Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

From the American Intellectual Property Law Association’s website:

“Section 112, first paragraph of the Patent Act requires that a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention itself, the en banc Federal Circuit held March 22, 2010, in a 9-2 decision.”

“The Court rejected the argument that the required written description of the invention is only for purposes of identifying what is to be enabled, concluding that the statutory phrase “to enable” pertains only to the required description of making and using the invention. If Congress meant to require only a description of enablement, the statute would have been written differently, Judge Lourie pointed out. He added that the Patent Act has always required a description of the invention as a basic element of the quid pro quo bargain for exclusive rights.”

I’ve been writing patent applications to include a written description of the invention itself since I started writing patents. It’s just common sense: a patent, which is an exercise in disclosure, requires that the inventor disclose not only what the invention is but also the best mode of making and using the invention. How do you do that without providing a written description of the invention?

Read the slip opinion here.