In Ariad v. Lilly, defenders of the written description requirement made two primary arguments: (1) that the text of the Patent Act and the accompanying jurisprudential history lead to the conclusion that the statute creates a separate written description requirement; and (2) that the written description requirement serves an important role in policing applicant behavior. An en banc Federal Circuit confirmed that the written description requirement is separate and distinct from enablement, but firmly based its decision on the first argument rather than the second. I believe that the Federal Circuit took the correct approach – especially in its substantial rejection of the second argument. In my recent essay, I wrote that – apart from its value in "new matter" rejections – the role of the written description requirement in ex parte prosecution is negligible. See An Empirical Study of the Role of the Written Description Requirement in Patent Prosecution, 104 NORTHWESTERN UNIV. L.R. Colloquy ___ (2010) (ssrn download). In that essay, I took no position on the larger issue of whether the written description doctrine is nevertheless required by the statute.
In his concurring opinion, Judge Gajarsa explicitly rejects the argument that the written description requirement is a necessary on policy grounds – writing that "[t]he empirical evidence confirms my belief that written description serves little practical purpose as an independent invalidity device [apart from policing priority]." Despite the lack of a policy justification, Judge Gajarsa concurred with the judgment "because the majority's opinion provides a reasonable interpretation of a less than clear statute."
Against reading an isomorphic theory of meaning into the Written Description requirement in Ariad
In inventing a Written Description requirement in a way that makes them feel comfortable, the Federal Circuit has, once again, thrown their hat into the ring and chosen a peculiar theory about the way language works which doesn’t make sense. Specifically, the Court has said that meaning is somehow derived from a one to one correlation between word or concept (or, in other words, something in the head) and reality. On page 21 of the opinion, meaning, under the Written Description requirement, according to the Court, comes somehow as a result of a likeness between a) what one of skill in the art would “…visualize or recognize…” and b) structural (ie, physical) features or a representative number of species falling within the scope of the genus. In other words, something in the head is isomorphic with the outside world (the structural limitation and/or species). And, somehow one of skill in the art recognizes that isomorphism and derives ‘meaning’ from it; as if one skilled in the art gets a special feeling when the outside object fits, like a hand in a glove, in the inside mental concept.
According to the Court, meaning sufficient to satisfy the Written Description requirement can NOT come from a functional limitation. Somehow, functional limitations lack that special recognition that structural limitations have.
Imposing some sort of strange limitation that physical words on the inside, in the head, have to “…fit like a glove…” around designated physical objects on the outside exalts a peculiar metaphysical theory and has some really weird implications. What would one do with numbers (ie, how can something in the head match something that is ‘5’ or has fiveness in the outside world)? So, what exactly, is fiveness? Certainly, numbers can be recited in claims. And what about colors (how would something have ‘redness’)? And, why does functional language fail the test? Is it because the Court can’t “…visualize or recognize…” functional language? Well, how do they visualize or recognize structural language differently from functional language, is there really a ‘something’ in the Court’s head for structural language that isn’t there for functional language? And, is that how the Court gets meaning, from the ‘something’ in the head matching something in the outside world?
I do not know how meaning works, but I do know that it doesn’t work in the weird way that the Court has hypothesized in Ariad. Meaning does not come from isomorphism, a sort of pairing of things on the inside (the head) with things on the outside. It’s ridiculous to say that one of skill in the art gets a strange or special feeling, that they can ‘visualize’ or ‘recognize’ when they’ve stumbled across a proper written description, a proper meaning, as the Court suggests. And, even without visualization or recognition functional language also has meaning. That is, one skilled in the art could certainly recognize an invention from so-called functional language alone.
If the Court really has problems with ambiguity, there is an entirely separate section for that, namely 112, 2. Or, if they don’t feel a claimed genus has the correct number of representative species, there is a section (and test) for that too! Reading some weird theory of meaning into the Written Description requirement evinces the fact that the Court really has no idea as to how language operates and is willing to entirely screw up the law as a result.
…and maybe the CAFC is tired of being smacked down for every attempt it takes at making a brightline rule.
Yet another unintended consequence of the jurisprudential p_ssing match set in place when the Congress set up an inferior court to have a “final word” when another court (the supremes) really want to control what is final and what is not.
The answer to the 2nd en banc question was – that it wasn’t answered, in any depth. Apart from fending off some contentions from Ariad, the CAFC dropped to a knee, and short of explaining how a separate written description requirement will apply.
The opinion settles for vagaries about “in some cases” and an “objective inquiry.” Perhaps, the CAFC believed that answers to the 2nd question might just as well be formulated by the district courts, or felt that until the time for a cert. petition passes that they’ll take a pass on making more 112P1 law.
Agreed, ping, Exr is not the PHOSITA. Agreed, my writing “encyclopaedic knowledge” was not enough on its own. I meant that the Exr has encyclopaedic knowledge at her disposal, in her EPO search database. Those posting here are always urging Examiners to “just do their job” and find all the art. Shows how careful I have to be, to write everything out in full, else readers will get hold of the wrong end of the stick.
Never before heard the expression “Throw a blimy under the bus”. Has a nice ring to it. Any more where that came from?
Maxie,
“ It gives me a chance to reinforce.”
How about a chance to correct?
You didn’t say anything like anything more than search the claims. Now I think defending NAL stains me in some way, but the chance to throw a blimy under the bus is worth that stain.
And it is not the Examiner who has “encyclopaedic knowledge of the art”, it is the PHOSITA. The Examiner is not the PHOSITA.
