The Inventor's Contribution

Abstract:     
The patent system, as conceptualized in American legal theory, is an exchange. The system begins by offering incentives for individuals to develop scientific advancements and to reveal those advancements to society. In return for the sphere of rights conferred with the patent, society requires inventors to teach others how to practice their invention. This disclosure is frequently described as the quid pro quo, the inventor's contribution in exchange for the powerful patent grant. In the last decade, courts have become embroiled in a dispute over whether the disclosure doctrines contain a separate written description requirement. The intensity of the debate reflects the gravity of the issues at stake. Disclosure has become the vehicle for determining the reach of a patent, particularly in the field of biotechnology. As this role has developed, courts have drawn heated criticism for allowing disclosure to venture beyond the technical realm and into broader questions of sufficiency of the invention. This piece argues that such critics are aiming their fire at the wrong threat. Chaos in the modern disclosure doctrines does not arise because courts are improperly conceptualizing the nature of the disclosure inquiry. On the contrary, the issues addressed in the separate written description doctrine properly reside in the disclosure inquiry and reflect legitimate concerns. The problem, however, lies in the doctrinal approach chosen. The exquisitely complex issues can be resolved by harmonizing disclosure with other areas of patent law and by properly applying traditional disclosure doctrines. A separate written description doctrine is simply unnecessary.

Keywords: Patent, biotech, biotechnology, written description, Lilly, enablement

Accepted Paper Series