A number of dependent claims, blaze marks, and ipsis verbis assist

By Chris Holman

University of Minnesota v. Gilead

It is a follow-up to Dennis’s put up discussing a current Federal Circuit determination, College of Minnesota v. Gilead, whereby the college was basically precluded from claiming precedence to a provisional patent utility as a result of the provisional failed to offer sufficient written description assist for a later claimed invention.

Observe {that a} provisional patent utility isn’t required to incorporate any patent claims, since a provisional can by no means mature into an precise patent, however solely serves to offer an earlier efficient submitting date for a later-filed non-provisional patent utility, assuming sure necessities are happy. On this case, nevertheless, the college’s provisional utility included 63 claims, 49 of that are directed towards “[a] compound of Components I:

whereby: . . . .”

The our bodies of the claims defines varied attainable substituents on the seven “R” positions.  Right here are the claims filed within the provisional utility.

Declare 1 is the one unbiased declare, defining a genus of astronomical proportions. As Choose Lourie places it, “the listings of potentialities are so lengthy, and so interwoven, that it’s fairly unclear what number of compounds really fall throughout the described genera and subgenera.”  Declare 49 is the one declare that recites a single chemical “species,” presumably the molecule that the college thought was probably the most promising on the time the provisional was drafted.

Claims 2-48 lie between these two extremes, defining an enormous variety of subgenuses of the genus of compounds outlined by Declare 1 – by my rely over 500,000. (Observe that the phrases genus, subgenus, and species are relative phrases when used on this context.)  How, one may ask, can 47 patent claims outline over half one million subgenuses? The reply is thru using a number of dependent claims that rely on different a number of dependent claims, a follow that’s not permitted underneath U. S. regulation.

The Handbook of Patent Examiner Process (MPEP) defines a a number of dependent declare as “a dependent declare which refers again within the different to a couple of previous unbiased or dependent declare.”  It additionally cites 37 C.F.R. 1.75 for the proposition that “[a] a number of dependent declare shall not function a foundation for every other a number of dependent declare.”

37 C.F.R. 1.75 additional gives that for price calculation functions, a a number of dependent declare might be thought of to be that variety of claims to which direct reference is made therein. For price calculation functions additionally, any declare relying from a a number of dependent declare might be thought of to be that variety of claims to which direct reference is made in that a number of dependent declare.

This price calculation coverage displays the fact {that a} a number of dependent declare is solely a shorthand technique of reciting a number of discrete patent claims.  For instance, the provisional’s declare 12 recites “[t]he compound of any considered one of claims 1-11 whereby R2 is hydroxy.”  That’s merely shorthand for and the practical equal of 11 discrete dependent claims, i.e., the compound of declare 1 whereby R2 is hydroxy, the compound of declare 2 whereby R2 is hydroxy, the compound of declare 3 whereby R2 is hydroxy, the compound of declare 4 whereby R2 is hydroxy, and so forth..

Once you begin taking place the trail of a number of dependent claims that rely on different a number of dependent claims, which in flip rely on different a number of dependent claims, and so forth., the variety of discrete dependent claims can turn out to be immense. On this case, the provisional’s declare 47 is a a number of dependent declare that, inter alia, refers again to a different a number of dependent declare (declare 45), which in flip refers again to a 3rd a number of dependent declare (declare 33), which refers again to a fourth a number of dependent declare (declare 21), which refers again to a fifth a number of dependent declare (declare 13), which refers again to dependent declare 2. Should you comply with this path, you arrive at a subgenus that the College asserts is identical subgenus claimed within the later issued patent.  Assuming this to be appropriate, then, as Dennis identified in his put up, declare 47 does seem to embody a declare that particularly defines the later claimed subgenus.

The issue is, declare 47 additionally encompasses 250,880 different distinctive claims, every of which defines its personal subgenus. The massive quantity outcomes from the multiplicative impact of 5 iterations of a number of dependent claims. One can readily perceive why the PTO doesn’t enable a number of dependent claims that rely on different a number of dependent claims. However since this was solely a provisional utility, the claims have been by no means examined, and are merely serving as a car for disclosing an enormous variety of subgenuses.  By my rely, the provisional features a complete of 584,431 subgenus claims.

The Board concluded that the claims within the provisional didn’t present ipsis verbis assist for the later claimed subgenus, albeit with out offering a lot in the best way of rationalization, and the Federal Circuit affirmed. Black’s Regulation dictionary defines ipsis verbis as “within the similar phrases, versus considerably.” In my opinion, declare 47 does actually describe the later claimed subgenus, the issue is that it’s buried in astronomical variety of different subgenuses.

The courts have lengthy used the terminology of “blaze marks” when assessing written description assist for a later claimed chemical compound or genus.  The time period refers back to the follow of marking a path by the forest by slashing the bark of timber. Increasing upon that metaphor, think about an enormous forest whereby there lies hidden a wonderful waterfall.  One might make use of blaze marks to chart out a path resulting in the waterfall.  But when the entire timber within the forest have a blaze mark, the explorer would don’t know which marks to comply with, no matter the truth that one might return retrospectively and level out particular blaze marks that might outline a path resulting in the waterfall.  The purpose is, even when there are blaze marks defining a path to the waterfall, as a sensible matter it could be very tough to seek out the right path if there are too many different blaze marks defining an enormous variety of trails that don’t result in the waterfall.

Returning to the case at hand, I don’t suppose the end result would have modified if by some means the college might have, maybe with the assistance of AI, drafted 584,331 discrete dependent claims that might have been the practical equal of the a number of dependent claims that it did file in its provisional utility.  In some unspecified time in the future, the disclosure of too many different potentialities can, as a sensible matter, negate the disclosure of 1 particular subgenus. I’d counsel that that is the idea for the Board’s dedication that there was not ipsis verbis assist for the later claimed subgenus, nor have been there enough blaze marks pointing the best way.

And given the usual of overview, it’s not stunning to me that the Federal Circuit affirmed.  As said in its opinion, “the first issues in a written description evaluation are factual and have to be assessed on a case-by-case foundation. We thus overview the Board’s determination concerning written description for substantial proof.”