Federal Appeals Court Weighs In On Requirements of Patent’s Specification
When drafting and/or reviewing patent specifications, steps should be taken to ensure that the specification includes a written description of the invention, as well as a description to enable one skilled in the art how to make and use the invention. See Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., (Fed. Cir. 2010) (en banc).
According to federal statutory requirements, a patent specification “shall contain a written description of the invention, and of the manner and process of making and using it” (35 U.S.C. §112). Ariad Pharmaceuticals, Inc. (“Ariad”) argued that the written description requirement (i.e., the first part of the sentence) under the law is satisfied as long as the patent specification enables one skilled in the art how to make and use the invention (i.e., the second part of the sentence). In other words, if you have the second part of the sentence, then you necessarily have the first part of the sentence. The Court disagreed and, relying on established precedent, noted that Congress inserted a comma after the phrase “shall contain a written description of the invention,” which separates the phrase “the manner and process of making and using it[.]” The Court noted that this dual requirement ensures that the inventor is in possession of the invention at the time of filing the patent application.
Ariad also argued that the particular subject matter at issue was disclosed in the original claims that were filed with the application, which satisfied the written description requirement. Although under U.S. Patent law claims are part of the original specification, the Court disagreed with Ariad and held that the invention was not sufficiently described in the specification, as a whole, and invalidated Ariad's patent.
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