Patent IllustrationOne of the requirements for obtaining a patent is to provide an application that contains a very specific description of the invention, or in the words of the patent statute:

“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 same. . . .”

It is clear from the language that there is an “enablement” requirement; namely that one skilled in the art must be enabled to make and use what is defined by the claims of the patent. However, there is controversy whether the above cited language also imposes a separate “written description” requirement separate from the “enablement” requirement, and if so, what the scope and purpose of that “written description” requirement is. Due to this ambiguity, some patents have been found invalid for failing to provide a proper “written description” while others have not.

On December 7, 2009 the entire Federal Circuit reheard arguments in the case of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. to address whether there is a separate “written description” requirement and, if so, the proper interpretation of the “written description” requirement for patent applications.

Proponents of a separate requirement, argued that the “written description” requirement focuses on the breadth of patent claims to ensure that applicants were fully in possession of the claimed subject matter to prevent them from claiming more than they are entitled.

Opponents, such as research universities and small biotechnology companies, argue that it constrains their ability to profit from research. For example, a significant amount of money and time is devoted to patenting biotechnological inventions, such as nucleotide sequences, where each sequence would have to be analyzed to satisfy the “written description” rule. Such a barrier on patent procurement would arguably thwart the incentive for innovation.

Stay tuned.


— Robert J. Yarbrough, Esq.