Ending the Invalidity Shell Game : Stabilizing the Application of the Written Description Requirement in Patent Litigation

Nearly half of all litigated patents are adjudged invalid. An analysis of federal court patent decisions issued in the last ten years reveals that those who challenge issued patent claims based on claims’ alleged failure to comply with the written description requirement succeed more than 40% of the time. The fact that the federal courts so frequently overturn granted patents underscores that there is a disconnect between the way in which the United States Patent and Trademark Office (“PTO”) evaluates the written description compliance of patent applications and the way in which issued patents are treated in litigation. The causes of this disconnect are at least twofold. First, the law of written description is ever-evolving, and there is still internal debate within the Federal Circuit regarding the scope and purpose of the requirement. Second, courts may encounter difficulty in properly applying the presumption of validity in the litigation context because the PTO need not necessarily explain how a given patent claim satisfied the written description requirement. Whatever the cause, this disconnect is a matter of importance to both patentees and to the public. The frequency with which the courts apply the written description requirement to overturn patents stands as a clear disincentive for firms to invest in patentable research that may benefit the public. Further, the frequent invalidation of patents on a ground – i.e., written description – that was necessarily evaluated by the PTO during prosecution suggests that the PTO’s evaluation of patent applications is flawed. This paper analyzes this disconnect and proposes the solution of having patent applicants affirmatively identify during prosecution the written description support for their claims, in order to harmonize the application of the written description requirement at the PTO and in the courts. This solution empowers patent applicants and the PTO to collaborate on patents having claims that satisfy the written description requirement and are more likely to be upheld in litigation. In addition, the solution is consistent with the emerging behavioral economics/psychology approach of Sunstein, Thaler, Schwartz, and others