an application to any particular invention claim – that is, in very broad terms), suppose that in an invention involving the subject matter of actuarial science “pricing a term insurance product” were a step in a claimed invention but a method for  such pricing had not been disclosed in the specification.   

Certainly, pricing an insurance product involves what might be called experimentation in order to develop a premium rate that satisfies pricing standards, covering expenses and benefits while producing a profit.  However, since methods of pricing term insurance products are well known to a person skilled in the art and the specification (let’s suppose) is not suggesting that this pricing would be any different, then, I think, it would be appropriate to conclude that this was not undue experimentation.  More simply, it may comparable to “calculating a square root” or “screwing in a light bulb”. 

On the other hand, if a claim step involved “establishing a charge” for a new type of insurance benefit or guarantee and a method for establishing such a charge was not described or even hinted at in the specification, then a person skilled in the art might be at a loss as to how to do such establishing without undue experimentation.  This may be the case since there are no known methods or processes for establishing such a charge and similar methods do not exist in the subject matter area.  If the financial impact or risk associated with the occurrence of the insured contingent event which is the subject of the claimed invention is new or unknown in the relative art, then undue experimentation may be required to figure out how to establish such a charge.  

There is no requirement that information be disclosed in a specification that would result in a commercially viable or commercially successful application of the invention.  Thus, any lack of disclosure of what might be considered undue experimentation to produce such a commercial success would not count against enablement.   

Only a failure to disclose undue experimentation required to make and use the invention, regardless of whether or not it would be commercially successful if made or used, would impact enablement.  As noted above, experimentation routinely done in the development of insurance products which may include testing or trials during pricing (e.g. stochastic modeling) or confirming conformance with insurance law and regulation (which often requires discourse and negotiation with state regulators) is not a requirement for enablement.  Such routine experimentation should be well within the skill set of a person of ordinary skill and there would be no need to disclose it.

The purpose of the enablement requirement is to assure that how to make and use the claimed invention is communicated to the interested people with skill in the art in a meaningful way.   In keeping with the section 112 requirement that such disclosure be “concise”, it is OK to interpret “concise”, meaning brief and to the point, from the perspective of a person skilled in the art.  But, one caution is that a patent examiner looking at insurance business method specification language may not be skilled in the art.  Therefore, since the examiner is the initial judge of enablement, using a lower standard than what a person skilled in the art would know when drafting specifications for insurance or financial services business method patent applications may be wise.

In drafting claims in one’s own invention or if reviewing claims one may be accused of infringing, enablement is a characteristic one should check for.  This is particularly true with respect to business method invention in the insurance and financial services areas since the patent examination process may not be as efficient in this subject matter area as in others.