27Oct 2016

Silvia Salvadori - Doctrine of Inherent Disclosure Invoked: Priority Claim Upheld{2:55 minutes to read} In a recent case, Yeda Research and Development Co. v. Abbott GmbH and Co., the Federal Circuit invoked the doctrine of inherent disclosure to uphold a priority claim to a German priority application that only partly described a protein claimed in patent 5,344,915. This action by the Federal Circuit underlies the importance of including a complete disclosure in a priority application. It also stresses the need between two important factors:

  1. Securing an early filing date; and
  2. Waiting until the claimed subject matter is fully characterized.

The arguments put forth were ultimately based on whether the ‘915 patent could benefit from the filing dates from either of its two priority applications. The problem was that neither of the priority applications disclosed the full N-terminus sequence claimed in the ’915 patent. Instead, they disclosed a partial N-terminus sequence, a protocol for obtaining the protein from its biological source and other properties of the protein.

However, the parties agreed that the only protein containing the N-terminus sequence set forth in one of the priority applications was the same protein claimed in the ’915 patent. The District Court found that the ‘915 patent was entitled to the benefit of the filing date of the priority application.

Under the law, “the claimed invention must be disclosed by a priority application …. in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing.”

What does this mean?

The District Court explained that under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties. Because the protein disclosed in the ‘915 was the only protein with the same partial sequence and additional traits disclosed in the priority application, the Federal Circuit concluded that the priority application inherently discloses the remaining amino acids in the N-terminus sequence of the protein and serves as adequate written description support for the ‘915.

The lesson learned here is that the information provided in the priority application was sufficient to distinguish the claimed protein from other proteins. Contact me with questions or comments at silvia@salvadorilaw.com.


Silvia Salvadori, PhD Silvia Salvadori, PhD



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