Written Description of Invention That Involves Biological Macromolecule Does Not Require Recitation of a Known Structure

In an appeal from a decision of the Board of Patent Appeals and Interferences ("the Board") in an interference involving a patent application and an issued patent covering a mutant poxvirus vaccine, the Federal Circuit affirmed the Board’s priority award and held, inter alia, that for purposes of providing adequate written description it is not required of a specification to disclose (1) examples; (2) actual reduction to practice of the invention; and (3) the known structure of a biological macromolecule. Falko-Gunter Falkner et al. v. Stephen Inglis et al. , Case Nos. 05-1324 (May 26, 2006) (Gajarsa J.).

Falkner held a patent ("the Falkner patent") and Inglis filed a patent application ("the Inglis application"), both claiming vaccines made from a poxvirus vector having deleted or inactivated essential genes so as to reduce the risk of infection by the virus because it can not replicate in an inoculee. An interference proceeding resulted in the Board according the Inglis application