Caught on the Horns of a Dilemma

Submitted by patentadmin on Wed, 09/17/2008 - 11:46

A recent decision of the United States District Court for the District of Delaware (In Re: `318 Patent Infringement Litigation) has cast new light on the tension between two sometimes conflicting requirements for patent validity: “nonobviousness” and “enablement.”

In order to be valid, a patent must claim subject matter that, as a whole, would not have been obvious, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains.¹

Also in order to be valid, a patent must teach those skilled in the art how to make and to use the full scope of the claimed invention without undue experimentation.

In the `318 Patent Infringement Litigation case, the plaintiff Janssen Pharmaceutica sought to enforce a patent directed to a treatment for Alzheimer’s disease. The defendants, several generic drug companies, argued that the patent was invalid either because it was obvious in light of the prior art or because it failed to provide sufficient description of the claimed invention to enable its practice. The plaintiff tried to simultaneously argue that the prior art was such as to teach one of ordinary skill how to practice the invention, but not such as to render the invention obvious. The defendants responded that, in view of the minimal description of the invention set forth in the patent, it could not be both non-obvious and enabled. The Court agreed with the defendants and held the patent invalid for lack of enablement.

The lesson here is not to rely on extraneous material, i.e. the prior art, to explain your invention. Describe it fully in your patent.²

¹ I realize this is a complex sentence, but that is how patent attorneys write. If you want simple sentences,
read Hemingway.

² Preferably, the patent will be drafted by a patent attorney, who will write in sentences like those above.

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