The Supreme Court's consideration of the standards for satisfying the enablement provisions of 35 U.S.C. 112(a) has been occasioned for the first time in over a century by the Court's.
In a rare action by the Supreme Court of the United States, Chief Justice Roberts granted Novartis's emergency request for a stay of a mandate from the US Court of Appeals.
Just two days after the Federal Circuit denied a stay of its mandate in Novartis v. HEC Pharm Co., Ltd., the Supreme Court granted a stay of the mandate pending a further order.
A need for a negative claim limitation often does not arise until the application is undergoing prosecution. For example, an unexpected prior art publication may be cited that requires an element the invention does not.