What PTAB Markush Rejection Means For Biotech Applicants

Law360, New York (March 16, 2017, 12:19 PM EDT) -- Jeff B. Vockrodt

Christopher H. Yaen The Patent Trial and Appeal Board for the first time in many years affirmed an examiner's rejection of a claim as an "improper Markush" in Ex parte Chettier.[1] Patent examiners have increasingly turned to "Markush rejections"[2] in the wake of the U.S. patent and Trademark Office's 2011 guidelines on the subject.[3] This controversial practice attempts to force patent applicants to narrow their claimed genus or other Markush-type group even when those claims meet all other conditions for patentability such as novelty, nonobviousness, and enablement, for example. The board's focus on lack of common core structure...

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