First-to-File and its Effect on Biotechnology's Strict Written Description Requirement

Abstract

This paper explores the competing interests between the America Invents Act (AIA) and the patent law’s strict written description requirement. In Part II, this paper will discuss the current first-to-invent system of U.S. patent law and how a first-to-file system under the AIA creates a race to the patent office that spurs competitive behavior. In addition, this section will cover the disclosure requirement of 35 U.S.C. §112, including the decades of case law that formed the strict written description burden on biotechnology. Part III will analyze the competing interest that is created by combining the new patent law with the strict written description requirement. Moreover, this part will illustrate that the conflicting interest will cause disadvantaged biotech inventors to carefully balance their odds of winning the patent race against the need to satisfy strict disclosure. As it will be shown, the scales will tip in favor of filing. Part IV will illustrate the harmful effects of this result, and will explore several possible solutions to mitigate the problem.