Patent Law

Genus Overclaim

By Gary Odom and Jordan Kuhn

Dr. Kenneth Alonso lost his appeal for patenting a cancer treatment because, while he claimed a genus, he had only disclosed some species, and insufficiently so. Disclosure coverage is at issue when the claimed genus is wide-ranging, and the disclosed species may not be fully representative. "A patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated."

In re Kenneth Alonso (CAFC 2008-1079)

To meet the written description requirement, a disclosure must be sufficient "to convince a person of skill in the art that the inventor possessed the invention" as of the filing date.

The written description requirement of 35 U.S.C. § 112, ¶ 1, is straightforward: "The specification shall contain a written description of the invention . . . ." To satisfy this requirement, the specification must describe the invention in sufficient detail so "that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995).

The requirement "serves a teaching function, as a 'quid pro quo' in which the public is given 'meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.'" Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922 (Fed. Cir. 2004) (quoting Enzo Biochem, Inc. v. GenProbe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)).³

³ The requirement is rigorous, but not exhaustive: "[I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention." LizardTech, 424 F.3d at 1345.

Overclaiming a genus happens when there may be "unpredictability" of results with species other than those disclosed.

A genus can be described by disclosing: (1) a representative number of species in that genus; or (2) its "relevant identifying characteristics, "such as a complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics." Enzo, 323 F.3d at 964.

We have previously held in a similar context that "a patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated." Noelle v. Lederman, 355 F.3d 1343, 1350 (Fed. Cir. 2004).

BPAI rejection affirmed.

Full post as published by The Patent Prospector on November 04, 2008 (boomark / email).