Ariad v. Eli Lilly: Written Description Requirement

My recent study of BPAI written description requirement jurisprudence was prompted by reading the US Government Brief in the en banc case of Ariad v. Eli Lilly. In the brief, the government indicated its continued support for a separate written description requirement as a tool that the agency uses to eliminate claims during patent prosecution. In sometimes bold font, the government makes its position clear: that a separate written description requirement is "essential to the operation of the patent system;" serves an "indispensable role in the administration of the patent system;" is "fundamental to the operation of the patent system;" and is "necessary for USPTO to perform its examination function." According to the brief, these conclusions are grounded in the USPTO's "practical experience" in "appl[ying] the requirements of Section 112, ¶1 to more than 400,000 patent applications each year."

During oral arguments, the government attorney was pressed for specific evidence supporting its contention that the separate written description requirement serves a practical purpose. As in its brief, the government did not point to any evidence supporting the conclusory statements. The following colloquy at oral arguments between Chief Judge Michel and Mr. Freeman emphasize this point:

Chief Judge Michel: Why does the patent office care? How many applications that can’t be rejected on other statutory grounds will fail only if we [retain the current written description requirement]? . . . I’m asking about impact. . . .

Mr. Freeman on Behalf of the Government: I don’t know an absolute number, your honor, but I think that number must be high. . . .

Chief Judge Michel: I can’t remember ever seeing a patent office rejection that was based only on the failure of written description. I’m not saying there aren’t any, but the flow of cases that come through this court at three or four hundred a year, it is exceedingly rare that the patent office hangs its case on written description. I can’t remember a single case.

Mr. Freeman: Your honor, I don’t have a single case in mind . . . .

Chief Judge Michel: . . . It seems like the practical impact is miniscule, negligible.

Mr. Freeman: Your honor, with all respect, one cannot assume away four-hundred-thousand applications where the written description doctrine comes into play in a great many of them.

My study is essentially directed to the particular questions asked by Chief Judge Michel — How often does the separate written description requirement actually make a difference in patent prosecution? As the data reveals, Chief Judge Michel’s notional recollections from the bench are much more accurate than are the government contentions. I.e., "the practical impact is miniscule, negligible."

[Download the Study]

These results fit well with those of UMKC professor Christopher Holman that he reported in his 2007 article, Is Lilly Written Description a Paper Tiger?: A Comprehensive Assessment of the Impact of Eli Lilly and its Progeny in the Courts and PTO, 17 ALB. L.J. SCI. & TECH. 1, 62 (2007).

67 thoughts on “Ariad v. Eli Lilly: Written Description Requirement

  1. 67

    > [If he had said] “I can’t remember a particular one, but I’ve seen a lot of them and I assure you this is a major issue”, it would have been the difference between glibness and complete BS.

    Umm, that’s what he DID say, isn’t it? He mentioned something about 400,000 cases, after all.

    Noise: You ever read the works of one Lewis Carol? Just wondering. Alice might want to have a word with you about words.

  2. 64

    plurality – you may be correct, but “malcomy” sound more like “slimy”, and seems to have a better visual connotation. Plus, I can be my own lexiconographer, can I not?

  3. 63

    NAL, “There is nothiong wrong with conclusory statements – per se. Making them and not backing them up is rather malcolmy.”

    I’d think any good grammarian like you would realise that the proper word to have used was, “Malcolmish”.

  4. 61

    ChemBio guyWhat do you mean us kemosabe?

    I mean we who prosecute chem/bio applications, as opposed to sockpuppet hacks like you.

  5. 60

    “I know certain people find this hard to accept but a lot of us in chem/bio have been practicing this way for a decade, at least.”

    What do you mean us kemosabe? Now get back to mopping the floor. You missed a spot.

  6. 58

    I’m always surprised when an Examiner cites 112-one in a rejection, and calls it a “new matter” rejection without citing Section 132. What’s up with that?

  7. 56

    I feel a tinged honored that spammers pick my retributive statement about poor quality posting – the spammers must recognize what is likely to be read and listened to.

    David Boundy,

    I am interested in your adaptive response line of reasoning – can you go into more detail? I am not sure I buy into your conclusion of ensuing chaos – there still is a new matter control. Anything short of adding new matter is currently allowed, is it not (in other words – amendments must have some basis in the application as filed, else we are talking about the need for a CIP)?

  8. 52

    @6: I was just talking about why the PTO was there arguing. Courts are always trying (or should be) to make sure they are hearing from people that have an iron in the fire.

