Fall 2003
Most people with a even a passing familiarity with patents realize that for a U.S. patent to be valid, it must claim an invention that is new. What many do not know, however, is that a patent must satisfy other requirements that, while less well known, are just as important to the validity of the patent. The District Court for the Western District of New York's recent decision in University of Rochester v. G.D. Searle & Company illustrates the pitfalls of failing to meet one such requirement - the written-description requirement.
Inventors at the University of Rochester theorized that a compound with certain characteristics would provide relief from pain and inflammation without causing the stomach irritation often associated with other pain relievers, such as aspirin. With the goal of isolating such a compound, the inventors developed a test for determining whether a compound possessed the desired characteristics. The inventors did not, however, successfully use the test to isolate a compound with the desired characteristics.
The patent that eventually issued to the University of Rochester based on the work of these inventors disclosed characteristics that would make a compound an ideal pain reliever, as well as a test for determining whether a compound possessed these characteristics. The patent claimed as one of the inventions a method of treating pain by using a compound with the desired characteristics outlined in the patent. The patent did not, however, specifically identify any compound that could be used in the claimed pain treatment method.
When the University of Rochester sued Searle for patent infringement, one defense raised by Searle was that the patent was invalid for failure to meet the "written-description requirement." To satisfy the written-description requirement, a patent must describe every element of the claimed invention in sufficient detail so that one familiar with the technological background of the invention would recognize that the inventors in fact possessed the claimed invention at the time of filing the patent application. One purpose of the written-description requirement is to prevent inventors from patenting mere ideas for things that would be useful, but which have in fact not yet been invented.
For example, suppose that, in the 1930s, someone recognized that it would be desirable to have a vehicle capable of flying to the moon, but had not yet developed such a vehicle. To allow that person to obtain a valid patent on "a vehicle capable of flying to the moon" would give him or her a monopoly on something that did not yet exist. As many courts have put it, that would be akin to allowing one to patent the future before it has arrived.
In the Searle lawsuit, the Court found that the University of Rochester was, similarly, trying to patent the future before it had in fact arrived. The Court succinctly identified the issue as "whether a written description of a claimed method of treatment is adequate where a compound that is necessary to practice the method is described only in terms of its function and where the only means provided for finding such a compound is essentially a trial-and-error process." The Court concluded that it was not.
The Court reasoned that the inventors did not possess the claimed method because the method required the use of a compound that had not yet been identified: "It means little to 'invent' a method if one does not have possession of a substance that is essential to practicing the method. Without that substance, the claimed invention is more theoretical than real." The test identified by the inventors for determining whether a compound had the desired characteristics did not cure the patent's deficiencies, the Court further reasoned, because it only allowed one to determine if a suitable compound had been found; it did not tell one how to find such a compound in the first place.
The Court compared the "missing" compound to the legendary "philosopher's stone" that supposedly would transmute lead into gold and was thus eagerly sought - but never discovered - by medieval alchemists. Without the compound called for by the patented method, the Court noted, the inventors could no more be said to have possessed the claimed method than the alchemists possessed a method for turning lead until gold. Accordingly, the patent failed to meet the written-description requirement and the method claims were therefore invalid.
So, contrary to popular belief, there is more to a valid patent than just a new idea. One must, among other things, also be able to provide an adequate description of the idea in order to show that it is a complete invention rather than a mere hoped-for goal.