Legal Question in Intellectual Property in Indiana

invalidation of a patent

There is a patent on a compound the process for the formation of which is very much obvious to perform i.e. there is sufficient motivation present in the prior art to perform that process and obtain that compound. If the outcome of this process is unexpacted, can this process be invalidated on the basis of strong ground of obviousness.


Asked on 6/04/08, 3:39 am

2 Answers from Attorneys
Daniel Press Chung & Press, P.C.

Re: invalidation of a patent

To follow up in response to your email (my response to your email bounced), given just the facts you posit (not stated here), my guess is that it would not be patentable, but it may depend on how significant the unexpected result is, as well as how long all of the prior art has been known, and potentially other factors. Obviousness is almost always subjective.

If this is a real situation regarding a possible patent application, I would suggest that you consult with a patent lawyer with biochem/pharmaceutical expertise. I do patent litigation (and would be interested in discussing this matter further if it involves the assertion of potential infringement of a patent that is subject to challenge on this ground), but do not handle patent prosecution/applications. If you need a referral, please let me know.

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Answered on 6/05/08, 10:13 am
Daniel Press Chung & Press, P.C.

Re: invalidation of a patent

Unexpected results argues against obviousness, but it would depend on how obvious it would be to perform the steps of the process.

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Answered on 6/04/08, 10:59 am


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