ARIAD Pharmaceuticals, Inc. V. Eli Lilly & Co.: Brief of Amici Curiae Mark D. Janis and Timothy R. Holbrook in Support of Neither Party
34 Pages Posted: 4 Nov 2009
Date Written: October 14, 2009
Professors Mark D. Janis (Indiana University School of Law-Bloomington) and Timothy R. Holbrook (Emory University School of Law) argue that there is no written description requirement in 35 U.S.C. § 112, ¶ 1 separate from requiring the patent specification contain a disclosure sufficient to enable one of skill in the art to make and use the claimed invention. Neither the statutory language itself does nor the policies articulated by the Federal Circuit support a separate written description requirement. Enablement doctrine alone is sufficient both to correlate claim scope with the inventor's contribution and to determine whether the disclosure provides adequate support for later-added claims. Janis and Holbrook further urge the Federal Circuit not to use the § 132 "new matter" prohibition to craft a "back-door" written description requirement.
Keywords: patent, disclosure, enablement, written description, ariad, federal circuit
JEL Classification: O34
Suggested Citation: Suggested Citation