How does 37 CFR 1.130(b) apply to species and genus disclosures?

The application of 37 CFR 1.130(b) to species and genus disclosures depends on the relationship between the inventor’s prior disclosure and the intervening disclosure. The MPEP provides guidance on different scenarios:

1. Genus disclosure after species disclosure: 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).
2. Species disclosure after genus disclosure: 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).
3. Alternative species disclosure: 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 disqualified as prior art based on the inventor’s prior public disclosure.

To learn more:

• 37 CFR 1.130(b)
• species disclosure
• genus disclosure
• prior art disqualification

To learn more:

• 37 CFR 1.130(b)