Patents in combi-space: Patent challenges in combinatorial chemistry

Biotechnology and Bioengineering

Volumn 61, Issue 1, 1998, Pages 69-75

  Caldwell, John W ^a  

^a Woodcock Washburn Kurtz   (United States)

Author keywords

Algorithm; Array; Combinatorial chemistry; Description requirement; Library; Patent; Piracy; Utility

Indexed keywords

ALGORITHMS; PATENTS AND INVENTIONS;

COMBINATORIAL CHEMISTRY;

BIOCHEMISTRY;

ALGORITHM; ARTICLE; CHEMICAL ANALYSIS; CHEMISTRY; PROFIT;

EID: 0032401973     PISSN: 00063592     EISSN: None     Source Type: Journal    
DOI: 10.1002/(SICI)1097-0290(199824)61:1<69::AID-BIT12>3.0.CO;2-4     Document Type: Article

References (13)

1. The present discussion is, of necessity, general in scope. Particularized advice should be obtained from experienced patent counsel.
2. Several treaties, notably the Patent Cooperation Treaty and the European Patent Convention, provide mechanisms for effecting filing of a patent application with simultaneous effect in many countries. In the case of the European Patent Convention, examination, allowance and protest activities are conducted before a central body. In all cases, however, the patent rights are conferred by the member states in the form of individual patent grants. Only those member states can enforce such patent rights. Confusion has arisen due to the early publication of patent specifications by those bodies. These publications are not patents; they are only applications, and no rights to exclude are conferred.
3. Equivalent requirements generally exist in other jurisdictions.
4. 35 U.S.C. § 101. Plant and design patents also exist, but are not germane to this discussion.
5. 383 U.S. 519 (1966).
6. 992 F. 2d 1197 (Fed. Cir 1993).
7. Cross v. Iizuka, 753 F.2d 1040, 1044 (Fed. Cir. 1985).
8. These are: new and useful processes, machines, manufactures, compositions of matter and improvements thereof. 35 U.S.C. § 101. The statutory subject matter requirement and the utility requirement are sometimes viewed as related and have frequently been confused with each other in court decisions.
9. For example, in many European countries, the second pharmaceutical use of a compound is not patentable. Largely for political and religious reasons, in many countries, some types of inventions in the medical and pharmaceutical field are not patentable as well. This is a particular problem in Mediterranean countries and in Central and South America.
10. The Supreme Court has observed that Congress intended section 101 to include "anything under the sun that is made by man" Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980), quoting S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). There are, however, qualifications to the apparent sweep of this statement. Excluded from patentability is subject matter in the categories of "laws of nature, physical phenomena, and abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981). See Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
11. 450 U.S. 175, 187 (1981).
12. 33 F.3d 1526 (Fed. Cir. 1994).
13. 35 U.S.C. 103 (a) provides in part that "Patentability shall not be negatived by the manner in which the invention was made."