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ARTICLE · 28 SEPTEMBER 2016

Inherent Disclosure Supports Priority Claim

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The district court found that the ‘915 patent was entitled to the benefit of the filing date of the ‘072 application.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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In 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 the claimed protein. Although the patent owner prevailed in this case, the fact pattern underscores the importance of including a robust disclosure in priority applications. It also highlights the tension between securing an early filing date and waiting until the claimed subject matter has been fully characterized–a dilemma faced by many applicants in biotechnology fields.

The Patent At Issue

The patent at issue was Abbott’s U.S. Patent No. 5,344,915. The court focused on claim 1:

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