The first paragraph of § 112 of the Patent Act, 35 U.S.C. 112, has been called “a model of legislative ambiguity.” Its text provides that the specification of a patent application “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains…to make and use the same.” It has long been clear that this language imposes an “enablement” requirement, under which the specification must teach those skilled in the art how to make and use the invention. But patent lawyers have long debated whether the text also contains a separate requirement that the specification describe the invention so as to demonstrate that the applicant actually invented what is claimed.
For many applications, this issue makes little or no difference: A disclosure that is enabling inevitably shows that the applicant has completed an invention. But in some cases — for example when the applicant has done basic scientific work — the application may spell out a research program that enables others to make an invention, but may not demonstrate that the applicant has done so. After declining several opportunities to settle the issue, in Ariad Pharms. Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc), the U.S. Court of Appeals for the Federal Circuit, in a 9-2 decision, reaffirmed what it regarded as long-standing precedent, holding that the Patent Act mandates a written description of the invention that is distinct from the enablement requirement. The court received 25 amicus briefs. Applying that holding, the Ariad court invalidated a patent on pioneering work done by scientists at Harvard University and the Massachusetts Institute of Technology.
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