Chapter §6.03 Policy Rationale

• Jurisdiction: United States

§6.03 Policy Rationale

The policy rationale behind the written description of the invention requirement has never been straightforward, which undoubtedly contributes to the courts' difficulty applying the requirement. At a minimum, it is clear that the written description of the invention requirement focuses less on the public than on the patent applicant. The policy goal is conceptually different from that of the enablement requirement, which is concerned with putting the public in possession of the claimed invention so that it can be made and used without undue experimentation.¹⁶ In contrast with enablement, the written description of the invention requirement mandates that the inventor must have been in possession of the claimed invention as of a particular date, that is, the filing date of her application (which is treated by the USPTO, when operating under pre-AIA procedures, as the presumptive invention date of the subject matter claimed therein).¹⁷

Thus, the perspective for assessing compliance with the written description of the invention disclosure requirement is different from that of the enablement disclosure requirement: The written description inquiry asks whether the inventor was in possession at the time she filed her application of the invention that she has claimed thereafter, whereas the enablement inquiry asks whether the patent application would have put the hypothetical person of ordinary skill in the art in possession of that invention at the time the application was filed.

As applied by the Federal Circuit, the written description of the invention requirement appears intended to promote a policy of cabining assertions of undue claim scope.¹⁸ The court wields the requirement as a judicial tool to police inventors who claim more than they have actually invented.¹⁹ In some cases, the Federal Circuit uses written description to invalidate patents when the court concludes that the inventive process was not completed at the time of filing the patent application.²⁰ In the court's view, "requiring a written description of the invention limits patent protection to those who actually perform the difficult work of 'invention'—that is, conceive of the complete and final invention with all its claimed limitations—and disclose the fruits of that effort to the public."²¹

By ensuring that the claimed subject matter was in fact within an inventor's original contribution, the written description of the invention requirement guards against unfair "overreaching."²² The Federal Circuit identifies the requirement's purpose as " 'ensur[ing] that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' "²³

A policy of promoting "inventions with practical use," as opposed to results of "basic research" including "scientific principles," also emanates from the court's written description jurisprudence.²⁴ In several high profile cases the Federal Circuit has singled out universities as offenders of the written description of the invention requirement and invalidated university-owned patents.²⁵ The court does not view the patent system's intent as protecting basic research of the sort typically engaged in by universities.²⁶ The en banc Federal Circuit observes that "[p]atents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others."²⁷

The Federal Circuit's estimation of the relative importance of the written description requirement has expanded over time. The high-water mark probably occurred in 2002, when the court in Enzo Biochem., Inc. v. Gen-Probe, Inc. decreed that written description is...