    @Malcom: Freeman and Michel were discussing the question. My point was that most people on this blog are using this excerpt of the transcript out of context. This section is not about the substance of the Written Description, it is about why the PTO is there at all.

  9. 51

    Znutar: So now I’m wasting client dollars copying the drawings into the response, circles and arrows to point out the features, numbered and described in the text,that are now in the claims.

    Best practices is to be as specific as possible in the first instance, so there can be no doubt about the written description suppport.

    I know certain people find this hard to accept but a lot of us in chem/bio have been practicing this way for a decade, at least.

  10. 50

    I recently amended a claim and added a few more, dutifly pointed out drawings and paragraphs that supported the additions, and got a series of 112 first paragraph rejections. So now I’m wasting client dollars copying the drawings into the response, circles and arrows to point out the features, numbered and described in the text,that are now in the claims. I’m not asking the examiner to accept changes in terminology from that used in the spec, or to infer structure not shown in the drawings. The examiner didn’t explain why the support I provided initially was inadequate, just put a few words in quotes. I call that groundless.

    Posted by: Znutar | Feb 20, 2010 at 12:18 PM

    Znutar I believe you already told me your supar secret identity so pass along the no. and I will endeavor to tell you what a hypothetical problem is in a hypothetical case.

  11. 49

    “These are the kind of silly statements you get when DOJ steps in for an argument that the PTO solicitor should have been making. … Ray Chen wouldn’t have made those comments. [You] might even think that Chief Judge Michel was tweaking Mr. Freeman for his ignorance of PTO practice.”

    Harry, this was my impression too. Is it just me, or is it a fact that, when the Government takes a position in arguing en banc Federal Circuit cases, or certiorari cases in the Supreme Court, the DOJ lawyers make arguments that seem to reflect FTC (competition) policy, rather than PTO (innovation)policy. They are not the same thing and are often at odds.

  12. 48

    Dennis, thanks as always for publishing your data.

    I take issue with your conclusion that “this study safely leads to the conclusion that the government’s conclusory statements regarding the doctrine’s critical importance for patent examination lack a factual basis.”

    Isn’t this analogous to the conclusion that because speeding tickets are only at issue in 4.3% of traffic court cases that speed limits are not critically important to traffic safety? The number of contested speeding tickets merely establishes a lower limit for the number of speeding tickets issued and says nothing about the number of tickets issued and uncontested. The number of contested speeding tickets says even less about the impact of speed limits on traffic safety.

  13. 47

    I recently amended a claim and added a few more, dutifly pointed out drawings and paragraphs that supported the additions, and got a series of 112 first paragraph rejections. So now I’m wasting client dollars copying the drawings into the response, circles and arrows to point out the features, numbered and described in the text,that are now in the claims. I’m not asking the examiner to accept changes in terminology from that used in the spec, or to infer structure not shown in the drawings. The examiner didn’t explain why the support I provided initially was inadequate, just put a few words in quotes. I call that groundless.

  14. 46

    The “question” was – “Why does the patent office care?”

    That question was answered: Mr. Freeman: Your honor, with all respect, one cannot assume away four-hundred-thousand applications where the written description doctrine comes into play in a great many of them.

  15. 45

    “(Bilski rejections seem to be slipping off the edge of the radar screen while 112 written description rejections are moving in.)”

    Ex Parte Miyazaki in da house!

    Oh and btw guys, as there any way to dissuade companies from playing movie trailers at the movies that say things like “our patented feature does x” in reference to a FEATURE (I don’t recall seeing FEATURE in 101) of an Iphone? Seriously? False advertising? Invalidation of the patent(s) so that the trailer is no longer valid and would be pulled?

  16. 44

    “THAT question, and the line of questions that followed, is right on point – if the patent office is not the correct party for this, toss the case and wait for the real party with something at stake to come along and argue it.”

    Um, Steve, I believe that Ariad is v Lilly…

  17. 43

    stepback,

    just borrow a couple from Mr. Freeman – that way you can get all “malcomy” – “During oral arguments, the government attorney was pressed for specific evidence supporting its contention that the separate written description requirement serves a practical purpose. As in its brief, the government did not point to any evidence supporting the conclusory statements.”

  18. 42

    stepback many a client dollar are being wasted lately for time billed to defend against groundless written description rejections

    Gosh, doesn’t this complaint sound familiar? First it was the groundless obviousness arguments, then the groundless 101 arguments, and now the groundless 112 arguments.

