The Chemist's Companion Guide to Patent Law / Edition 1

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Overview

Written by an individual with experience as both a chemist and a patent attorney, The Chemist's Companion Guide to Patent Law covers everything the student or working chemist needs to know about patentability, explaining important concepts of patent law (such as novelty, non-obviousness, and freedom-to-operate) in easy-to-understand terms. Through abundant examples from case law as well as real-world situations with which a researcher might be faced, this book provides readers with a better understanding of how to put that knowledge into practice.

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Editorial Reviews

From the Publisher

"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)

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Product Details

  • ISBN-13: 9780471782438
  • Publisher: Wiley, John & Sons, Incorporated
  • Publication date: 8/16/2010
  • Edition number: 1
  • Pages: 344
  • Sales rank: 1,394,429
  • Product dimensions: 6.30 (w) x 9.30 (h) x 1.00 (d)

Meet the Author

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.

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Table of Contents

Disclaimer

Preface

1 Patent Basics 1

1.1 Introduction 1

1.2 Patents as Property 1

1.3 Patent Rights Are Rights to Exclude 2

1.4 Patents Do Not Convey Freedom to Operate the Invention 4

1.5 Contrasting Freedom to Operate with Patentability 5

1.6 Assignment and Recording of Patents 15

1.7 Why Have Patents? 16

2 The Patent Process 19

2.1 An Overview of the Patent Process in the United States 19

2.2 Post Grant Procedures at the USPTO 46

2.2.a Patent Maintenance Fees 47

2.2.b Reissue Applications and Patents 49

2.2.c Ex Parte Procedures 54

2.2.d Inter Partes Procedures 58

2.3 Inequitable Conduct in Patent Prosecution 60

3 Prior Art and the Chemical Invention 80

3.1 What is Prior Art? 80

3.2 Prior Art That Can Be Antedated 83

3.2.a §102(a) 83

3.2.b §102(e) 88

3.2.c §102(f) 90

3.2.d §102(g) 90

3.3 Prior Art That Is an Absolute Bar 95

3.3.a §102(b) 96

3.3.b §102(c) 99

3.3.c §102(d) 99

3.4 Section 102 References in Support of Obviousness Rejections 100

3.5 Double Patenting 102

3.6 Obviousness-Type Double Patenting 104

3.7 Prior Art Hypotheitical Example 1 105

3.8 Hypothetical Example 2 108

4 Inventorship 117

4.1 Inventorship and Ownership of U.S. Patents 117

4.2 Patent Validity and Correct Listing of Inventorship 121

4.3 Determining Inventorship 126

5 Patent Claims 134

5.1 Introduction to Claim language and Structure 134

5.2 Independent and Dependent Claim Types 134

5.3 Claim Structure 138

5.4 Transition Phrases 142

5.5 Markush Claiming in Chemical Patents 146

5.6 Claim Construction 148

6 Basic Requirements of Patentability: Utility 156

6.1 The Six Requirements of Patentability 156

6.2 Statutory Subject Matter of the Utility Requirement 158

6.3 What Makes a Chemical Invention Useful? 161

7 Basic Requirements of Patentability: Novelty 168

7.1 Requirements of the Prior Art to Defeat Novelty 169

7.2 Anticipation in Chemical Patents 170

7.3 Anticipation of a Claimed Genus by a Species Falling Within that Genus 180

7.4 Anticipation of a Species Claim by a Prior Art Genus 187

7.5 Anticipation of a Range by a Prior Art Species Falling Sithin that Range 192

7.6 Inherent Anticipation 193

8 Basic Requirements of Patentability: Nonobviousness 198

8.1 The Basis for the Nonobviousness Requirement 198

8.2 Understanding §103(a) 199

8.3 Graham Factors Analysis of Obviousness 203

8.4 Focusing the Obviousness Inquiry: Prima Facie Obviousness and the Chemical Invention 207

8.5 Application of the TSM Test to the Chemical Arts 210

8.6 Prior Art as a Whole Must Be Considered for TSM Tests 217

8.7 Obviousness and Unpredictability in the Art 219

8.8 Unexpected Results as Secondary Indices of Nonobviousness 225

8.8.a Unexpected Results Must Be Taught by, or Flow from the patent Application 227

8.8.b Unexpected or Superior Results Can Be Demonstrated Through a Single Property 228

8.8.c Unexpected Results: Different in Degree or Different in Kind? 229

8.8.d The Claimed Invention Must Be Tested Against the Closest Prior Art 233

8.9 Prima Facie Obviousness Based Primarily on similarity of Chemical Structure 234

8.9.a Isomers and Homologues 235

8.9.b Enantiomers 238

8.10 Obviousness of a Species or Genus in Light of a Prior Art Genus 250

8.11 Obviousness of Ranges 259

8.12 Changing the Sequence of Ingredient Addition 268

8.13 Obviousness of Combining Equivalents Together for Same Known Purpose 270

8.14 Substituting Equivalents Known for the Same Purpose 272

8.15 Purified Forms of Compounds or Materials 274

9 Basic Requirements of Patentability: Written Description, Enablement, and Best Mode 281

9.1 The Written Description Requirement 282

9.2 Enablement 303

9.3 Best Mode 312

Afterword and Sources 318

Acknowledgments 320

Cases Cited 321

Index 327

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