A startup's genus claim and a hard PCT deadline

You need the names and contributions of the inventors because inventorship affects ownership and entitlement, and because the PCT application must name the correct applicants. You need the assignment or employment documents because NovaLab may not own the rights to the provisional or to the later application; a PCT filing by a non-entitled applicant creates serious problems at national phase. You need the priority document itself, not just the client's summary, to check whether the provisional discloses the genus or only PLA and the blend. You need a full public-disclosure history, including the provisional, any conference abstracts, the investor deck, and the competitor's launch, because anything published before the PCT filing date can be prior art for claims that do not enjoy priority. You need the competitor's product composition and test methods to see whether it falls within the proposed claim. You need search results or at least a preliminary search because the genus may be old. You need the client's commercial plans and jurisdictions to decide where to file and whether cost is justified. Finally, you need written confirmation of instructions, because the client is asking you to file broad claims against your advice and the deadline is short.

The instruction is understandable commercially but legally unsafe. A claim to all biodegradable polyesters with Tg 40-80°C and at least 20% degradation in 60 days is a broad genus. The provisional supports only PLA and a PLA/PHA blend. Under Article 84 EPC and PCT Article 6, claims must be supported by the description; a genus that extends far beyond the two tested embodiments may be objected to as lacking support or as requiring an undue burden to test the whole scope. Under Article 83 EPC, sufficiency is also a risk if the specification does not teach how to select other polyesters that meet the functional parameters. Priority is separate: the genus is not disclosed in the provisional, so the genus claim would have the PCT filing date, not the priority date. The competitor's January 2024 launch is before the PCT filing date and its published data show Tg 50°C and 25% degradation, so it falls within the proposed genus. If the genus claim cannot rely on priority, that launch is prior art under Article 54(2) EPC and destroys novelty. The promise to 'fix the claims later' is also wrong: PCT Article 19 and Article 34 amendments cannot add matter, and national phase amendments are limited by the disclosure. The safer course is to claim PLA and the PLA/PHA blend, with dependent claims to the parameters, and to keep the genus only if the client can supply a common structural feature and data across the scope.

First, tell the client in writing that the broad genus cannot be recommended and that 'fixing later' is not available. Explain the priority gap and the competitor's January 2024 launch. Second, confirm the 15 May 2024 deadline and obtain signed instructions, inventor details, assignment documents and the provisional text. Third, prepare the PCT application with claims to PLA and the 70:30 PLA/PHA blend, plus dependent claims to Tg, degradation rate, molecular weight and use. Include the priority claim and verify the priority document. Fourth, conduct a quick search before filing if time allows; if not, file with the narrow claims and commission a search for the national phase. Fifth, advise the client that the investor meeting does not change the legal position and that a broad unpublished claim is not an asset. Sixth, record the advice and the client's decision. If the client insists on the genus, ask for a written acknowledgement and explain that you will file only if instructed, but that the risk of a novelty objection based on the competitor's launch is high. Also check whether the provisional was published or whether any other disclosure occurred, because that can affect the priority claim.