    Can we see some of these “groundless” written description rejections that the PTO is cranking out? I mean, if this is a real trend you should be able to find them fairly easily.

  19. 41

    I would think that any recent increase in USPTO 112 objections would have more to do with the recent CAFC decisions holding that broad claims to “inventions” requiring new software enablement require more specification algorithm or other description details for enablement than just some spec.-arm-waiving that is in effect just “do it in a computer with some software” and empty “black boxes” drawings.

    Yup.

    This is why all the hand-wringing over 101 is pointless. Those arm-waving “concept on a disc” claims are going down one way or another.

  20. 40

    I would think that any recent increase in USPTO 112 objections would have more to do with the recent CAFC decisions holding that broad claims to “inventions” requiring new software enablement require more specification algorithm or other description details for enablement than just some spec.-arm-waiving that is in effect just “do it in a computer with some software” and empty “black boxes” drawings.

  21. 39

    Step would that be classical WD or the Lilly WD variant? In other words, is it your originally filed claims that are attracting these objections, or just those amended during prosecution, with the amendment bringing in new matter.

    Do you see any convergence, between the USPTO Academy and the EPO Academy? I do.

  22. 38

    Hold on a second there Dennis. Isn’t the en banc rehearing just recently granted to Gilbert Hyatt hinged entirely on a written description rejection?

    And I don’t know about you, but at this end, many a client dollar are being wasted lately for time billed to defend against groundless written description rejections, which rejections appear to be the fad de jour coming out of the USPTO Patent Academy training program. Are other practitioners out there seeing the same new trend? (Bilski rejections seem to be slipping off the edge of the radar screen while 112 written description rejections are moving in.)

  23. 37

    The “question” was not whether the written description requirement has any impact, whether it is useful, about anything substantive regarding the written description, or about almost anything else discussed in this thread (a couple of comments excepted).

    The “question” was – “Why does the patent office care?”

    THAT question, and the line of questions that followed, is right on point – if the patent office is not the correct party for this, toss the case and wait for the real party with something at stake to come along and argue it.

  24. 36

    Actually if you were there the day of the oral arguments RWA you would already know that Michel seemed quite off his game that day. I distinctly remember thinking to myself during the arguments “what is wrong with Michel today?”. Indeed it seemed like maybe he had a hang over, family issues the day before, or something, he didn’t seem to be able to concentrate on what was going on very well. And I mean that with the utmost respect, I like the guy, and he does good work, but that was an off day for sure.

  25. 33

    It left a judge’s question unanswered

    Well, I think Judge Michel’s question (and the underlying reasoning) is pretty weak. It was a rather silly and irrelevant line of questioning and I think the lawyer was doing his best to respond respectfully and keep Judge Michel focused on the relevant issues.

    Michel could have asked: “Name one specific case where a written description rejection was raised during prosecution and the applicant amended his claim in response to the rejection. Just one!!!!” and the attorney probably would have been just as baffled.

  26. 32

    The fact that normal ex parte examiners do not normally sua sponte raise uncommon statutory issues is not that relevant to whether or not an experienced patent interference opponent or other patent litigator will do so.
    And I also agree with the above that most 112 issues should and do get resolved before appeal, with claim amendments or CIP’s [even though CIP’s are often NOT an valid cure], or they become moot in view of 102 and 103 claim rejections. [And now 101 -Bilski?]

    Max makes a good point that a description of the invention issue [no equivalently broad or narrow language in the spec to support current claims] can be a lot worse in the EPO and Japanese equivalents.

  27. 31

    which is true.

    I’m not saying it’s not true. I’m saying that if the PTO takes the position that it’s true in pleadings before the Federal Circuit, the position should be supported by some sort of facts, and the lawyer doing the pleading should be prepared to justify the assertion that it’s true. I mention the pleading only to say that the lawyer should have known before the oral arguments that the issue might come up.

    The goal here isn’t to make true statements, it’s to make persuasive statements. This particular statement seems like it didn’t help the PTO’s case. It left a judge’s question unanswered, and the question was “what does this rule do, anyway?”

  28. 30

    IANAE even the brief says the PTO applies the rule a lot to the applications that are filed.

    which is true.

  29. 29

    “he’s not entitled to his uninformed opinion. ”

    Wait a minute here. He’s not entitled to his uninformed decision about something which there can practically be no definitive answer? Give me a break dear sir.

    Are you entitled to your uninformed opinion? Am I? Are the judges?

    “In any event, he shouldn’t be taking the position that the number is high if, as you say, he was defending the rule as mostly a preventative measure.”

