En Banc Federal Circuit Decides Ariad v. Eli Lilly Written Description Case
Mar 22, 2010 | Download as pdf
The en banc Federal Circuit today reaffirmed that § 112, first paragraph, does contain a written description requirement separate from the enablement requirement. In this closely watched case, the Federal Circuit construed 35 U.S.C. § 112, and concluded that the language of the patent statute requires a “written description [I] of the invention, and [II] of the manner and process of making and using [the invention].” In so doing, the Federal Circuit described the distinct written description requirement as a foundational aspect of patent law:
a separate requirement to describe one’s invention is basic to patent law. Every patent must describe an invention. It is part of the quid pro quo of a patent; one describes an invention, and, if the law’s other requirements are met, one obtains a patent. The specification must then, of course, describe how to make and use the invention (i.e., enable it), but that is a different task. A description of the claimed invention allows the United States Patent and Trademark Office (“PTO”) to examine applications effectively; courts to understand the invention, determine compliance with the statute, and to construe the claims; and the public to understand and improve upon the invention and to avoid the claimed boundaries of the patentee’s exclusive rights.
Look for further in-depth analysis of the case in the next Ingenuity Update coming this April.
The Federal Circuit’s opinion is available here.