ARTICLE · 04 MARCH 2004

Priority And Two-Way Interference-in-Fact Test Not Satisfied Where Claimed Invention Relied on Functional Characteristics

McDermott Will & Emery

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In a case turning on priority of invention, the U.S. Court of Appeals for the Federal Circuit affirmed that the disclosure of a murine antibody or its activity and antigen failed to adequately describe additional species or genus claims.

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David Gay PhD

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In a case turning on priority of invention, the U.S. Court of Appeals for the Federal Circuit affirmed that the disclosure of a murine antibody or its activity and antigen failed to adequately describe additional species or genus claims. Competing claims to murine and human forms were further found to fail the two-way interference-in-fact test. Noelle v. Lederman, Case No. 02-1187 (Fed. Cir. Jan. 20, 2004).

The application No. 08/742,480 to Noelle (the `480 application) claims antibodies to the genus, murine and human forms of CD40CR antigen. The patent No. 5,474,771 to Lederman (the `771 patent) claims a CD40CR antibody to the human antigen. The interference count encompassed all three forms of CD40CR antibody, which inhibits immune signaling and is clinically useful for treating allergic reactions and autoimmune diseases. Analogizing antibody claims to DNA claims, the Board of Patent Appeals and Interferences (the Board) determined that the priority disclosure of the murine

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