    Except that it does happen to be in reality.

    Bottom line is, he did fine. Better than fine. Golisten to the oral arguments and you will see.

  30. 28

    “and I believe we can trust him to tell us the truth.”

    and there was a logic game just like this on the LSAT.

  31. 27

    The evidence for what he thinks exists only in his mind and I believe we can trust him to tell us the truth.

    If he says the number is high, he’s not entitled to his uninformed opinion. He’d better bring some numbers. Greater than zero, preferably.

    In any event, he shouldn’t be taking the position that the number is high if, as you say, he was defending the rule as mostly a preventative measure.

    I’m really sorry I couldn’t make it to the hearing that day, but even the brief says the PTO applies the rule a lot to the applications that are filed. It must have left at least some (incorrect) impression that this is a really important rule that wouldn’t change a thing if we got rid of it.

  32. 26

    I voice agreement with the post of inside/outside atty at Feb 19, 2010 at 08:25 AM, and the post of Malcolm Mooney at Feb 19, 2010 at 12:05 PM.

    It’s wrong to conclude that the practical impact of the written description requirement is negligible based on data from appeals (BPAI appeals or CAFC appeals). The “practical impact” is seen primarily in ex parte prosecution before the Exmainer. In my experience, such issues are resolved with the Examiner, and are rarely appealed.

  33. 25

    “I don’t know an absolute number, your honor, but I think that number must be high””

    The evidence for what he thinks exists only in his mind and I believe we can trust him to tell us the truth.

    “It probably is, but if that’s really the principle this lawyer was defending, he should have had that answer ready to go.”

    I’m sure it was, if you read the whole transcript, listen to the recording, or if you’d have bothered to be there then I believe you’d know this. He responded in the fashion he did because they asked for a single case.

    There was another amusing point in this oral arguments where one of the lawyers was asked “why do you care?” and the lawyer responds “because I was asked”.

    “That’s why I think he went up there to defend a rule that examiners use every day to weed out thousands of bad applications”

    You’re probably wrong, he did a great job of making his case, which was for the entirety of the consequences of such a change, and the other party paled in comparison. Especially in person.

    Trust me, this pleading will make good law. And I’m going to lol all the way home.

  34. 24

    “BTW In general, do you wear such belts in the USA? Not in yellow cabs, I suppose.”

    Are you kidding me? Especially in yellow cabs – some of those drivers are nuts!

  35. 23

    Which conclusory statement?

    The earlier one: “I don’t know an absolute number, your honor, but I think that number must be high”

    The real significance of the law is that which is like you analogized to the seatbelt laws.

    It probably is, but if that’s really the principle this lawyer was defending, he should have had that answer ready to go. As soon as the guy in the robe asks “how many applications will fail on this ground alone”, his immediate response should be “that’s the wrong question, here’s why”.

    That’s why I think he went up there to defend a rule that examiners use every day to weed out thousands of bad applications – without bothering to check whether WD was such a rule.

    Bad pleadings make bad law. Not the first time I’ve seen it happen, either.

  36. 22

    “It was completely relevant to whether there were any facts at all to back up the lawyer’s conclusory statement.”

    Which conclusory statement?

    This?

    “Your honor, with all respect, one cannot assume away four-hundred-thousand applications where the written description doctrine comes into play in a great many of them.”

    WD doctrine comes into play in all applications as a matter of course. That isn’t a bare “conclusory” statement, the patent law itself and the presumption that the PTO carries out such is evidence aplenty.

    Nothing he said required any evidence. He said “I think” in one place and “One cannot assume away” in another. Further, the matter at hand, impact, goes so far beyond whether or not any case has been rejected on such grounds that it would be a completely insignificant fact if the answer was that they had or that they hadn’t.

    The real significance of the law is that which is like you analogized to the seatbelt laws. Likewise, evidence of whether or not the PTO “pulled someone over for not wearing their belt” is insignificant in considering the true impact of the law.

  37. 21

    The initial comment (“nobody’s arguing about getting rid of the separate best mode requirement.”) — au contraire, that’s a key provision of the Patent Reform Act (at least removing the requirement for issued patents).

