How do working examples relate to claiming a genus in patents?
When claiming a genus in a patent application, working examples play an important role in demonstrating enablement. The MPEP 2164.02 provides guidance on this issue:
“For a claimed genus, representative examples together with a statement applicable to the genus as a whole will ordinarily be sufficient if one skilled in the art (in view of level of skill, state of the art and the information in the specification) would expect the claimed genus could be used in that manner without undue experimentation.”
Key points about working examples and genus claims:
- Representative examples can support enablement for the entire genus
- The examples should be considered along with the level of skill in the art and the specification’s information
- Proof of enablement for other members of the genus may be required if the examiner provides adequate reasons
- The examiner must establish that a person skilled in the art could not use the genus as a whole without undue experimentation
It’s important to note that the number of examples needed depends on the predictability of the art and the breadth of the claims.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2164.02 - Working And Prophetic Examples,
Patent Law,
Patent Procedure