Chapter §6.08 Conclusion

• Jurisdiction: United States

§6.08 Conclusion

The written description of the invention requirement as expansively applied by the Federal Circuit since its 1997 decision in Lilly is a vague and ill-defined doctrine in search of limiting principles. The court wields the doctrine to assuage concerns about patent applicants overreaching, claiming more than they have actually invented, and filing patent applications too soon—before they have finished inventing.³³⁹

If the Federal Circuit continues to apply written description in its current, expansive form as a general disclosure requirement separate from enablement, the court should make more explicit the linkage between the "possession" test for written description compliance and the standards for having made an invention.³⁴⁰ These standards turn on long-established U.S. patent law concepts including conception, diligence, reduction to practice, and evidentiary corroboration.³⁴¹

Ironically, the America Invents Act of 2011 (AIA) makes the act and timing of invention far less important by establishing a unique first-to-file system and abrogating the United States' traditional first-to-invent priority framework.³⁴² Under a first-to-file system, the pressure to file sooner rather than later will only exacerbate the filing of patent applications on inventions that have not yet been completed, plowing fertile ground for written description problems. In the post-AIA world, assertions of written description noncompliance may rival obviousness³⁴³ as the invalidity defense of first choice among accused infringers.

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Notes:

^[339] In Ariad, for example, the en banc court complained that the asserted genus claims, "as in Eli Lilly . . . , cover any compound later actually invented and determined to fall within the claim's functional boundaries—leaving it to the pharmaceutical industry to complete an unfinished invention." Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1353 (Fed. Cir. 2010) (en banc). See also Billups-Rothenberg, Inc. v. Assoc. Regional and Univ. Pathologies, Inc. and Bio-Rad Labs., Inc., 642 F.3d 1031, 1037 (Fed. Cir. 2011) (invalidating patent claiming methods of detecting certain genetic mutations, stating that "[t]he written description requirement exists to ensure that inventors do not 'attempt to preempt the future before it has arrived' ") (quoting Fiers v. Revel, 984 F.2d 1164, 1171 (Fed. Cir. 1993)).

^[340] In Ariad, the en banc court effectively tied written description compliance with proving conception (as of...