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Ariad Decision Affirms a Separate Written Description Requirement - Detailed Case Summary


The Court of Appeals for the Federal Circuit ("CAFC") affirmed that a written description requirement separate from the enablement requirement exists under the first paragraph of 35 U.S.C § 112. For the full opinion, please click Here. The majority stated that if Congress had intended enablement to be the sole description requirement under the first paragraph of 35 U.S.C § 112, the statute would have been written differently. The majority, quoting Montclair v. Ramsdell, 107 U.S. 147, 152 (1883), noted that it was their duty to give effect, if possible, to every word and phrase of a statute. Thus, the written description requirement was held to be a separate requirement from enablement.

However, while upholding the written description requirement, the CAFC slightly modified the "possession" requirement. The majority stated that

The term 'possession,' however, has never been very enlightening. It implies that as long as one can produce records documenting a written description of a claimed invention, one can show possession. But the hallmark of written description is disclosure. Thus, “possession as shown in the disclosure” is a more complete formulation.

(Ariad Pharmaceuticals et al. v. Eli Lilly and Company, Slip Op. at 24). Accordingly, the written description standard appears to have been clarified from showing "possession" to "possession as shown in the disclosure".

To view the Ariad case summary, click Here.

To view previous commentary on the case, click Here.