US: 35 USC § 112 ¶1 requiert à la fois “written description” et “enablement”

Dans Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. la Federal Circuit a confirmé que le paragraphe 35 USC § 112 ¶1 dicte qu’une description adéquate de l’invention revendiquée (“written description”) et une validation de celle-ci (“enablement”) sont tous les deux requis.

“If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently…

…Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus…

…the hallmark of written description is disclosure. . . . [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

…the written description requirement does not demand either examples or an actual reduction to practice”

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