Patents and the Written Description Requirement

Meeting Section 112 Disclosure Obligations After Ariad v. Lilly

Federal Circuit clarifies dual requirements for describing inventions

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, June 10, 2010

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Program Materials

This CLE webinar will provide guidance to patentees, patent challengers and counsel for dealing with the U.S. Patent Law Section 112's written description requirement. The panel will also discuss the implications of the Federal Circuit's recent opinion in Ariad v. Eli Lilly for compliance and patent challenges.

Description

Patent applicants must provide a written description of the invention in the patent application process. The requirement mandates that applicants provide greater detail about what an invention does, which may effectively reduce the scope of patent protection.

In March 2010, the Federal Circuit issued its long-awaited en banc opinion in Ariad Pharm. v. Eli Lilly, confirming that 35 U.S.C. Sec. 112, para. 1 contains a written description requirement that must be satisfied by a patent applicant separately from the enablement requirement.

The ruling clarified the written description requirement’s purpose and scope as requiring patentees to make meaningful disclosure of the invention. It may also give defendants firepower when parties seek to assert patents where broad claims are not supported by sufficient disclosures.

Listen as our authoritative panel of IP attorneys examines the written description requirement and how it has been applied. The panel will discuss implications of the Federal Circuit’s recent decision in Ariad v. Lilly and offer best practices for meeting the written description requirement and withstanding invalidity challenges.

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Outline

  1. Written description requirement
    1. Purpose and scope
    2. What is required by Section 112
    3. Application of the requirement
  2. Ariad v. Lilly
    1. Federal Circuit’s ruling
    2. Dissents by Judges Rader and Linn
    3. Implications of the decision
      1. on patent prosecution
      2. for predictable arts
      3. for non-predictable arts
      4. for the written description
      5. on patent litigation
  3. Best practices to meet the written description requirement

Benefits

The panel will review these and other key questions:

  • What are the implications of Ariad for the predictable and non-predictable arts?
  • How will Ariad impact patent prosecution?
  • What steps can patentees and counsel take to meet the written description requirement and withstand invalidity challenges based on the written description?

Faculty

Peter G. Pappas
Peter G. Pappas
Partner
Sutherland Asbill & Brennan

He concentrates primarily in chemical patent prosecution and handles mechanical patent prosecution, federal trademark...  |  Read More

Annemarie Hassett
Annemarie Hassett
Partner
Goodwin Procter

She is a member of the firm’s patent litigation practice and focuses her practice on intellectual property...  |  Read More

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