Can a Markush claim include both compounds and processes?
Can a Markush claim include both compounds and processes?
Yes, a Markush claim can include both compounds and processes, as long as they share a common use or property. The MPEP 2117 provides guidance on this:
“A Markush claim may encompass a plurality of independent and distinct inventions where two or more members are so unrelated and diverse that a prior art reference anticipating the claim with respect to one of the members would not render the claim obvious under 35 U.S.C. 103 with respect to the other member(s).”
This means that while a Markush claim can include diverse elements, including both compounds and processes, they should still be related in some way. For example, a claim might list a group of compounds and processes for making those compounds. However, it’s important to note that if the compounds and processes are too diverse or unrelated, the claim might be rejected as an improper Markush grouping.
Inventors and patent practitioners should ensure that all members of the Markush group, whether compounds or processes, share a common use or property to maintain the validity of the claim.
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