How does conception of a species relate to conception of a genus in patent law?
The relationship between conception of a species and conception of a genus in patent law is complex and nuanced. According to MPEP 2138.04:
“The first to conceive of a species is not necessarily the first to conceive of the generic invention. In re Jolley, 308 F.3d 1317, 1323 n.2, 64 USPQ2d 1901, 1905 n.2 (Fed. Cir. 2002).”
This means that inventing a specific example (species) within a broader category (genus) doesn’t automatically grant you conception of the entire category. The MPEP further clarifies:
“Further, while conception of a species within a genus may constitute conception of the genus, conception of one species and the genus may not constitute conception of another species in the genus.”
This principle is particularly important in chemical and biological inventions. For example:
“Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988) (conception of a chemical requires both the idea of the structure of the chemical and possession of an operative method of making it).”
This means that in some cases, especially in complex fields, conceiving of one specific example doesn’t necessarily mean you’ve conceived of all possible variations or the entire broader category. Each case must be evaluated based on its specific circumstances and the nature of the invention.
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