Disclose narrowly and claim broadly at your own risk

Recent Federal Circuit decisions reveal divergent views of the written-description requirement among the judges.

, The National Law Journal


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?

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