The En Banc Federal Circuit’s Written Description Requirement: Time for the Supreme Court to Reverse Again?

Abstract

The Federal Circuit in Ariad v. Eli Lilly finally settled en banc the long-running dispute over whether the first paragraph of 35 U.S.C. § 112 contains a written description requirement separate from an enablement requirement. According to the Federal Circuit, such a requirement exists and exists to “convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” The problem with the Federal Circuit’s written description –“possession” doctrine is twofold. First, it characterizes the quid pro quo role of disclosure beyond its traditional role of placing knowledge in the "possession" of the public. Second, the Federal Circuit’s written description requirement advances no sensible doctrinal or policy rationale. The real “value” provided by the doctrine appears to be that:(1) it affords courts an undisciplined but convenient tool to strike down ad hoc claims the courts deem unacceptable; and (2) it shields courts from having to deal with difficult issues associated with assessing what is contributed to the art, especially in the context of fast-developing, unpredictable fields. This Article argues that the Federal Circuit’s written description requirement should be overturned and also explores the difficult issues that exist within doctrines of enablement as practiced today. The deficiencies facing enablement include: (1) assessing contribution to the art in terms of an unarticulated level of abstraction; and (2) requiring contribution to the art to be assessed strictly at the time of filing when the true scope of many inventions is better assessed in retrospect with the benefit of hindsight. This Article argues that the patent regime should be reformed by confronting these issues head-on rather than by relying on unscrupulous “safety valve” solutions such as the written description requirement.

Keywords: written description requirement, subject matter eligibility, enablement, patent quid pro quo, 35 u.s.c. 112, disclosure requirement, Ariad Pharms., Inc. v. Eli Lilly & Co., 595 F.3d 1329 (Fed. Cir. 2009)