The Written Description Requirement

In the section emphasis has been placed on the three key components of written description, enablement, and best mode. Each of these three requirements is separate and distinct, so that is how they will be treated in this chapter. Though it might seem obvious, each of the three sections of the written description requirement applies to the claimed invention only. It is surprisingly easy to get caught up with peripheral aspects of the invention that do not directly involve claimed elements and, as a result, overinterpret the ambit of 112 f 1. Likewise, it is easy to forget that written description is required for all of the elements in a claim and as a result, attempt to make claim amendments during patent prosecution that do not find adequate written description support in the patent specification. Making the claim elements the focus will help to keep one on track with respect to 112 f 1 issues. 

In Chapter 2 we learned that the filing of a U.S. patent application serves as a constructive reduction to practice as of the date that the application is filed. However, we also learned that the patent application as filed needed to satisfy the requirements of 112 f 1. Similarly we learned that an applicant is awarded a priority date as of their date of filing the patent application, but this assumes that the filed patent application satisfies the requirements of 112 f 1 as well. This means that the value of the patent application to the patentee is largely premised on the ability of the patentee to fulfill the requirements of 112 f 1. 

The first part of 112 fl provides that the specification shall contain a written description of the invention. According to current federal law jurisprudence, this requirement is separate from the enablement requirement, meaning that an analysis aimed at determining whether the requirements of 112 f 1 are met requires a separate inquiry for both written description and enablement. In turn, there are two aspects 

2Later in this section, we will learn more about what constitutes new matter, but for now it is sufficient to appreciate that the addition of a compound species to a claim where the specification did not disclose that species is almost always going to be treated as new matter. 

FIGURE 9.1 Markush structures and compound examples disclosed in the 10/690,732 application. 

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Although the applicant is free to amend the claims in the patent application during the prosecution of the patent application, he cannot rewrite the claims in any way he pleases. Rather the claims must be fully supported by the text of the patent application as filed any attempt to add matter in the claims that is not supported by the patent application as filed will draw what is often referred to as a new matter rejection, meaning that the applicant has attempted to introduce new matter to the patent application that was not present as originally filed. An attempt to introduce new matter into the claims during the patent prosecution process violates the written description requirement and will be discussed in more detail in Chapter 9. 

The prohibition against placing new matter into an application after it s already been tiled is governed by the written description requirement as stated in 35 U.S.C. 132(a). The prohibition against introducing new matter into a patent application after tiling is discussed in detail in Chapter 9. 

Enablement and the written description requirement will be covered in Chapter 9. 

Although the written description requirement is most typically discussed in the context of when an applicant attempts to amend claims or the patent specification after the patent application has already been filed, there is a second, broader aspect to consider. This second aspect of the written description requirement relates not to the amendment process per se but rather to whether the claims, even where present in the original specification (such that there is no new matter issue), have written description support in the patent application. This written description requirement is separate from the new matter context discussed earlier, and is often discussed in the context... 

Pfizer alleged that the claimed invention was invalid for, among other things, failure to comply with the written description requirement. The District Court found for Pfizer, holding that Rochester s claimed invention was invalid for failure to comply with the written description because the Rochester patent neither disclosed a nonsteroidal compound that selectively inhibits the COX-2 enzyme nor provided any idea how such a compound could be made other than by trial and error research.23 Instead of a specific description of the invention all the public received was a method of identifying and using compounds without any description of the compounds themselves. As the District Court explained in its decision,... 

The District Court judge went on to explain that a patent for the philosopher s stone was actually issued during the reign of Edward III. Apparently, they were not as keen on the written description requirement back in those days. Neither were they very keen on the utility requirement—a credible utility must be alleged (though perhaps it was a credible utility at that time). However, there probably would be no rejections based on novelty for such a claim. 

To be patented, the invention must be described in writing [2], a task which may be problematic for a diverse mixture of compounds. The written description requirement may be satisfied by (a) listing all the compounds that are (or may be) part of the mixture, or (b) describing the compounds in terms of one or more generic formulas. Where the compounds are all structurally related (e.g., they all derive from a common set of reactions, or share a common nucleus), they may be described using simple generic formulas such as ... 

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