Abstract

Some inventors might think any old written description of their inventions is adequate for patent protection — but they’d be wrong. In fact, in one recent case, the Federal Circuit confirmed that a patent must satisfy a specific patent written description requirement to be valid. Simply describing the manner and process of making and using the invention won’t suffice.

Some inventors might think any old written description of their inventions is adequate for patent protection — but they’d be wrong. In fact, in recent case Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., the Federal Circuit confirmed that a patent must satisfy a specific written description requirement to be valid. Simply describing the manner and process of making and using the invention (also known as enablement) won’t suffice.

First Drafts

Ariad sued Eli Lilly, alleging infringement of a patent related to the regulation of gene expression in the human body. A jury found that Lilly had infringed Ariad’s patent.

On appeal, a three-judge panel of the Federal Circuit reversed the district court and held that Ariad’s patent claims were invalid because of the lack of an adequate written description, as required by Section 112 of the Patent Act. The company then petitioned for a rehearing before the entire Federal Circuit court.

A Consistent Holding

Ariad argued that Sec. 112 is satisfied as long as the patent describes enablement. In fact, Sec. 112 states:

The specification shall contain 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 which it pertains, or with which it is most nearly connected, to make and use the [invention] …

The Federal Circuit observed that it has consistently held that Sec. 112 contains a written description requirement separate from the enablement requirement. It reasoned that the statute would have been written differently if Congress had intended enablement to be the sole description requirement.

The court also noted that it has articulated a “fairly uniform standard” for an adequate written description. The description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed,” according to the court. The level of detail required will vary depending on the nature and scope of the claims as well as the complexity and predictability of the relevant technology.

While the written description never requires examples or an actual embodiment of the invention, a description that only generally conveys the invention may not be enough.

The Write Stuff

The court acknowledged that the written description requirement puts universities at a disadvantage because basic research won’t be patentable. But it also determined that’s precisely the law’s intent. The requirement, it held, provides incentives for actual inventions — not just academic theories.

About the firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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