The Federal Circuit’s en banc decision in Ariad Pharms., Inc. v. Eli Lilly & Co. diverged from its previous interpretation of the “written description” requirement under 35 U.S.C. § 112. The new requirement mandates inventors to prove that they “actually invented the invention claimed.” The court observed that this new requirement is particularly onerous for biotechnological and chemical genus claims where few species have been reduced to practice. The new requirement asks inventors to disclose detailed descriptions for more than one species in the specification to support their genus claims. The heightened standard has massively affected front-end technology research. However, the court never made clear why a heightened standard for genus claims was proposed. Were the claims too broad? Or was the specification too unclear about what the invention was? Or was the timing too early? This article explores the reasoning behind the court’s decision in Ariad and proposes an interpretation of Ariad that resolves this ambiguity and achieves the same objectives as the Ariad court.
Pu-Cheng (Leo) Huang,
A Decade After Ariad: What is the Written Description Standard for Emerging Bio-Pharma Patents?,
17 Wash. J. L. Tech. & Arts
Available at: https://digitalcommons.law.uw.edu/wjlta/vol17/iss1/4