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 submit discussing a current Federal Circuit determination, College of Minnesota v. Gilead, whereby the college was primarily precluded from claiming precedence to a provisional patent software as a result of the provisional failed to offer satisfactory written description assist for a later claimed invention.

Be aware {that a} provisional patent software 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 software, assuming sure necessities are glad. On this case, nonetheless, the college’s provisional software included 63 claims, 49 of that are directed towards “[a] compound of Method I:

whereby: . . . .”

The our bodies of the claims defines numerous potential substituents on the seven “R” positions.  Right here are the claims filed within the provisional software.

Declare 1 is the one unbiased declare, defining a genus of astronomical proportions. As Decide 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 essentially 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. (Be aware 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 the usage of a number of dependent claims that depend on different a number of dependent claims, a observe that isn’t permitted beneath 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 some other a number of dependent declare.”

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

This charge 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 one in every 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 on..

If you begin happening the trail of a number of dependent claims that depend on different a number of dependent claims, which in flip rely upon different a number of dependent claims, and so on., the variety of discrete dependent claims can change into 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. When you comply with this path, you arrive at a subgenus that the College asserts is similar subgenus claimed within the later issued patent.  Assuming this to be appropriate, then, as Dennis identified in his submit, 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 upon different a number of dependent claims. However since this was solely a provisional software, 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 way in which 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 observe of marking a path by way of the forest by slashing the bark of bushes. Increasing upon that metaphor, think about an unlimited forest whereby there lies hidden a lovely waterfall.  One might make use of blaze marks to chart out a path resulting in the waterfall.  But when the entire bushes within the forest have a blaze mark, the explorer would do not know which marks to comply with, no matter the truth that one might return retrospectively and level out particular blaze marks that may 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 will be very tough to search 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 in some way the college might have, maybe with the assistance of AI, drafted 584,331 discrete dependent claims that may have been the purposeful equal of the a number of dependent claims that it did file in its provisional software.  In some unspecified time in the future, 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 assist 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 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 relating to written description for substantial proof.”