How does the USPTO handle genus claims when species are disclosed in the prior art?

The United States Patent and Trademark Office (USPTO) has specific guidelines for handling genus claims when species are disclosed in the prior art. According to MPEP 2131.02, the treatment of such claims depends on the relationship between the disclosed species and the claimed genus.

The MPEP states:

“A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named.”

This means that:

• If a prior art reference clearly names a species that falls within the claimed genus, the genus claim is anticipated.
• The anticipation stands even if the prior art reference discloses multiple species.
• However, if the prior art only discloses a genus without specifically naming the claimed species, it may not anticipate the species claim.

Patent examiners must carefully evaluate the prior art disclosures to determine whether they explicitly or implicitly teach the claimed species within a genus.

To learn more:

• Genus claims
• Species disclosure
• Prior art
• USPTO guidelines