In\u00a0Yeda Research v. Abbott GmbH. [2015-1662] (September 20, 2016), the Federal Circuit affirmed the district court’s decision that\u00a0U.S. Patent No. 5,344,915 was entitled to priority of its parent application, and thus was not invalid.<\/p>\n
The issue before the Federal Circuit was the legal standard for written description support. The Federal Circuit said that in\u00a0order for the claims of the\u00a0patent to benefit from the parent application’s filing date,\u00a0the claimed invention must be disclosed by the parent\u00a0application\u00a0in a way that clearly\u00a0allows a person of ordinary skill to recognize that the\u00a0inventor invented what is claimed and possessed the\u00a0claimed subject matter at the date of filing. \u00a0The Federal Circuit turned to the doctrine of inherent disclosure:\u00a0Under the doctrine of inherent disclosure, when a\u00a0specification describes an invention that has certain\u00a0undisclosed yet inherent properties, that specification\u00a0serves as adequate written description to support a subsequent\u00a0patent application that explicitly recites the
\ninvention\u2019s inherent properties.<\/p>\n
It was undisputed that the later-claimed protein with the same partial N-terminus sequence\u00a0and additional traits disclosed in the parent application. \u00a0The Federal Circuit concluded that the\u00a0application inherently discloses the remaining amino acids in the N-terminus\u00a0sequence of TBP-II and serves as adequate written description\u00a0support for the patent claiming TBP-II. The Federal Circuit said that it is not\u00a0necessary for an application to disclose a protein\u2019s complete\u00a0N-terminus sequence in order to provide an adequate written description.<\/p>\n
<\/p>\n","protected":false},"excerpt":{"rendered":"
In\u00a0Yeda Research v. Abbott GmbH. [2015-1662] (September 20, 2016), the Federal Circuit affirmed the district court’s decision that\u00a0U.S. Patent No. 5,344,915 was entitled to priority of its parent application, and thus was not invalid. The issue before the Federal Circuit … Continue reading