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Federal Circuit Holds in Ariad v. Eli Lilly that 35 U.S.C. § 112, paragraph 1, Contains a Written Description Requirement AND a (separate) Enablement Requirement

By Andis Kaulins

For the text of the decision in this case, see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc) (.pdf).

As nicely summarized by Paul M. Rivard of Banner & Witcoff, Ltd at LEXOLOGY in Federal Circuit reaffirms 35 U.S.C. § 112, first paragraph contains written description requirement separate from enablement requirement:

"On March 22, 2010, the U.S. Court of Appeals for the Federal Circuit issued its en banc decision in Ariad v. Eli Lilly, reaffirming that 35 U.S.C. § 112, ¶1 contains a written description requirement separate from an enablement requirement. The court ruled that claims to a method of treating diseases by regulating a protein in human cells were invalid for lack of written description."

The case is analyzed in detail at Patent Docs by Kevin Noonan in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc) who introduces his posting with the statement that:

"It's settled, then -- unless the Supreme Court decides to weigh in, there is a separate written description requirement in 35 U.S.C. § 112, first paragraph."

As Noonan writes:

"The majority also rejected Ariad's argument that the Court applied the written description requirement disproportionately to basic research and inventions by academics and universities. This result is not inconsistent with sound policy that "basic" research may not lead to patentable inventions, characterizing the difference between "academic theories, no matter how groundbreaking," which are not patentable with inventions having a practical use, citing Brenner v. Manson that "[a] patent is not a hunting license. It is not a reward for the search, but compensation for a successful conclusion." While this situation may decrease incentives for university research, the Court is mindful of disincentives on "downstream research"; the goal, according to the Court, is to strike the right balance, which the majority believes it does: "giving the incentive to actual invention and not 'attempt[s] to preempt the future before it has arrived,'" citing Fiers."

Full post as published by LawPundit on March 26, 2010 (boomark / email).