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

By Chris Holman

This can be a follow-up to Dennis’s put up discussing a latest Federal Circuit determination, College of Minnesota v. Gilead, whereby the college was primarily precluded from claiming precedence to a provisional patent utility as a result of the provisional failed to offer sufficient written description help for a later claimed invention.

Observe {that a} provisional patent utility just 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 glad. On this case, nevertheless, the college’s provisional utility included 63 claims, 49 of that are directed towards “[a] compound of Formulation I:

whereby: . . . .”

The our bodies of the claims defines varied potential 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 prospects are so lengthy, and so interwoven, that it’s fairly unclear what number of compounds truly 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 would possibly ask, can 47 patent claims outline over half one million subgenuses? The reply is thru the usage of a number of dependent claims that rely upon different a number of dependent claims, a apply that isn’t permitted underneath U. S. legislation.

The Guide of Patent Examiner Process (MPEP) defines a a number of dependent declare as “a dependent declare which refers again within the different to multiple 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 another a number of dependent declare.”

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

This payment calculation coverage displays the truth {that a} a number of dependent declare is just 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 purposeful 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..

If you begin happening the trail of a number of dependent claims that rely upon different a number of dependent claims, which in flip depend upon 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. In the event 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 right, 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 large 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 depend upon 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 whole of 584,431 subgenus claims.

The Board concluded that the claims within the provisional didn’t present ipsis verbis help for the later claimed subgenus, albeit with out offering a lot in the way in which of clarification, and the Federal Circuit affirmed. Black’s Regulation dictionary defines ipsis verbis as “within the similar phrases, versus considerably.” For my part, 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 help for a later claimed chemical compound or genus. The time period refers back to the apply of marking a path by means of the forest by slashing the bark of bushes. Increasing upon that metaphor, think about an unlimited forest whereby there lies hidden a wonderful waterfall. One may make use of blaze marks to chart out a path resulting in the waterfall. But when all the bushes within the forest have a blaze mark, the explorer would don’t know which marks to comply with, no matter the truth that one may return retrospectively and level out particular blaze marks that will 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 troublesome to seek out the proper 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 assume the end result would have modified if someway the college may have, maybe with the assistance of AI, drafted 584,331 discrete dependent claims that will have been the purposeful equal of the a number of dependent claims that it did file in its provisional utility. Sooner or later, the disclosure of too many various prospects can, as a sensible matter, negate the disclosure of 1 particular subgenus. I’d counsel that that is the premise for the Board’s dedication that there was not ipsis verbis help for the later claimed subgenus, nor have been there ample blaze marks pointing the way in which.

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