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...