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Wednesday May 05, 2010

Written Description--Little Used Perhaps, But Extremely Useful to Ensure Claims are Appropriately Scoped

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

 

The written description requirement remains alive and well!  On March 22, 2010, the Federal Circuit issued an en banc decision in Ariad Pharmaceuticals, Inc v. Eli Lilly, upholding the written description doctrine.  By a substantial majority vote, the Court explained that the written description requirement is called for in the language of 35 U.S.C. § 112, first paragraph.  The majority also explained that the written description requirement applies to both original and amended claims.  Finally, the majority explained that the test for written description is “possession as shown in the disclosure” and embraced past ways for judging the adequacy of the disclosure, including whether the specification discloses a representative number of species, sufficient structure, and/or a sufficient correlation of function to structure. These same principles are discussed in the USPTO's own 2001 Written Description Guidelines and exemplified in the 2008 Revised Written Description Training Materials. 

The Ariad decision is important for the Office because written description is a critical tool for ensuring that an applicant does not claim more than she is entitled to claim.  The Office recently conducted a survey of 6,865 final rejections issued over a 4.5 year period between 2005 and 2010.  A written description rejection was made in about 9.7 percent of all applications during this time period.  This data shows that the written description doctrine is essential to the Office’s ability to perform its basic examination function. 

Even if some would consider 9.7 percent to be little used, "little used" should not be conflated with “useless.”  Far from it, the written description requirement is an essential “backstop” against overclaiming.  And the written description doctrine is particularly useful in examining claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result.  I call these “result-orientated” or "results obtained" claims, and strongly support our examiners using the written description requirement to prevent issuance of such vastly overbroad recitations. Unless an applicant has devised every solution to a problem, the applicant is not entitled to patent every solution. 

The majority in Ariad noted that functional claims have the potential to pose especially difficult problems, particularly when functional language is employed in a genus claim:  “For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus.”

Thus, when confronted with functional claims, as with results obtained claims, I encourage examiners to carefully consider whether such claims -- amended or original -- are adequately supported by the specification. And the essential tool in this inquiry -- the written description requirement. Little used perhaps, but extremely useful to protect the integrity of the patent system, and the public, against the issuance of overbroad patents.

What thoughts do you have about the use of the written description requirement?  

Comments:

The written description, to my mind, is about the inventor knowing what they've invented (older cases refer to having possession), but I think of it as identifying what unites the invention. The problem is, to my mind, that the genus species situation discussed above doesn't reach the distinction. There are two ways to cover ground in a genus, one is providing examples, the other is saying what your examples have in common. Both are examples of enablement. The distinction comes up most clearly, to me, with negative claim limitations. Say you invent a chair (four legs, a rectangular seat, a rectangular back, and two armrests). Later, I come up with a stool (three legs and a round seat). If I want to make an amendment after I originally filed, I can claim having exactly three legs, or having a round seat. I cannot claim having less than four legs because that concept didn't occur to me when I filed, nor can I claim something like not having a back.

Posted by Anon on May 05, 2010 at 05:25 PM EDT #

I am an inventor and I think that the written description is essential. The written description allows the inventor to clearly explain how his or her invention actually works. The description presents the physical theory of operation and the sequence of actions used in the operation of the invention. The written description also provides the alternative versions of the invention. We need to remember the explanatory power of written text and how it is more effective than just claims and figures alone.

Posted by Nickolaus Leggett on May 06, 2010 at 10:09 AM EDT #

I filed a design patent application and left off the functional requirements, a written description of my invention. The application was rejected. The patent examiner stated in the rejection of the claim "The specification shall contain a written description of the invention....". I don't have a problem with that requirement.

Posted by danne on May 09, 2010 at 10:54 AM EDT #

I had thought that the main use of a WD objection was to stop new matter getting into the app during prosecution. I see that this is the issue that bothers the first contributor to this thread. Yet the originating text from Director Kappos makes no mention of that function. But perhaps these two uses can be unified. Prosecution amendments are often what in Europe would be labelled as "undisclosed intermediate limitations" on the scope of the claim originally filed. That fits nicely with the debate here, and on the Dennis Crouch blog, about genus claims vs species claims.

Posted by MaxDrei on May 11, 2010 at 10:24 AM EDT #

I commend the Federal Circuit for coming with the decision that written descriptions shall be included. It is just fitting that inventors who are seeking patent for their wares must come up with technical description. The written description will allow the inventor to specify the uniqueness of his/her invention. Moreover, USPTO evaluators will not have difficulty in knowing what the invention is all about. Great decision. Cheers! http://www.foodbin-herbroom.com/

Posted by Joseph Reeves on June 22, 2010 at 06:56 AM EDT #

It is just fitting that inventors who are seeking patent for their wares must come up with technical description. The written description will allow the inventor to specify the uniqueness of his/her invention. Moreover, USPTO evaluators will not have difficulty in knowing what the invention is all about. Great decision. Cheers! http://www.bestchisale.com/

Posted by chitools on July 30, 2010 at 04:21 AM EDT #

The written description allows the inventor to clearly explain how his or her invention actually works.<a href="http://tocoy.net">Tungsten Wedding band</a>I don't have a problem with that requirement.

Posted by tungsten wedding band on July 30, 2010 at 11:14 PM EDT #

I just don't see how this could be achieved without a written description. Even our children in school have to write out what they did over their summer holidays once they get back to school. Surely inventors can summarize and clearly describe their work in a detailed written description. Bravo! http://www.engagementexperts.com

Posted by Engagement Expert on October 01, 2010 at 01:31 PM EDT #

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