Disclose narrowly and claim broadly at your own risk
Recent Federal Circuit decisions reveal divergent views of the written-description requirement among the judges.
Recent Federal Circuit jurisprudence reflects a jigsaw puzzle of varied and divergent views of the written-description requirement of 35 U.S.C. 112, ¶ 1 and how written description affects claim construction. Should courts "rewrite" claims to limit their scope to what is disclosed in the specification? Should claim terms always be construed according to their plain meaning (absent a clear intent to the contrary by the inventor)? Should the plain meaning of claim language control, even if the resultant claim scope is broader than the accompanying disclosure, possibly rendering the claim invalid (under the "enablement" requirement)? Should courts even bother with the written-description requirement outside of the (soon to be eliminated) priority context, and instead focus on enablement?
This content has been archived. It is available exclusively through our partner LexisNexis®.
To view this content, please continue to Lexis Advance®.
Not a Lexis Advance® Subscriber? Subscribe Now
LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.
ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.
For questions call 1-877-256-2472 or contact us at email@example.com