Once a patent application is filed, it receives a priority date for all that it discloses and nothing more. The inventor can claim anything within the disclosure as being a part his or her invention. If the inventor wants to claim an invention that varies from the disclosure, then the claim language must be generalized so as to encompass the variation but cannot be shifted unless the original disclosure provides written description of the claimed variation. Otherwise, the claim will be invalid for lack of “written description” in the specification.
In the following case, the patentee (“Centocor”) filed a patent application to an antibody having various characteristics. For simplification, the characteristics relate to a constant region and a variable region of an antibody. Centocor utilized a variable region of a mouse and a constant region of a human to produce the antibody. A competitior (“Abbott”) produced an antibody having the same purpose as Centocor’s antibody except that both the variable and constant regions of Abbott’s antibody was “fully human” which is more desireable than Centocor’s antibody. Centocor filed claims in one of their pending patent application directed to a “fully human” antibody which ultimately issued as a patent and is at issue in the current litigation.
During litigation, Centocor had to show that the Centocor patent application had a “written description” of the “fully human” antibody. Centocor contended that Centocor’s patent applications disclosed (1) terms such as human variable region and human constant region, (2) the desirability of a “fully human” antibody, and (3) an article that suggested the possibility of developing such invention. However, the Court characterized these instances as a “mere wish or plan” for obtaining the claimed invention. The steps to develop a “fully human” antibody was not routine or convention and was not within a well developed and mature technology. The Court held that none of these instances in the patent application referring to “fully human” antibodies showed that the inventor had possession of the claimed invention. Accordingly, the Court held the claims at issue invalid for lack of written description. Centocor v. Abbott, 2010-1144 (Fed. Cir. Feb. 23,2011).
The Court also provided guidance as to how much a patent application needs to disclose in order to satisfy the “written description” requirement. The bottom line is that “routine”, “conventional” and “well developed and mature” technology requires less explanation. If one is unsure whether a certain concept is conventional, routine or well developed and mature, then one should lean toward a fuller and more detailed disclosure in order to avoid downstream legal expenses relating to proving up “written description”.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.