Courtenay thanks. May I ask, how long does the pursuit of broader claims last, through the filing of one CON after another? Till the money runs out? Till the patent term expires? Is there any other country where this strategy is followed?
Ah, glad you mentioned that ping. Thanks. It gives me a chance to reinforce.
Yes, the EPO takes claim 1 as its starting point. What other possibility is feasible? What other possibility acknowledges that the customer is an intelligent human that knows what she wants, is requesting a patent for a specific invention, started with a plain white sheet and set down on the sheet what the invention is.
Only problem is: customer doesn’t have encyclopaedic knowledge of the art.
But the Examiner does.
So what is a reasonable Examiner supposed to do?
1. Search the claims but, if the art is close
2. Read the specification to discern what Applicant is likely to fall back on, and then
3. Search that.
Because that’s what the EPO Search Guidelines tells her to do.
Written description rejections are common hurdles in biotech and chemical cases. You may not have seen them in your study because Applicants often pursue the strategy of proceeding to grant with claims that the Examiner agrees are adequately described, and filing a CON to pursue broader claims.
If i sat something will it be taken against me as i am sure afraid to comment on a blog full of law and order.
Um Maxie,
First, did you not say “It declines to search anything but the claims filed originally“?
Second, don’t rile NAL – I don’t want a four page dissertation.
The headline for this post presupposes that a justification for the decision exists.
I take issue with NAL, when he writes that the USPTO Examiner is tasked with looking at the specification but the EPO Examiner is not. Even the most cursory review of the EPO’s Guidelines for Examination reveals the absurdity of that assertion. Telling me, NAL, that I would “do well to learn” from you something about what the EPO does or does not do only compounds the absurdity.
Where did Kappos get his idea from, that USPTO Examiners should have an eye on the specification for the features that might result in a patentable claim? Why, the EPO Guidelines of course. They got there first. Ages ago. And why? Because, in the EPO, an Examiner gets one go at searching. One go only. So, it had better be good, an exhaustive search report in fact.
“is tasked
Ah, the operative key words.
What, you want us to actually do our jobs? You gotta be kidding, right?
“In the US, the examiner is tasked with reading the specification and the claims prior to undertaking his search (that search to cover the application). Thus, in the US, the examination on the merits is on the application and not merely the starting claims.”
Lord, I wish this was what happened in practice. I have seen more late citations of new art after a very predictable amendment in the last 5 years than in the prior 25 years. It is very frustrating.
Examiners reading the specification…yeah, right..
In FantasyLand.
MaxDrei,
Yet another difference between US and EPO that you would do well to learn. In the US, the examiner is tasked with reading the specification and the claims prior to undertaking his search (that search to cover the application). Thus, in the US, the examination on the merits is on the application and not merely the starting claims.
In fact, Lord Kappos has directed his minions to be more helpful in their examination to point out patentable material that is not captured in the original claim set.
On one of the threads here at our beloved Trainwreck, I notice that you have declined to answer a question put to you as to why the US has a stronger (better) patent. I would add that this notion of examination, while not easy on the examiner, yields a better patent and a better contribution to the art.
Lionel, it depends.
The EPO will examine on the merits only what it has already thoroughly searched. It declines to search anything but the claims filed originally (so it can include its search report in its A publication of the app as filed, 18 months after the declared priority date).
But you can file a divisional with completely new claims.
On the same logic (for the EPC does not distinguish between priority, novelty, or new matter, when it comes to issues of disclosure), your entitlement to Paris priority is independent whether or not your priority document has any claims at all.
OK?
I really need to reread more.
First paragraph corrected:
A written description can disclose and enable many claims whether they are claimed from the beginning or not or whether they are discussed as part of the invention or not.
Max,
A written description can disclose and enable many claims whether they are claimed from the beginning or whether they are discussed as part of the invention or whether are claimed or not is another story story.
In the EPO, if I file an application with a first set of claims, can I cancel those claims, and file new claims to completely different subject matter during prosecution?
Can we summarise like this: The Patent Statute would have been OK without any “written description” requirement in it at all.
All patent statutes need in them 1) something to force an Applicant to present from day one a disclosure that enables in terms commensurate with the scope of the claim, and 2) something to prevent an Applicant during prosecution from amending in a way that takes to issue a valid claim not possessed at the filing date or enabled at the filing date.
After that, any “written description” requirement is otiose.
But the US patent statute has one. Rather than recognise that it is superfluous, let’s give it something to do. What could that be? I understand it is:
1. refusing entry to claim amendments that contain “new matter”
2. imposing a requirement that the disclosure on day one shall afford adequate “support” for a broad conceptual claim.
So, now, the wd requirement in the Statute is not redundant, not doing anybody any harm, and can safely remain without requiring the Statute to be re-written.
I see this as an example of how the courts (if they summon up the sinews and screw their courage to the sticking place) can simplify the law, rather than forever making it more complicated.
I think the point (1) of the thread presupposes its own conclusion.
Notably, absent is Newman’s concurrence which sets to policing applicant’s behavior, albeit in a different manner than the proffered essay.
Likewise the Gajarsa affirmation, while directly on point to the policing that Dennis had written about (and in fact quoting Dennis), was, shall we say, less than praiseworthy on the merits of the text of the Patent Act.
Further given the dissenting view (a rather vocal minority), it appears that the strength of the decision accords to the following rationale:
1) stare decisis of judicially created law (as opposed to statute create[d] separate written description requirement
2) policing action of patentee behavior to include WD as separate from enablement.
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10) the statute itself, as per the generous Gajarsa – “a less than clear statute”
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