The Chemist's Companion Guide to Patent Law (eBook)

CHRIS P. MILLER obtained his PhD in organic chemistry from the University of Pittsburgh and is a magna cum laude graduate of the Temple University Beasley School of Law. Dr. Miller has over a decade of research experience as a medicinal chemist in the pharmaceutical industry and has worked as an associate at a law firm as well as served as in-house patent counsel in big pharma and the biotech industry. Dr. Miller is licensed to practice law before the state bar of Pennsylvania and the United States Patent and Trademark Office. He currently is practicing both medicinal chemistry and patent law in the Boston area. MARK J. EVANS obtained his PhD from Northwestern University and his MBA from Penn State University; has fifteen years of pharmaceutical industry experience in the development of both small molecule and protein therapeutics at Wyeth Pharmaceuticals and Alexion Pharmaceuticals; and currently works in regulatory affairs in the Philadelphia area.

Disclaimer

Preface.

1 Patent Basics.

1.1 Introduction.

1.2 Patents as Property.

1.3 Patent Rights Are Rights to Exclude.

1.4 Patents Do Not Convey Freedom to Operate the Invention.

1.5 Contrasting Freedom to Operate with Patentability.

1.6 Assignment and Recording of Patents.

1.7 Why Have Patents?

2 The Patent Process.

2.1 An Overview of the Patent Process in the United States.

2.2 Post Grant Procedures at the USPTO.

2.2.a Patent Maintenance Fees.

2.2.b Reissue Applications and Patents.

2.2.c Ex Parte Procedures.

2.2.d Inter Partes Procedures.

2.3 Inequitable Conduct in Patent Prosecution.

3 Prior Art and the Chemical Invention.

3.1 What is Prior Art?

3.2 Prior Art That Can Be Antedated.

3.3 Prior Art That Is an Absolute Bar.

3.4 Section 102 References in Support of ObviousnessRejections.

3.5 Double Patenting.

3.6 Obviousness-Type Double Patenting.

3.7 Prior Art Hypothetical Example 1.

3.8 Hypothetical Example 2.

4 Inventorship.

4.1 Inventorship and Ownership of U.S Patents.

4.2 Patent Validity and Correct Listing of Inventorship.

4.3 Determining Inventorship.

5 Patent Claims.

5.1 Introduction to Claim Language and Structure.

5.2 Independent and Dependent Claim Types.

5.3 Claim Structure.

5.4 Transition Phrases.

5.5 Markush Claiming in Chemical Patents.

5.6 Claim Construction.

6 Basic Requirements of Patentability: Utility.

6.1 The Six Requirements of Patentability.

6.2 Statutory Subject Matter of the Utility Requirement.

6.3 What Makes a Chemical Invention Useful?

7 Basic Requirements of Patentability: Novelty.

7.1 Requirements of the Prior Art to Defeat Novelty.

7.2 Anticipation in Chemical Patents.

7.3 Anticipation of a Claimed Genus by a Species Falling Withinthat Genus.

7.4 Anticipation of a Species Claim by a Prior Art Genus.

7.5 Anticipation of a Range by a Prior Art Species FallingWithin that Range.

7.6 Inherent Anticipation.

8 Basic Requirements of Patentability:Nonobviousness.

8.1 The Basis for the Nonobviousness Requirement.

8.2 Understanding §103(a).

8.3 Graham Factors Analysis of Obviousness.

8.4 Focusing the Obviousness Inquiry: Prima Facie Obviousnessand the Chemical Invention.

8.5 Application of the TSM Test to the Chemical Arts.

8.6 Prior Art as a Whole Must Be Considered for TSM Tests.

8.7 Obviousness and Unpredictability in the Art.

8.8 Unexpected Results as Secondary Indices ofNonobviousness.

8.8.a Unexpected Results Must Be Taught by, or Flow from thePatent Application.

8.8.b Unexpected or Superior Results Can Be Demonstrated Througha Single Property.

8.8.c Unexpected Results: Different in Degree or Different inKind?

8.8.d The Claimed Invention Must Be Tested Against the ClosestPrior Art.

8.9 Prima Facie Obviousness Based Primarily on Similarity ofChemical Structure.

8.9.a Isomers and Homologues.

8.9.b Enantiomers.

8.10 Obviousness of a Species or Genus in Light of a Prior ArtGenus.

8.11 Obviousness of Ranges.

8.12 Changing the Sequence of Ingredient Addition.

8.13 Obviousness of Combining Equivalents Together for SameKnown Purpose.

8.14 Substituting Equivalents Known for the Same Purpose.

8.15 Purified Forms of Compounds or Materials.

9 Basic Requirements of Patentability: Written Description,Enablement, and Best Mode.

9.1 The Written Description Requirement.

9.2 Enablement.

9.3 Best Mode.

Afterword and Sources.

Acknowledgments.

Cases Cited.

Index.

"For anyone involved in patents or the patenting process, this book
will help clarify what must go on in every step, from musing over a
problem in an office, through the laboratory work, the many steps
involving patent agents and attorneys, through gaining and
maintaining a viable patent." (Anal Bioanal Chem, 2011)

"The book is suitably encyclopaedic and covers a substantial
fraction of the patent process. A compromise is struck between
suitable content and use as a student referral aid and the book
seems to get this exactly right." (Reviews, December
2010)"Authors Chris Miller and Mark Evans are practicing
chemists as well as patent law enthusiasts, and their
appreciation of both ends of the inventor-attorney axis
makes them ideally placed to advise researchers." (Nature
Chemistry, January 2011)

"This well-priced, up-to-date publication is attractively
printed and produced by the publisher. . . this book is especially
recommended for chemists and other members of drug discovery teams,
for graduate students, postdocs, for faculty members who have
interests in drug discovery, for others who would like a one-volume
review of U.S. patent law, and for the libraries that serve these
groups". (TMCnet.com, November 2010)

"This well-priced, up-to-date publication is attractively
printed and produced by the publisher. . . .this book is especially
recommended for chemists and other members of drug discovery teams,
for graduate students, postdocs, for faculty members who have
interests in drug discovery, for others who would like a one-volume
review of U.S. patent law, and for the libraries that serve these
groups". (TMCnet.com, 23 November 2010) "This well-priced,
up-to-date publication is attractively printed and produced by the
publisher. . . .This book is especially recommended for chemists
and other members of drug discovery teams, for graduate students,
postdocs, for faculty members who have interests in drug discovery,
for others who would like a one-volume review of U.S. patent law,
and for the libraries that serve these groups." (Journal
of Medicinal Chemistry, 2010)"

The title is accurate; it's a top-to-bottom look at the major
features of patent law as it applies to the business of
chemistry....... There's a lot of good stuff in this book. It's not
always light reading, but it's the most readable treatment of some
very complex patent issues that I've seen." (In the
Pipeline, September 13, 2010)