Discover

Leverage AI to reveal, enhance, and protect trade secrets.

Manage

Everything you need to run a trade secret program.

Professional Services

Expert guidance to build a trade secret program and secure key IP assets.

FAQs

Answers to your common questions

Blog

Insights and updates on industry trends

Press

Media coverage featuring Tangibly

Podcast

The Reasonable Measures Podcast

Webinars

Presentations exploring strategic insights

Case Law Reviews

Significant trade secret cases

Knowledge Base

Release notes and other Tangibly guides

Case Study

Industry-specific applications

TS25

International Standards for Trade Secret Management

SCOTUS chimes in on what it means for a patent to be enabled

supreme court
Last updated on: June 8, 2023
Author: Chris Buntel

This article is part of Tangibly’s Guest Series. Read the original article here.

On this page

[vc_row][vc_column][vc_row_inner css=”%7B%22default%22%3A%7B%22margin-bottom%22%3A%222rem%22%7D%7D”][vc_column_inner width=”1/2″][vc_column_text]One of the basic requirements of US patents is that they be “enabled”.  This “enablement” allows one of ordinary skill in the art to read the patent and be able to make and use the described technology without undue experimentation. Basically, it shouldn’t be too hard to get the invention to work after you read the patent.

The US Supreme Court recently affirmed a holding by the CAFC that invalidated two Amgen patents.  The patents clearly described 26 antibodies by their amino acid sequences, but the claims encompassed a vast number of antibodies.

The two patents claim antibodies that bind to specific sequences of PCSK9 (a naturally occurring protein) and that block PCSK9 from binding to LDL receptors.  The antibodies are useful to treat patients having high LDL cholesterol.[/vc_column_text][/vc_column_inner][vc_column_inner width=”1/2″][us_image image=”315″][/vc_column_inner][/vc_row_inner][vc_column_text]The court found that the enormous number of antibodies covered by the claims’ functional language was simply too much to be enabled by 26 specific antibody sequences.

While the case specifically addresses a patent issue, Tangibly’s CEO asked me if there is an implied trade secret angle to it.

There is always some tension while drafting a patent application.  On one hand, the patent applicant wants to disclose as much detail as possible in order to meet the enablement requirement.  On the other hand, the applicant may wish to keep certain aspects of the invention confidential to further have an edge over the competition.

The better the enablement / disclosure, the weaker the trade secrets.  Similarly, the stronger the trade secrets, the weaker the enablement.  This is a more nuanced way of thinking than the usual binary “patent or trade secret” mantra.  It’s almost like a dial instead of a switch.


 

Source:

https://www.supremecourt.gov/opinions/22pdf/21-757_k5g1.pdf[/vc_column_text][/vc_column][/vc_row]

Related Articles

Blog, Guest Author Series

The New Face of IP in the AI Age: Why Trade Secrets Matter More Than Ever for Tech [Part 1 of 2]

Imagine this: A consultant starts a competing company after taking your proprietary information while under a confidentiality agreement. You promptly file a trade...
Blog

There’s No Trade Secret Troll Hiding Under The Bridge

Imagine this: A consultant starts a competing company after taking your proprietary information while under a confidentiality agreement. You promptly file a trade...
Stealing Confidential Information is Not Necessarily Trade Secret Misappropriation
Blog, Guest Author Series

Stealing Confidential Information is Not Necessarily Trade Secret Misappropriation

Imagine this: A consultant starts a competing company after taking your proprietary information while under a confidentiality agreement. You promptly file a trade...
Blog

Caffeinated or Not, Intent Matters: The Real Cost of Trade Secret Theft

Federal DTSA and Massachusetts UTSA do not clearly define what “willful and malicious” means. Recent litigation in Massachusetts took great steps towards clarifying...
Blog

KPM Analytics Wins $10M Trade Secret Case: What It Means for Foodtech and IP Protection

A recent federal court ruling awarded over $10 million in damages to KPM Analytics, a scientific instrumentation company serving the food and agriculture sectors, in a...
TS25.org
Blog

Introducing Trade Secret 2025 (TS25): The Future of Trade Secret Management

Tangibly, the leading trade secret management platform, proudly announces the launch of Trade Secret 2025 (TS25)—a cutting-edge digital resource designed to...
KPM Analytics v. Blue Sun Scientific
Blog

Palantir is Suing a Y Combinator Startup Over Trade Secrets

Palantir has filed a trade secret lawsuit against Guardian AI, a healthcare-focused AI startup launched by two of its former employees, in what is shaping up to be one...
Blog

Rippling v. Deel: Outsource your HR, but not your trade secrets.

Rippling sued their arch-competitor Deel in the Northern District Court of California on March 17, 2025. Rippling claims that Deel used a “mole” within Rippling to...
How To Keep AI From Stealing Intellectual Property
Blog

How To Keep AI From Stealing Intellectual Property

Artificial intelligence presents both opportunities and risks for businesses. While it drives innovation and efficiency, it also creates vulnerabilities for...
The Intersection of Artificial Intelligence and Intellectual Property
Blog

The Intersection of Artificial Intelligence and Intellectual Property

Artificial intelligence (AI) has transformed the way we create, innovate, and safeguard ideas, but it also introduces intricate questions around intellectual property...