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AMGEN INC. v. SANOFI

Opinion of the Court

35 U. S. C. §§111, 112. Section 111 of the current Patent Act provides that a patent application “shall include … a specification as prescribed by section 112.” §111(a)(2)(A). Section 112, in turn, requires a specification to include “a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art … to make and use the same.” §112(a). So today, just as in 1790, the law secures for the public its benefit of the patent bargain by ensuring that, “upon the expiration of [the patent], the knowledge of the invention [i]nures to the people, who are thus enabled without restriction to practice it.” United States v. Dubilier Condenser Corp., 289 U. S. 178, 187 (1933); see also Grant v. Raymond, 6 Pet. 218, 247 (1832) (Marshall, C. J.) (“This is necessary in order to give the public, after the privilege shall expire, the advantage for which the privilege is allowed, and is the foundation of the power to issue a patent.”); Whittemore v. Cutter, 29 F. Cas. 1120, 1122 (No. 17,600) (CC Mass. 1813) (Story, J.) (“If therefore [the disclosure] be so obscure, loose, and imperfect, that this cannot be done, it is defrauding the public of all the consideration, upon which the monopoly is granted.”).

This Court has addressed the enablement requirement on many prior occasions. See, e.g., Wood v. Underhill, 5 How. 1 (1846); O’Reilly v. Morse, 15 How. 62 (1854); The Incandescent Lamp Patent, 159 U. S. 465 (1895); Minerals Separation, Ltd. v. Hyde, 242 U. S. 261 (1916); Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245 (1928). While the technologies in these older cases may seem a world away from the antibody treatments of today, the decisions are no less instructive for it.

Begin with Morse. While crossing the Atlantic Ocean in 1832 aboard a ship named Sully, Samuel Morse found himself in conversation with other passengers about “experiments and discoveries” around electromagnetism. 15 How.,