QUICK TIPS -

35 U.S.C. 112 Tips:

1) Does your U.S. Examiner assert that not enough representative species are described in the specification?

MPEP Section 2163 II.A.3(a)(ii) says that “(t)he written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species…” Although the word “may” implies that there are other ways to satisfy the requirement, the quoted portion of the MPEP does not specify any. AbbVie v. Janssen Biotech, 2014 WL 2937477 (Fed. Cir. 1 July 2014) helpfully reaffirms that one can also resolve a written description rejection by pointing to a description in the specification of “structural features common to the members of the genus…” (slip op. at 22)

Please see full Newsletter below for more information.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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