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« Court Report | Main | Amicus Briefs in Ariad v. Lilly: United States »

November 22, 2009



Interesting that Google et al. refer to themselves as "innovative leaders in the high-technology and computer-related
fields." Others, including smaller software and computer-related companies, might not refer to Google et al. as innovative, but in fact, as "thieves" of innovation.

On balance, I think the case law favors a separate "written description" requirement. Having a separate "written description" requirement is especially important in pinning down what the inventor(s) truly regard as his/her/their invention at the time the application is filed. The "enablement" requirement doesn't and wasn't intended to do that.

One of my beefs with the separate "written description" requirement is how it is applied by the Federal Circuit in a manner to the biotech field that appears disproportionally different from other technical fields. At the very least, the en banc Federal Circuit in Ariad needs to clarify that the standard for the "written description" requirement is the same no matter what the technical field is.

But my biggest beef is how certain members of the Federal Circuit, especially Judge Lourie, play fast and loose with the standard of review when they rule on a "written description" requirement issue. As the Google et al. brief correctly states, the "written description" requirement is a "question of fact" which requires "the clearly erroneous" standard for appellate review. But Judge Lourie in particular acts as if the "written description" requirement is subject to "de novo" review, i.e., as if it were a question of law. Put differently, if the "written description" requirement is a "question of fact," it should be treated as such on appellate review.

The issue expressed in the text -- They also argue that applicants assert the right (purportedly improperly) to submit claims in such continuation applications that encompass subject matter not disclosed in the specification and in fact developed by their competitors. -- was discussed in JPTOS, pp. 743-746 (Sept. 2006).

Nuances related to the JPTOS article appear in


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