The Patent Written Description Requirement: A Requirement in Search of a Description

December 1, 2023

Innovation often requires a hefty investment of time and money.  The patent system exists to incentivize innovation by granting inventors the exclusive use of their invention for a set period of time.  In return, the public receives the benefit of the inventor’s knowledge, as well as the use of the invention once the exclusivity period ends.  One of the hurdles for obtaining a patent is the written description requirement, which demands that the inventor disclose enough information to prove that they actually invented what they are seeking patent protection for.  This requirement serves to prevent an undeserving “inventor” from obtaining the right to exclude the public from using a technology that they did not actually invent.

The written description requirement has a reputation for being poorly defined and unpredictable.  Recently, this requirement has become a popular target for parties defending against patent infringement suits, and patent practitioners have raised concerns that the U.S. Court of Appeals for the Federal Circuit is applying an increasingly heightened standard.  This Note discusses two recent cases in which the Federal Circuit invalidated patents for insufficient written descriptions.  Each case considered a patent covering a drug for multiple sclerosis that the innovating party sought to assert against competitors hoping to manufacture lower-cost generics.  This Note explores the Federal Circuit’s reasoning for invalidating the patents and evaluates their treatment in light of precedent.  It then proposes that the Federal Circuit establish a more concrete standard for the written description by adopting a goal-oriented approach to the requirement.

December 2023

No. 3