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

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

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by Chris P. Miller, Mark J. Evans
     
 

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ISBN-10: 0471782432

ISBN-13: 9780471782438

Pub. Date: 08/16/2010

Publisher: Wiley

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

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.

Product Details

ISBN-13:
9780471782438
Publisher:
Wiley
Publication date:
08/16/2010
Pages:
344
Product dimensions:
6.30(w) x 9.30(h) x 1.00(d)

Table of Contents

Disclaimer ix

Preface xi

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 Hypothetical 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 Within 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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The Chemist's Companion Guide to Patent Law 5 out of 5 based on 0 ratings. 1 reviews.
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