By Jason Derry --
Claim drafting is somewhat of an art that takes time and practice to learn. Practitioners typically develop various styles and formats over time. One of the best ways to assist in developing good claim drafting skills is to be mindful of the types of claims that are being issued by the U.S. Patent and Trademark Office that relate to particular fields of interest. For example, a claim drafter may use issued claims as models and templates to facilitate prosecution to avoid many 35 U.S.C. § 112 rejections that might otherwise arise. In addition, the drafter may be able to maximize claim scope by covering more aspects of an invention in dependent claims by modeling the claim sets others have successfully prosecuted to issuance. Practitioners are likely to develop their own style of claim drafting by monitoring and studying issued claims, as different claim language can be used to cover similar subject matter.
From time to time, Patent Docs will provide examples of issued claims from different biotechnology oriented fields. We provide these examples as a resource for our readers' reference and consideration. We will not provide much in the way of analysis or comments on the patents themselves, and will not study prosecution histories, unless otherwise noted. We will provide some comments on the format of the claims, and reference support for various aspects of claims where appropriate.
This week we highlight an example of recently issued claims that cover antibodies claimed by reference to a binding target.
U.S. Patent No. 7,348,414, issued March 25, 2008 to Genentech Inc., claims an antibody that binds to a particular polypeptide identified by sequence.
Claim 1 of the '414 patent reads as follows:
1. An isolated antibody that specifically binds to the polypeptide of SEQ ID NO:464.
The '414 patent has dependent claims directed to antibody fragments, monoclonal antibodies, humanized antibodies, and labeled antibodies, as follows:
2. The antibody of claim 1 which is a monoclonal antibody.
3. The antibody of claim 1 which is a humanized antibody.
4. An antigen-binding fragment of the antibody of claim 1.
5. The antibody of claim 1 which is labeled.
The patent does not provide any actual examples of such antibodies that bind to SEQ ID NO:464, but does provide definitions and discusses general teachings from the art relating to antibody generation. The patent also provides a prophetic example (Example 10) that discusses how to generate monoclonal antibodies of the invention.
Thus, the '414 patent provides an example of claiming antibodies to a newly discovered protein, even in the absence of having generated any actual antibodies that bind to that protein. The allowance of such claims is consistent with current USPTO practice in view of Noelle v Lederman, 355 F.3d 1343, 1349 (Fed. Cir. 2004) (see "The Evolution of the Written Description Requirement in the Context of Biotechnological Inventions" for a brief discussion of Noelle v. Lederman with respect to written description relative to antibody claiming).
Jason Derry, Ph.D., who graduated with honors from DePaul University College of Law, is a molecular biologist and founding author of Patent Docs.
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