Intellectual Property Brown Bag
Co-Sponsored by Suffolk University Law School
and the Boston Patent Law Association
About The Series
The goal of the Luncheon Series is to establish a forum where local practitioners, alumni and current students may come together to informally discuss practice problems and recent developments in the law. The series is intended to ease the transition from law school to practice. Roundtable discussions may provide solutions to practice problems, as well as an opportunity to discuss new law and develop practice strategies. The series will also create networking and referral opportunities for local attorneys and alumni. This is a public interest service intended to provide an educational forum for members of the bar.
Ariad v. Eli Lilly: Written Description as a Function of Enablement
Wednesday, November 4, 2009, 12 noon to 2:00 p.m.
The Court of Appeals for the Federal Circuit will rehear Ariad Pharmaceuticals, et al. v. Eli Lilly and Co. (Fed. Cir. 2009) en banc. In Ariad, the Federal Circuit invalidated a patent, directed to modifying activity of a transcription factor, NF-kB, for failure to meet the “written description requirement” of 35 U.S.C. § 112, first paragraph. The issues on rehearing will be whether the written description requirement is separate from the “enablement requirement” of the same paragraph and, if so, its scope and purpose.
Faculty: Scott Pierce, of Hamilton, Brook, Smith & Reynolds, P.C.
Published a paper on the written description requirement (N. Scott Pierce, “University of Rochester v. G.D. Searle & Co.: Writing on the Wall,” 4 J. Marshall Rev. Intell. Prop. L. 406 (2005)). He will argue that courts, despite assertions that the written description and enablement requirements are separate, have applied the written description requirement as a function of enablement. Compliance has been measured by the ability of one skilled in the art to comprehend from the specification, as filed, the scope of the invention claimed. The possible implications of this interpretation of the written description requirement on the facts of Ariad will be discussed.
Advanced Legal Studies
Center for CLE & Academic Conferences
120 Tremont Street, Suite 160
Boston, MA 02108
P: 617.573.8627
F. 617.305.3099
E: als@suffolk.edu
www.law.suffolk.edu/als
http://twitter.com/als_suffolklaw
The Brown Bag Lunch Is FREE
However we ask that you register in advance to reserve a seat.
Lunch Is Not Included
Please bring your own brown bag lunch. We will provide coffee, cold
drinks and dessert.
To Register
Please call 617.573.8627 or visit our website @ www.law.suffolk.edu/als .
