How do species and genus disclosures affect the application of 35 U.S.C. 102(b)(2)(B) exceptions?
The relationship between species and genus disclosures can significantly affect the application of 35 U.S.C. 102(b)(2)(B) exceptions. The MPEP provides guidance on different scenarios:
- Inventor discloses species, intervening disclosure is genus:
“If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art under 35 U.S.C. 102(a)(2).”
- Inventor discloses genus, intervening disclosure is species:
“If the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).”
- Inventor discloses one species, intervening disclosure is different species:
“If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art under 35 U.S.C. 102(a)(2).”
These guidelines help determine whether an intervening disclosure can be excepted as prior art based on the relationship between the inventor’s disclosure and the intervening disclosure.
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