Federal Circuit ("CAFC") Affirms Description is Separate from Enablement in Patent Specification

In an en banc, 9-2 decision, the CAFC, affirmed that Section 112, first Paragraph of 35 U.S.C. requires that a a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention.  Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

The court emphasized that if Congress had intended enablement to be the sole description requirement of section 112, first paragraph, the statute would have been written differently.  Furthermore, the rationale for a patent grant is a quid pro quo exchange between the inventor and the US Government.

The court found that a "vague functional description and an invitation for further research does not constitute a written description of a specific inhibitor."  Slip Op. at page 33.

This case illustrates the hazards of rushing, too soon to file a patent application in a rapidly developing technology.  If the application is filed too soon, before sufficient disclosure is available to support the claims, the validity of the claims could be challenged successfully.  On the other hand, the application should still be filed as soon as possible to avoid a priority of invention contest at the US Patent and Trademark Office.

This case arose in the context of the pharmaceutical technologies where some applications are filed before specific examples are available to support species (dependant) claims.  The impact of this case is not limited to pharmaceuticals however.  Many Internet, business method patents were filed with specifications that lacked in depth details concerning the claimed subject matter or some of the claims.  The validity of many of the business method patents claims may now be at risk.