The Written Description Requirement
A patent specification has a number of different legal requirements. One of those requirements is that the patent specification must provide a “written description” of the claimed invention. 35 U.S.C. § 112 recites that the “specification shall contain a written description of the invention ….”
An excerpt from the Stanford case discussed below explains the standard to determine whether the written description requirement has been satisfied.
Evaluating the Written Description Requirement
Whether a patent claim satisfies the written description requirement of 35 U.S.C. § 112, paragraph 1, depends on whether the description “clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (internal quotation marks omitted) (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)).
[W]hatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.
— Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Put simply, the written description is satisfied when an explanation of the claimed invention is provided by words and drawings.
Challenges in Describing Known Components and Methods
This is easier said than done. For example, when the invention is a combination of known components and known methods used in a unique and nonobvious way, the known components and methods are sometimes summarized or referred to by their industry name. They are referenced in the patent specification by their industry name, tradename, brand name, and model number.
However, there may come a time when a particular piece of information about the known component or method is not expressly stated in the patent specification except by its industry name. Including such aspects in the claims could prove beneficial for securing a patent. This was the issue in Stanford Univ. v. Chinese Univ. of Hong Kong (Fed. Cir. June 27, 2017): whether such references could provide IMPLICIT support for something not expressly stated in the patent specification.
The Issue in Stanford: Saving a Patent with Implicit Support
In Stanford, the claimed invention included “random massively parallel sequencing” (random MPS). However, the patent specification did not explicitly describe the “random” aspect of this feature. Instead, the specification referenced products from Illumina, Inc., which, at the time of filing, utilized random MPS.
The key issue was whether the reference to Illumina products could implicitly support the claim’s “random” feature, even though the specification did not explicitly state it.
Generic References to Known Methods in the Specification
The patent drafter had generically described the known method in the patent specification by referring to particular products utilizing that method. An excerpt of the patent specification stated:
A methodology useful in the present invention platform is based on massively parallel sequencing of millions of fragments using attachment of randomly fragmented genomic DNA to a planar, optically transparent surface and solid phase amplification to create a high-density sequencing flow cell with millions of clusters, each containing ~1,000 copies of template per sq. cm. These templates are sequenced using four-color DNA sequencing-by-synthesis technology. See, products offered by Illumina, Inc., San Diego Calif. Also, see US 2003/0022207 to Balasubramanian, et al., published Jan. 30, 2003, entitled “Arrayed poly-nucleotides and their use in genome analysis.”
As shown, the patent specification referenced “massively parallel sequencing” (MPS) and pointed readers to products by Illumina, Inc. However, the specification did not expressly state that the massively parallel sequencing was random.
The Patent Was Saved by Known Components
The Federal Circuit determined that implicit support from known components could satisfy the written description requirement. The reference to Illumina products provided the necessary support for the “random” feature because Illumina’s products at the time of filing used random MPS.
The Federal Circuit clarified that the written description requirement can be satisfied if the original disclosure conveys the necessary information, regardless of how it is conveyed. Evidence could include references to known components or methods.
A Key Lesson: Think Beyond Implicit Support
While referencing known components and methods can save a patent, as in Stanford, relying solely on implicit support is risky. To strengthen the patent application, it is crucial to analyze the known component or method during drafting to identify what is important to the invention. Once identified, explicitly state these features in the specification.
By doing so, the patent drafter reduces the risk of challenges to the patent’s validity and ensures robust claim support.
Practical Takeaways for Patent Drafters
- Include Known Components and Methods: Referencing known products and methods can provide support for claim features, even if the specification does not explicitly describe them.
- Expressly State Important Features: Analyze the known components or methods and explicitly describe their important aspects that contribute to the invention.
- Avoid Defining the Invention by Known Components: Use known components and methods to illustrate the invention, but ensure the invention remains focused on its novel and nonobvious aspects.
By thoughtfully incorporating and explicitly describing known components and methods, patent drafters can provide strong support for claims while reducing the risk of validity challenges.
Contact Information
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve clients in Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.