En Banc Court Confirms Section 112’s Separate Written Description Requirement

A recent en banc decision by the U.S. Court of Appeals for the Federal Circuit in Ariad Pharmaceuticals Inc. v. Eli Lilly and Co. confirmed that Section 112 of the Patent Act contains a separate written description requirement beyond the requirement that a patent’s claims be enabled in the specification. The majority provided considerable detail to clarify what several precedents have called the “possession of invention” requirement, and in doing so, made clear that many discoveries of basic science research would not qualify. Besides the parties’ briefs, 24 amicus briefs were filed, most in favor of Lilly’s position and most supporting the view that the quid pro quo of the patent system requires more description from the patentee than simply enabling use. Finnegan partner Charles Lipsey represented Lilly.