In the News: Newholm Comments on “Written Description”

Boyle Fredrickson’s Timothy Newholm, one of the firm’s founding shareholders and a former patent examiner, recently commented on Ariad Pharmaceuticals Inc v. Eli Lilly and Co. for the Wisconsin Law Journal. According to those familiar with the case, the court’s decision is likely to determine whether or not patents must include a “written description” of the invention.

The United States Patent and Trademark Office (USPTO) and courts have repeatedly held that the written description requirement is necessary to ensure that the inventing party actually considered what it is now claiming to be the invention to have been part of the invention when the patent application was filed. The questions most often posed in these cases is whether the patent application, as filed, demonstrates “possession” by the inventor of what is covered by the current claims.

However, some feel that the USPTO and the courts have been inconsistent in assessing patents and patent applications for compliance with the written description requirement. The Federal Circuit is now attempting to reduce the uncertainty generated by this perceived inconsistency by deciding if such a requirement should exist at all and, if so, what test should be used to determine whether or not it is met.

Weighing in on the philosophy behind written description, Newholm suggests that companies with more available resources for product development and production often tend to favor strict enforcement of the written description requirement. This prevents smaller competitors and “patent trolls” who do not manufacture any products from overreaching by maintaining a broader spectrum for their potentially underdeveloped claims in response to the introduction of another company’s product to the market.

Critics of strict enforcement argue that written description hinders innovation at the lesser funded university and small to mid-size business level by unnecessarily limiting the scope of patent protection to a small spectrum that covers little more than the actual examples or “embodiments” disclosed in the patent.

“The concern is that companies can see what’s coming out on the market and couch language on their application to cover what other companies are doing, despite the fact that it is not clear at the time the inventor has possession of what was claimed,” said Newholm. “It’s similar to cases pertaining to the ‘enablement requirement’ which states that patent applicants must sufficiently describe both how to make and how to use a given invention.”

Although a decision is expected later this year, Newholm foresees that the written description requirement will remain in effect in one form or another. “This issue is very well entrenched in case law,” he continued, “and from a public policy standpoint, there is a lot to be said for some level of notice. Then, at some point, a test will need to be applied to determine whether or not Ariad’s patent claim meets the requirement.”

For more detail on the history of Ariad Pharmaceuticals v. Eli Lilly, click HERE to read the Wisconsin Law Journal article. For further discussion on the written description and enablement requirements, be sure to contact your Boyle Fredrickson attorney.