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

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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 bookwill help clarify what must go on in every step, from musing over aproblem in an office, through the laboratory work, the many stepsinvolving patent agents and attorneys, through gaining andmaintaining a viable patent." (Anal Bioanal Chem, 2011)

"The book is suitably encyclopaedic and covers a substantialfraction of the patent process. A compromise is struck betweensuitable content and use as a student referral aid and the bookseems to get this exactly right." (Reviews, December2010)“Authors Chris Miller and Mark Evans are practicingchemists as well as patent law enthusiasts, and theirappreciation  of both ends of the inventor–attorney axismakes them ideally placed to advise researchers.” (NatureChemistry, January 2011)

"This well-priced, up-to-date publication is attractivelyprinted and produced by the publisher. . . this book is especiallyrecommended for chemists and other members of drug discovery teams,for graduate students, postdocs, for faculty members who haveinterests in drug discovery, for others who would like a one-volumereview of U.S. patent law, and for the libraries that serve thesegroups". (, November 2010)

"This well-priced, up-to-date publication is attractivelyprinted and produced by the publisher. . . .this book is especiallyrecommended for chemists and other members of drug discovery teams,for graduate students, postdocs, for faculty members who haveinterests in drug discovery, for others who would like a one-volumereview of U.S. patent law, and for the libraries that serve thesegroups". (, 23 November 2010) "This well-priced,up-to-date publication is attractively printed and produced by thepublisher. . . .This book is especially recommended for chemistsand 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." (Journalof Medicinal Chemistry, 2010)"

The title is accurate; it's a top-to-bottom look at the majorfeatures of patent law as it applies to the business ofchemistry....... There's a lot of good stuff in this book. It's notalways light reading, but it's the most readable treatment of somevery complex patent issues that I've seen." (In thePipeline, September 13, 2010)

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Product Details

  • ISBN-13: 9780471782438
  • Publisher: Wiley
  • Publication date: 8/16/2010
  • Edition number: 1
  • Pages: 344
  • 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 fromthe University of Pittsburgh and is a magna cum laude graduate ofthe Temple University Beasley School of Law. Dr. Miller has over adecade of research experience as a medicinal chemist in thepharmaceutical industry and has worked as an associate at a lawfirm as well as served as in-house patent counsel in big pharma andthe biotech industry. Dr. Miller is licensed to practice law beforethe state bar of Pennsylvania and the United States Patent andTrademark Office. He currently is practicing both medicinalchemistry and patent law in the Boston area.

MARK J. EVANS obtained his PhD from NorthwesternUniversity and his MBA from Penn State University; has fifteenyears of pharmaceutical industry experience in the development ofboth small molecule and protein therapeutics at WyethPharmaceuticals and Alexion Pharmaceuticals; and currently works inregulatory affairs in the Philadelphia area.

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Table of Contents



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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