At long last, the Federal Circuit will specifically address the questions of (a) whether or not section 112 contains a written description requirement separate from the enablement requirement and, if it does (b) what is its scope and purpose. Hopefully, if the answer to (a) is yea, the answer to question (b) will provide some guidance as to how to tell with some predictability when the WDR has been met (and when it has not), apart from the opinions of some of the judges that the description of the claimed subject matter must contain a concrete description of some sort, such as drawings, structural formulae, or the dreaded functional description that correlated to structure in some fashion by the art.
For some fairly deep background, please go back to my post of May 5, 2009 on Judge Linn’s dissent in Ariad, which discusses the difficulties that the Fed. Cir. has encountered in trying to provide guidance (let alone “standards” or “factors”) by which a specification can be weighed to determine if it has an adequate description of the invention. It is my opinion that there may well be enough votes to enshrine the WDR per se, but per so is where it will stay, as even resolving its scope and purpose is a far cry from providing any workable guidance as to how it can be met by mortal patent drafters. Amici briefs will be thicker than reporters at an Obama barbeque. Stay tuned
August 21 2008Ariad EnBanc Order Granting en banc Review.pdf