Patent Law Practice Center

Written Description Requirement: Ariad v. Eli Lilly

I recently had the opportunity to listen in on PLI’s one hour briefing titled Ariad v. Eli Lilly and the Separate Written Description Requirement. This briefing was conducted by Vera M. Elson, a partner in the international law firm McDermott Will & Emery and Burt Magen, a partner in the law firm Vierra Magen Marcus & DeNiro LLP.  Ms. Elson focuses her practice on intellectual property trial and counseling for her firm’s technology clients.  Mr. Magen focuses his practice on intellectual property counseling and patent prosecution for his firm’s technology clients.

Elson began by explaining that pre-Ariad § 112, ¶1 focused on two underlying purposes behind a separate written description.  The first was Possession:  “The purpose of the written description requirement is broader than to merely explain how to make and use; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F. 2d 1555 (Fed. Cir. 1991).  In other words, what you claimed you actually invented.  The second was Meaningful Disclosure: “A patent specification must convey the detailed identity of an invention, thereby serving a teaching function as a quid pro quo in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. Univ. of Rochester v. G.D. Searle & Co., Inc. 358 F. 3d 916, 921 (Fed. Cir. 2004).  That is to say, you actually invented what you say you invented and you taught it to us.  But, everything came to a head with the Ariad case. (more…)