  38. 20

    This may be an untimely comment but the data at patstats.org tends to indicate over that last few years that a defense that includes invalidity due to inadequate written description is made less frequently in district court than one of obviousness of a claim, and the alleged infringer statistically has a fairly good chance of prevailing on this kind of 112 para 1 defense. (Whether this defense is conflated, rather than combined, with failure to enable is not immediately/readily extractable.) If this defense is made in about ten or less cases each year, and not all of those are appealed, then it is understandable they may go unnoticed or at least not be recollected from among the approximately 400 patent infringement cases appealed to the CAFC each year. If you review the 2009 data, obviousness and inequitable conduct lead in frequency; no surprises there.

  39. 19

    Judge Michel makes the error of considering only current behavior under current law, and pretends there will be no adaptive response.

    If there were no written description requirement, applicants would amend much more freely. Especially in the predictable arts, nearly everything is “enabled” sufficiently to meet § 112 ¶ 1. If the WD requirement were removed, applicants would amend accordingly. That would create real havoc.

    The PTO makes the same error in nearly every rule making when it “forgets” to account for the costs of adaptive responses.

    The proponents of Patent Reform Act make the same error when they neglect to account for the 30,000 to 50,000 applications that will be filed under the rewrite of § 102 to reduce the grace period to a useless remnant, and fail to recognize the PTO backlog that will result.

  40. 18

    I’m pretty sure that the “specific evidence” that they wanted was an actual application. […] They didn’t want a study.

    Sure, they wanted at least one application. Thing is, when the answer is “there aren’t any such applications”, it takes a study to demonstrate that.

    was worse that a question was asked that seemed to imply that being able to cite a case off the top of your head would be in any way relevant to the situation at hand.

    It was completely relevant to whether there were any facts at all to back up the lawyer’s conclusory statement. Even if he’d said something like “yes, I have a stack of them in my office/briefcase, I’ll find you one”, or “I can’t remember a particular one, but I’ve seen a lot of them and I assure you this is a major issue”, it would have been the difference between glibness and complete BS.

    Heck, even if he’d analogized to the seatbelt law and said “it may not come up in a lot of cases, but that’s because the mere existence of the rule makes applicants act in a certain way to obey the rule, and that makes patents better”, he might have swayed the judge. With what would still have been an empty conclusory statement.

  41. 17

    IIRC, considering that I was there, and I’ve listened to this thing several times, I’m pretty sure that the “specific evidence” that they wanted was an actual application. Further considering your citation of the written record of that conversation I’m pretty sure that I’m right. They didn’t want a study.

    Seriously, it was bad that he didn’t have a case on hand, but was worse that a question was asked that seemed to imply that being able to cite a case off the top of your head would be in any way relevant to the situation at hand.

  42. 16

    In the field of motoring offences, how often is the Court burdened with a “not wearing a seat belt” case? Is that another otiose provision, this time in traffic law?

    BTW In general, do you wear such belts in the USA? Not in yellow cabs, I suppose.

  43. 15

    Reasoning similar to Judge Michel’s would suggest that nobody should “care” about the judicial doctrines of laches or inequitable conduct because relatively few cases hinge on it. The rate of “hinging” doesn’t mean that the doctrines don’t have a practical effect that the PTO has reason to care about.

  44. 14

    DC As the data reveals, Chief Judge Michel’s notional recollections from the bench are much more accurate than are the government contentions. I.e., “the practical impact is miniscule, negligible.”

    Except that the data don’t address the practical impact of the written description requirement. The data and Judge Michel’s question address only the frequency of issues that are brought to the Board or the CAFC.

  45. 13

    Nice, I guess Dennis would invite the USPTO to formulate the objection around 35 USC 132 (much as the EPO does it using Art 123(2) EPC). Is that a possibility?

  46. 12

    If we eliminate the written description requirement, how would the Office reject an enabled but not described invention?

    For example, where the specification enables a huge genus of chemical compounds, should the applicant be allowed to amend the claims to recite any specific compound within that genus regardless of whether the specification said anything about the specie? This result would seem contrary to the recognition that “selecting” a chemical compound from within a broader disclosure gives rise to patentable subject matter.

  47. 11

    Making them and not backing them up is rather malcolmy.

    Try to let it go, NAL. I know it’s difficult for you, given your other problems. But at least try.

  48. 10

    Chief Judge Michel: I can’t remember ever seeing a patent office rejection that was based only on the failure of written description.

    I can’t remember seeing one that was only based on anticipation. Therefore, let’s get rid of the “separate anticipation requirement”.

  49. 9

    Thanks 7. As you say, the test in Japan is something like “Obvious: the PHOSITA could easily have combined the references”. It grates on me too. As to the admissibility of prosecution amendments to the claims pending at the USPTO, I had always thought that if the amended claim is: 1) inside the claimed scope prior to amendment and 2) embraces something in the Detailed Description, then it’s good to go.

