Inherent Disclosure Supplies Adequate Written Description For Priority Claim

Addressing the doctrine of inherent disclosure, the US Court of Appeals for the Federal Circuit held that a protein can satisfy the written description requirement when the priority application discloses only a partial amino acid sequence. Yeda Research and Development v. Abbott GMBH & Co. KG, Case No. 15-1662 (Fed. Cir., Sept. 20, 2016) (Reyna, J).

Abbott is the owner of a patent that discloses and claims a protein called TBP-II with a particular 15 amino acid sequence at its N-terminus. The patent claimed priority to two applications that only disclosed a partial (9 out of 15) N-terminus amino acid sequence, a protocol for obtaining TBP-II from its biological source, and other properties of the protein. At issue was whether the patent was entitled to claim priority to the earlier applications. If not, it would be invalid as anticipated by an intervening prior art reference that described TBP-II.