N. Scott Pierce


In patent law, the first paragraph of 35 U.S.C. § 112 is currently interpreted to include a written description requirement that is distinct from the requirement of enabling a person skilled in the art to make and use an invention. However, analyses of patent specifications under the “written description requirement” have relied on determinations of whether one skilled in the art would comprehend the scope of the claimed invention in view of the description provided, in effect continuing use of enablement as the statutory threshold for description purposes. The Court of Appeals for the Federal Circuit in University of Rochester v. G.D. Searl & Co., 358 F.3d 916 (Fed. Cir. 2004), cert. denied, 125 S. Ct. 629 (2004) (No. 04-476) departs from considerations of enablement to assess the adequacy of the written description in a patent specification. The decision by the court in Rocheter and Judge Rader’s vigorous dissent may well represent not only departures from legal precedent, but also the seeds of a split in authority within the Federal Circuit.