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Dissenting Views Raise Uncertainty in Written-Description Law
The Patent Act requires that "It]he specification shall contain a written description of the invention, and 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 make and use the same...." [35 U.S.C. [section] 112, [paragraph] 1.] The courts have traditionally instructed that this provision requires two separate things: (1) an adequate written description and (2) an enabling disclosure. Through the written-description requirement, the inventor describes the invention in the patent specification and shows that he or she possessed the invention as of at least the filing date of the application. By the enablement requirement, the inventor discloses how to make and use the invention.
Although having a written-description requirement separate from enablement appears settled law, three judges on the Federal Circuit have recently shaken things up a bit. According to them, the …