Draft Trans-Pacific Partnership Treaty – Written Description and Overbreadth

Two very different versions of Article E.9 are proposed in the leaked draft TPP treaty. The proposal of the US and Peru provides for a US-style written description requirement:

US version:

Article QQ.E.9

Each Party shall provide that a claimed invention is sufficiently supported by its disclosure if the disclosure reasonably conveys to a person skilled in the art that the applicant was in possession of the claimed invention as of the filing date.

Australia proposes a very substantially different version:

Article QQ.E.9

Each Party shall provide that a claimed invention shall be sufficiently supported by its disclosure.

All others except Japan oppose this provision. Japan is considering.

While this provision raises complex issues – this is a familiar refrain by now – in my view the Australian proposal is sound and desirable, while the US proposal verges on the absurd.

As it happens, I spent the beginning of last week reading cases and commentary on the US written description requirement. While I can’t say that I have gotten to the bottom of the morass, it is abundantly clear that this requirement is extremely controversial, even in the US. The US requirement has been explained as follows, inVas-Cath v Mahurkar, 935 F.2d 1555, 1563-64 (Fed.Cir.1991):

The purpose of the 'written description' requirement is broader than to merely explain how to 'make and use'; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.

The written description requirement serves two distinct purposes. The original purpose was to police priority and new matter issues, while the second is to be an independent ground of invalidity: see the opinion of Rader CJ in Enzo II 323 F.3d 956 (Fed Cir 2002). The US’s proposed Art E.9 clearly contemplates the written description in this second sense, as an independent validity requirement.

The use of the written description requirement as an independent basis for invalidity is extremely controversial, even in US law. The second function was introduced only in 1997, in Regents of the University of California v Eli Lilly 119 F3d 1559 (Fed Cir 1997). After a decade of controversy, in which precise requirements of the doctrine were debated, it was affirmed by a majority of Fed Cir en banc, in Ariad v Eli Lilly 598 F3d 1336 (Fed Cir 2010), over a strong dissent by Rader CJ who objected that the doctrine is so poorly defined that it is essentially arbitrary: “As it stands, the court's inadequate description of its written description requirement acts as a wildcard on which the court may rely when it faces a patent that it feels is unworthy of protection” (1366). Linn J’s dissent in Ariad expressed the same sentiment in more moderate terms: “the majority today enshrines fail to justify establishing a separate written description requirement apart from enablement and beyond the priority context, and fail to tether that written description requirement to a workable legal standard” (1367). Gajarsa J concurred in the majority decision in Ariad, but only in order to bring clarity to the interpretation of a poorly drafted statute. He wrote separately to emphasize that “I disagree, however, with those who view an independent written description requirement as a necessity of patent law” (1360),and he reiterated his view that the doctrine “better serves the goals of the Patent Act when confined to the priority context” (1361). Even the majority in Ariad acknowledged the vagueness of the doctrine: “The term ‘possession,’ however, has never been very enlightening” (1351).

Moreover, no one really knows the purpose of the doctrine: see eg Lemley, Point of Novelty,(2011) 105 Nw U L Rev 1253, 1267, noting that “Courts and scholars have struggled to explain why we need a written description requirement separate from the enablement requirement,” and concluding at 1269 that the doctrine does not make sense. The Federal Circuit has generally justified the doctrine by arguments based on statutory interpretation, rather than policy, and so, while it has dropped a few hints, it has never been entirely clear as to what the policy rationale for the doctrine might be. That is not an unreasonable position for a court to take, but in the absence of any policy understanding of the requirement, the fact that the poorly drafted US disclosure provision has been judicially interpreted to require “possession” of the invention is a grossly inadequate basis for insisting that other countries adopt a similar requirement.

One of the clearest statements of the policy behind the provision was provided in Ariad, 1353-54 where the majority noted that “ the purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’” That is, written description is intended to police overly broad claims. This is a sound policy goal. The difficulty, in my view, is that the requirement that the inventor “was in possession of the invention,” does a very poor job of ensuring that the claims are commensurate with the scope of the invention. The result of the cases in which failure to satisfy the written description requirement is the main ground for invalidity cannot easily be explained as simply turning on overbreadth. The view that the written description requirement is not necessary or effective at policing overbreadth seems to be shared by most US commentators, and a significant minority of US judges. With its proposed E.9, the US is proposing to foist this poorly defined doctrine on its trading partners, even while it remains intensely controversial in the US. To my mind, this is highly objectionable.

The Australian proposal is also directed at overbreadth, but it is much more orthodox. It is similar to the Australian Patents Act, 1990 s 40(3), as recently amended by the Raising the Bar Act, which provides that “The claim or claims must be . . .supported by matter disclosed in the specification.” As discussed in the Explanatory Memorandum, this was aimed at ensuring that the scope of the claims is justified by the contribution to the art disclosed in the specification, and it modeled on the EPC Art 84, the UK Patents Act, 1977 s 14(5)(c), the PCT Art 6, and the draft Substantive Patent Law Treaty, May 2004, Article 10 (3). In short, it seeks to harmonize the overbreadth requirement around a generally accepted standard.

It is not clear to me why Canada opposes the Australian proposal. Overly broad claims are invalid in current Canadian law, though the requirement has been judicially developed, ultimately from the old leading English, Mullard Radio (1936) 53 RPC 323 (HL), and is without a clear statutory basis. Rule 174(2) does require that “Every claim must be fully supported by the description,” and this is what the PAB normally relies on in making overbreadth rejections. Thus the Australian proposal would not require any substantive change to Canadian law. At most, Rule 174(2) would have to be moved into the Act, which, as an important substantive provision, is where it belongs.