Skating the Thin Ice of the Written Description Requirement

In recent years, cases such as <i>Enzo Biochem, Inc. v. Gen-Probe, Inc.</i>, 323 F.3d 956 (Fed. Cir. 2002) ('<i>Enzo</i>') and <i>University of Rochester v. G.D. Searle and Co., Inc.</i>, 375 F.3d 1303 (Fed. Cir. 2004) ('<i>Rochester</i>') have fueled an ongoing debate over whether the first paragraph of 35 U.S.C. &sect;112 includes a written description requirement, separate and distinct from enablement and best mode. According to Judge Randall Ray Rader, <i>Univ. of Cal. v. Eli Lilly &amp; Co.</i>, 119 F.3d 1559 (Fed. Cir. 1997) ('<i>Eli Lilly</i>') brought the written description requirement squarely to light. <i>Rochester</i>, 375 F.3d at 1307 (Circuit Judge Rader dissenting). This 'new' requirement creates 'enormous confusion,' not only for the courts, but also for patent drafters. <i>Id.</i> Because the requirement is in flux, patent practitioners should avoid overlooking the requirement or taking it too lightly.

14 minute readNovember 30, 2006 at 01:56 PM
By
Jack L. Chen
Skating the Thin Ice of the Written Description Requirement

In recent years, cases such as Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956 (Fed. Cir. 2002) ('Enzo') and

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