Centocor v. Abbott Labs: When Is A Biotech Invention Complete And Ready For Filing?

The following post was written by Gerald M. Murphy, Partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

On February 23, 2011, the Court of Appeals for the Federal Circuit in Centocor v. Abbott Labs set aside a $1.7 billion jury verdict in favor of the patentee (Centocor) and held the patent claims at issue were invalid for lack of written description.  This decision reflects a trend of the Federal Circuit in recent years to invalidate patents for lack of written description and offers little guidance as to what is necessary to actually comply with the written description requirements. This case dealt with a somewhat “unpredictable” biotech invention, where there was not an actual reduction to practice of the claimed invention.  In the pharmaceutical fields, it is very common to have method claims directed to treatment of humans and it is very unusual to have had an actual reduction to practice of the method prior to filing the patent application.  However, in this case, the claims were not directed to a method of use, but rather, a new product (antibody).  Based on this and other cases, it appears that the trend of finding lack of written description may become more common in so-called “predictable technologies.” (more…)