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ARTICLE · 23 NOVEMBER 2022

Written Description Is Not Always Your Friend

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While an adequate written description is essential for patentability, 35 U.S.C. § 112(a), like everything else too much can have adverse

United StatesIntellectual Property
Richard D. Kelly
Richard D. Kelly
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While an adequate written description is essential for patentability, 35 U.S.C. § 112(a), like everything else too much can have adverse consequences as uniQure biopharma recently learned in IPR2021-00926 (IPR) involving U.S.P. 9,982,248 ('248).

The '248 patent specification defines many conventional terms in the polypeptide and pharmaceutical arts. A definition which ultimately sunk many of '248 claims was "treat" or "treatment." Treatment of a disease may have different meanings depending on the context. For example, it is well-known to treat Alzheimer's or Parkinson's disease with anti-psychotics to improve a patient's quality of life without curing the underlying disease. But treating a bacterial infection with an antibiotic normally does mean "curing" the disease by killing off the bacteria. While defining terms to avoid issues in prosecution, or litigation or licensing may be useful, it must be done with a view to the specific invention. If the disease is

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