Chapter §6.02 Priority Policing Mechanism

• Jurisdiction: United States

§6.02 Priority Policing Mechanism

The written description of the invention requirement is best understood as a timing or "priority policing" mechanism. As detailed in Chapter 7 ("Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]") infra, when operating in accordance with pre-America Invents Act of 2011 (AIA) procedures, the U.S. Patent and Trademark Office (USPTO) takes the filing date of a patent application as the presumptive or prima facie date of invention ("invention date") for the subject matter of the originally filed claims therein.¹⁰ It is quite common and perfectly permissible for a patent applicant to submit amendments to her patent application after it has been filed, for the purpose of modifying the originally filed claims or adding one or more new claims.¹¹ When such amendments are made, the issue becomes whether the amended or new claims are also entitled to the same prima facie invention date as the originally filed claims, or merely entitled to the later date on which the new claims were actually presented.¹² The answer may determine whether the amended or new claims are patentable or instead rendered anticipated or obvious in view of intervening prior art. This is the domain of the written description of the invention requirement.

Satisfaction of the written description of the invention requirement ensures that such subject matter, claimed after an application's filing date, was sufficiently disclosed in the application at the time of its original filing so that the prima facie date of invention for the later-claimed subject matter can fairly be held to be the filing date of the application.¹³ Without written description of the invention scrutiny, a later-presented or amended claim not truly entitled to the earlier filing date of the application would be improperly examined against a smaller universe of prior art than is legally available, and the applicant would unfairly enjoy a windfall vis-à-vis the prior art.

Another way of understanding the written description of the invention requirement is that it functions to ensure that all claims amended or added after the filing date of the application find adequate "support" in the originally filed application. Section 112(a) requires that claim language be supported in the specification.¹⁴ This can be viewed as a requirement that claim language find "antecedent basis" in the specification. In other words, the language added to the claims by amendment or introduced in...