Federal Circuit Will Review Patent Description Requirement
August 26, 2009
On August 21, the U.S. Court of Appeals for the Federal Circuit decided to re-hear the case of Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. The full Court will take up the questions of whether the patent statute contains a written description requirement distinct from the enablement requirement, and, if so, what is the scope and purpose of that requirement. In decisions over the past decade or so, the Court has interpreted the written description requirement more expansively, with results that can have a significant limiting effect on patent scope. In the original Ariad decision the Court held invalid, for failing to meet the written description requirement, several broad claims covering the use of drugs that act through modulation of the transcriptional regulator NFκB. The decision is this case will have a profound influence on patent strategy and the scope of patent coverage, especially in biotechnology.
To read the Court’s order granting the request for re-hearing, see http://www.cafc.uscourts.gov/opinions/08-1248ebo.pdf.
Updated Information
On March 22, 2010, in an en banc decision, the U.S. Court of Appeals for the Federal Circuit reaffirmed the requirement that a patent contain a written description of the claimed invention. See Court Reaffirms Written Description Requirement For Patents for an overview of the Court's decision.
