When preparing a patent application, there are several key requirements to meet for it to be effective. One of the most critical is the Written Description Requirement, which ensures that the patent document provides sufficient detail about the invention to establish that the inventor truly “possessed” the invention at the time of filing.
What is the Written Description Requirement?
According to the Manual of Patent Examining Procedure (MPEP), “to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.”
Simply put, this requirement means that an inventor must provide a thorough written description of their invention, ensuring that it conveys their knowledge of the invention at the time of filing. This documentation needs to be robust enough to show that the inventor had a clear understanding and possession of the invention as they describe it in the claims.
Case Example: Tobinick v. Olmarker
To illustrate the written description requirement in action, let’s look at the Tobinick v. Olmarker case (Fed. Cir. 2014). This case involved a patent application for a treatment of spinal nerve injuries, which often occur due to herniated discs. The specific claims in question required a drug to be “administered locally” to the affected area.
The Issue: “Administered Locally”
The core of the dispute was whether the patent application sufficiently described the term “administered locally.” In the patent, various methods for administering the drug were outlined, including an epidural injection near the site of the disc herniation. However, the application also mentioned that this injection could be administered as far as 10 centimeters from the spine and even included methods for systemic administration (administration through the whole body rather than a targeted area).
The Decision of the PTAB
The Patent Trial and Appeal Board (PTAB) examined the application and concluded that the written description requirement was not met. The PTAB interpreted “administered locally” to mean that the drug must be administered directly at the site where it would treat symptoms, specifically where the “nucleus pulposus” was causing nerve disorder symptoms. Since the patent application described both local and systemic administration but did not distinctly clarify local versus non-local methods, the PTAB found the description inadequate for establishing the inventor’s “possession” of a locally administered drug.
The Federal Circuit’s Reversal
The Federal Circuit later reversed the PTAB’s decision. The court clarified that to satisfy the written description requirement, a patent specification does not need to describe multiple embodiments of every claim term. Instead, if there is at least one disclosed method that aligns with a claim limitation—such as the “administered locally” term—the written description requirement can be met.
In this case, the specification disclosed administering the drug within the root nerve area impacted by the herniated disc, satisfying the “administered locally” requirement for at least one embodiment. Thus, the patent met the written description requirement for that particular claim term.
Key Takeaways: of the Written Description Requirement in Patent Applications
The written description requirement ensures clarity and precision, helping prevent claims that are too vague or unsupported by the inventor’s description. Without it, the claims might not hold up during examination, potentially jeopardizing the entire application. Sufficiently detailed descriptions are essential, as they provide a basis for the inventor’s knowledge and possession of the invention at the time of filing. Even though the patent owner won in this case, he could have avoided such a time consuming and costly litigation by merely spending more time on the disclosure and being clear about the full scope of “locally administered.”
Here are a couple of pointers based on the above case.
- Use Clear, Consistent Language:
- Define key terms early and stick to simple, precise language. Regularly practice rewriting complex technical descriptions for clarity.
- Incorporate Detailed Examples:
- Practice writing specific embodiments and alternatives for each invention aspect. This strengthens claims and enhances support for broader interpretations.
Need Help with Your Patent Application?
Navigating patent requirements can be complex. If you have questions about the written description requirement or other aspects of the patent application process, feel free to reach out. Contact me at (949) 433-0900 for a consultation. As an Orange County Patent Attorney, I serve clients across Orange County, Irvine, Los Angeles, San Diego, and surrounding areas.