Chapter three explores what may be the most important part of the patent quid pro quo: disclosure of the claimed invention. In order for an application to result in a patent, this disclosure must meet several requirements. The disclosure requirements discussed in these cases serve the dual purposes of ensuring both that the disclosure is meaningful and that the applicant actually developed the claimed invention.
As you read the full text of the Morse patent you may be surprised by the similarities between such an early patent and the modern ones you have already seen. Be aware, however, that the claims in the Morse patent are written in the old “central claiming” style, which is no longer used in most of the world, including the United States. The use of central claiming means that the claims actually cover more than they appear to, though how much more was often only discovered through difficult (and expensive) litigation, as Morse himself discovered to his great misfortune.
As an example of the importance of the disclosure in shaping the coverage of the patent claims, consider the Amgen ‘008 patent, which contains some 48 pages of disclosure and only a single page of simple claims. Without such a thorough disclosure both the scope of the patent and its value to the public would be insignificant. As the Amgen v. Chugai case makes clear, however, even that lengthy disclosure was insufficient to match the broadest claims.
- The America Invents Act modifies the best mode requirement of § 112. Although disclosing the best mode is still a requirement for obtaining a patent, failure to do so is no longer grounds for invalidity or unforceability due to inequitable conduct. From the AIA:
SEC. 15. BEST MODE REQUIREMENT.
(a) IN GENERAL.—Section 282 of title 35, United State Code, is amended in its second undesignated paragraph by striking paragraph (3) and inserting the following:
‘‘(3) Invalidity of the patent or any claim in suit for failure to comply with—
‘‘(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or”
Note that instead of amending Section 112 itself, this portion of the AIA only amends Section 282, which is titled “Presumption of Validity; Defenses” in the Chapter of Title 35 entitled “CHAPTER 29 — REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS.” Some suggest that this means that best mode can still be used to prevent a claim from being issued, including perhaps through a post-grant review proceeding, which would leave best mode still a target of discovery during litigation, so it could be used in aco-pending post-grant review proceeding. Some suggest that the presence of the word “canceled” in the AIA provision means that an issued patent cannot have its claim “canceled” through a post-grant review procedure based on best mode. Yet others suggest that at least claims in any still-pending related applications might be possible targets for best mode evidence uncovered while litigating an issued patent.
- Note 2 following the Vas-Cathprincipal case discusses the Ariaddecision’s relationship to the Eli Lillydecision. The Note should go further in pointing out that Ariad also stated that the written description requirement “contains no basis for applying a different standard to amended versus original claims.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc).
- Note 8 following the Vas-Cath case likewise should be read in light of Ariad. Ariadreiterated that a mere “wish” or “research plan” does not satisfy the requirement, and also held that Eli Lilly did not impose new requirements on biotechnology inventions. Rather, Eli Lilly“merely faithfully applied the statute, consistent with Supreme Court precedent and [Federal Circuit] case law.” Ariad, 598 F.3d at 1351.
Additional Source Material
- See 35 U.S.C. § 112 and MPEP §§ 2161–2174
- O’Reilly v. Morse, 56 U.S. 62 (1853)
- In re Hogan, 559 F.2d 595 (CCPA 1977)
- Glaxo v. Novopharm, 52 F.3d 1043 (Fed. Cir. 1995)
- Great Northern v. Henry Model Products, 94 F.3d 1569 (Fed. Cir. 1996)
- Vas-Cath v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)
- Athletic Alternatives v. Prince Mfg., 73 F.3d 1573 (Fed. Cir. 1996)
- In re Wands, 858 F.2d 731 (Fed. Cir.1988)
- Amgen v. Chugai Pharmaceuticals, 927 F.2d 1200 (Fed. Cir.1991)