  50. 8

    We almost never make best mode rejections, either,

    Best mode is almost impossible to examine. I’m surprised you ever make that rejection at all. How many times have you rejected a claim based on an on-sale bar? I agree, that’s not a reason to eliminate the requirement, it’s just a requirement that isn’t intended for use by examiners.

    For written description, I’d love to see a more extensive study of how this rejection is used by examiners, and how often it’s used alone or in combination with other 112 rejections. I’m not sure such a study would be practical, though.

    Also of interest would be how much extra work agents put into drafting specs to comply with the written description requirement, over and above the other requirements.

    I’m sure Mr. Freeman is a fine lawyer, but in an en banc argument before the Federal Circuit, one should expect to be asked wide ranging questions about the practice of patent law.

    How could he have foreseen a question like “okay, give me one example”?

    I don’t think this was due to his lack of experience in patent law, it’s a classic case of bad pleading by an unprepared lawyer.

  51. 7

    The elephant in the room: (with all due respect to IANAE)

    The Office has no room for making specious arguments that have no basis in fact. Trying to handwave 400,000 applications being processed with the specific point under question, getting caught red handed and stammering a “I don’t have a single case…” is much like other arguments heard on these boards where there-just-gotta-be something is met with a fine-then-show-something-met-with-silence.

    This is in aside to the merits of the arguments, which have been covered in depth on previous threads.

    There is nothiong wrong with conclusory statements – per se. Making them and not backing them up is rather malcolmy.

  52. 6

    These are the kind of silly statements you get when DOJ steps in for an argument that the PTO solicitor should have been making. I’m sure Mr. Freeman is a fine lawyer, but in an en banc argument before the Federal Circuit, one should expect to be asked wide ranging questions about the practice of patent law. A DOJ generalist just isn’t equipped. Ray Chen wouldn’t have made those comments.

    From this exchange you might even think that Chief Judge Michel was tweaking Mr. Freeman for his ignorance of PTO practice.

  53. 5

    “Dennis, it is my experience at the EPO that, when an EPO Examiner objects to a prosecution amendment that it is having the effect of adding matter to the application, my instructing US associate reacts with outrage. But i have learned to explain it to him on the basis that it is the quaint, quirky, peculiar EPO way of expressing what is really a “written description” 112 objection.”

    You must be dealing with some pretty inexperienced practitioners. Any US attorney who deals with patent offices around the world gets a feel for how they all work. At the EPO — unless those exact words are in the spec, if you put them in a claim, you’re likely to get an objection.

    In japan, a 14-way rejection including a cable modem, a toaster, an ink pen that can write in zero-g, a sex toy, and a smart card is entirely reasonable, and anyone of skill in the art would think to combine them. ;)

  54. 4

    The reason that Judge Michel doesn’t see many USPTO ex parte appeals where the only rejection is based on 112, 1st lack of adequate written description is because those issues usually get resolved during prosecution. When applicants claim, “sun, moon & stars” and only invented/possessed “stars,” the USPTO rejects under 112, 1st lack of adequate WD and smart applicants amend their claims to claim what they actually invented. The end result, a useful tool for the USPTO to limit applicants to what they actually invented and useful for applicants because they don’t face invalidity on the basis of WD.

  55. 3

    Dennis, it is my experience at the EPO that, when an EPO Examiner objects to a prosecution amendment that it is having the effect of adding matter to the application, my instructing US associate reacts with outrage. But i have learned to explain it to him on the basis that it is the quaint, quirky, peculiar EPO way of expressing what is really a “written description” 112 objection. That the instructing associate can “get” and then he calms down.

    So, I’m thinking, if the USPTO were to be put in the position of having to use 132 where, up to now, it has objected under 112, there’s going to be “trouble down at t’ mill”, and I mean, big time.

  56. 2

    Plurality said: To me, this doesn’t seem to be a good justification for eliminating the separate written description requirement. We almost never make best mode rejections, either, but nobody’s arguing about getting rid of the separate best mode requirement.

    Dennis Replies: I agree — my study pushes against the USPTO’s contention that written description is important in the prosecution process, but I do not present any evidence that the requirement is otherwise causing harm.

  57. 1

    To me, this doesn’t seem to be a good justification for eliminating the separate written description requirement. We almost never make best mode rejections, either, but nobody’s arguing about getting rid of the separate best mode requirement.

Comments are closed.