Federal Circuit’s Ariad case offers cautionary words for the use of broad terms in patent claim

The Federal Circuit’s recent opinion in Ariad Pharmaceuticals v. Eli Lilly & Co. held that the Patent Act’s written description and enablement requirements are separate and distinct requirements.   In particular, the court stated that:

[A] separate requirement to describe one’s invention is basic to patent law.  Every patent must describe an invention.  It is part of the quid pro quo of a patent; one describes an invention, and, if the law’s other requiements are met, one obtains a patent.  The specification must then, of course, describe how to make and use the invention (i.e., enable it), but that is a different task.

The court also issued cautionary words for inventors who try to use functional language or broad terms to claim a large technology category while providing little description of the technology itself:

[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries. . . . [A] sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus.

The court also recognized that its decision may have an effect on universities and others who try to cover a general principle in a  patent application before having actually completed the process of invention:

Much university research relates to basic research, including research into scientific principles and mechanisms of action. . . and universities may not have the resources or incluination to work out the practical implications of all such research. . . . That is no failure of the law’s interpretation, but its intention.  Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others.  “[A] patent is not a hunting license.  It is not a reward for the search, but compensation for its successful conclusion.” . . . Requiring a written description of the invention limits patent protection to those who actually perform the difficult work of  “invention” – that is, conceive of the complete and final invention with all its claimed limitations – and disclose the fruits of that effort to the public.

Although not mentioned in the opinion, inventors should remember that the written description requirement applies not only to utility patent applications but also to provisional patent applications.  Thus, before filing a patent application an inventor should consider whether he or she has enough information available to describe the invention — or whether the description will merely be describe the planned search for an invention.