obvIPat - Obviously Patentable

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Ariad v. Eli Lilly

by Orlando Lopez

This week’s CAFC decisions were dominated by the en banc (a panel composed of the entire court) decision on Ariad v. Eli Lilly in which the Court had asked both parties to address whether the patent statute (particularly 35 USC §112, paragraph 1) contained a written description requirement separate from the enablement requirement, and, if a written description requirement exists, what purpose does it have. The Court held that the patent statute does have a separate written description requirement, which is different from the enablement requirement.

One of the primary purposes of a patent is to teach the public how to make or use a particular invention. In exchange for an inventor completely disclosing the details of his or her invention, the government grants a time limited monopoly to exclude others from making using or selling the patented concept. The written description requirement arises out of §112, paragraph 1 of the patent statute that clearly states that the specification of a patent application must describe the invention and enable one skilled in the art to make and use the invention, a tit-for-tat requirement of the monopoly that is granted with a patent.  The written description requirement, which comes out of the first phrase of the section of the statute, has been interpreted by the courts to require that “one skilled in the art will recognize that the inventor was in possession of the invention.”  While this is hard to envision, typically an inventor knows what he/she has invented, the effect of the written description requirement can be seen in claims that we call genus or generic claims and species claims.

If you write a generic claim and in the specification only describes one species, the examiner or the courts can find that the generic claim does not satisfy the written description requirement. Although some feel that the written description requirement was generated by the courts, in view of the large number of court decisions related to the written description requirement, unless the Supreme Court does away with it, it is here to stay.  For additional discussion on this decision, somewhat oriented to lawyers, see this post from Patently-O.  The complete opinion can also be reviewed on the CAFC website.


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