The patent.legal Blog

← Back to Blog

The Amgen Case: How Much Disclosure Is Enough?

January 2023

What Happened

Amgen had patents on cholesterol-lowering antibodies. They disclosed 26 specific antibodies but claimed all antibodies that performed a certain function—potentially millions of different molecules. The Supreme Court agreed to decide whether that's enough disclosure to support such broad claims.

Why It Matters

This goes to the heart of the patent bargain. You get exclusive rights in exchange for teaching the public how to use your invention. If you claim more than you actually enable, you're getting a monopoly without delivering the corresponding benefit to society.

The Federal Circuit had already ruled against Amgen, saying finding all the antibodies within the claimed scope would require too much trial and error. Amgen disclosed some working examples and a general method, but that wasn't enough to enable the full scope of what they claimed.

The biotech industry was watching closely. If the Supreme Court affirms, broad genus claims become much harder to get and maintain. If they reverse, pioneering inventors get broader protection for their discoveries.

What You Should Know

While waiting for the decision, the practical advice is clear: disclose as much as you can. More examples, more detail, more embodiments. Don't try to claim everything if you've only invented a few specific things. Match your claim scope to your actual contribution.

For existing patents, the Amgen case creates uncertainty. Broad genus claims in biotech—and potentially other fields—may be vulnerable. For new applications, err on the side of more disclosure.

The patent system depends on adequate disclosure. Amgen tests where the line gets drawn.

Contact

Call for a consultation.

512-327-8932 · admin@austinpatentfirm.com