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Cir. 2021), cert, denied, 143 S. Ct. 402 (2022), reh'g denied, No. 21-1566, 2023 WL 124509 (U.S. Jan. 9, 2023) Is the adequacy of the "written description of the invention" to be measured by the statutory standard of "in such full, clear, concise, and exact terms as to enable any...

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Bibliographic Details
Published in:The IP Litigator : Devoted to Intellectual Property Litigation and Enforcement 2023-01, Vol.29 (1), p.22-24
Main Author: Kern, Ronald C
Format: Article
Language:English
Subjects:
Adequacy
Amino acids
Antibodies
Disclosure
Inventions
Inventors
Petitions
State court decisions
T cell receptors
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Summary:Cir. 2021), cert, denied, 143 S. Ct. 402 (2022), reh'g denied, No. 21-1566, 2023 WL 124509 (U.S. Jan. 9, 2023) Is the adequacy of the "written description of the invention" to be measured by the statutory standard of "in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same," or is it to be evaluated under the Federal Circuit's test, which demands that the "written description of the invention" demonstrate the inventor's "possession" of "the full scope of the claimed invention," including all "known and unknown" variations of each component? According to the Federal Circuit, the disclosure of one scFv that binds to CD 19 and one scFv that binds to a PSMA "in the manner provided in this patent does not provide information sufficient to establish that a skilled artisan would understand how to identify the species of scFvs capable of binding to the limitless number of targets as the claims require." According to the Federal Circuit, to satisfy written description "the inventors needed to convey that they possessed the claimed invention, which encompasses all scFvs, known and unknown, as part of the claimed CAR that bind to a selected target." [...]rehearing should be granted. erred in importing a "full scope" requirement into the enablement inquiry, it "will call into serious question that court's 'possessed the full scope' test that it applies to assess written description."
ISSN:1086-914X