Legal issues patents

The final section of an issued patent is the claims, S. A United States patent is requited bylaw to have at least one claim. The claims lepiesent the legal definition and boundaries of the rights resulting from the patent grant. Patent claims are analogous to the legal description which one might find on a tide to real estate. 

The legally trained member of the interdisciplinary committee should provide insight as to the significance of the technological advance and as to whether any commercial product ultimately derived from the invention could be protected by an issued patent. Another important function of this person is to determine the scope of the invention based on preceding events, pubHcations, or activities which may have otherwise limited the breadth of the invention. To this end, U.S. law requires that an invention satisfy a number of prerequisites or requirements before issuing a patent novelty, nonobviousness, utiHty, and disclosure. 

The purpose of the synthesis also has a bearing on the type of procedure chosen. Thus, in medicinal chemistry, synthetic procedures that allow for the greatest compound diversity as late as possible in the synthesis are desirable, but these may not be the optimum procedures once the final drug candidate is identified. Additionally, procedures that require chromatography for product purification may be perfectly acceptable on a laboratory scale, but are often undesirable on an industrial scale. Legal issues can also influence the choice of synthetic procedure if the preferred route is covered by a competitors patent. Therefore, it is not possible to say categorically that one synthetic route is superior to another until all of the various factors have been fully assessed, and even then the result is only valid for that point in time, as a new or improved procedure may appear at any time. 

See MPEP sections 1480-1485 for a description of the processes involved in the issuance of a certificate of correction. As a practical matter, you may have encountered certificates of correction in your normal patent experience. The corrections made to patent specifications are not made in the patent specifications per se but rather are included as auxiliary sheets placed at the end of the issued patent and provide instructions to the amendments that have been entered into the record. The patent as corrected will have the same legal effect as if the patent had been correctly issued in the first place (35 U.S.C. 254). 

When it comes to the legal requirements for the protection of intellectual property the position is not so clear-cut. For instance in the US the PTO issues patents on the basis of the date of invention, i.e. the date in the laboratory notebook, not the date of application as is the case with other countries. 

Meyer, S.J. (1991). Legal issues in biotechnology patenting. In Recombinant DNA Technology and Applications. 

There are literally thousands of hydrogenation catalysts and ligand systems available for the preparation of unnatural amino acids that can be used at scale. In many cases, the ligands were developed to circumvent legal and patent issues and to allow a company freedom to operate. Despite the plethora of ligands in the literature, few are available in bulk quantities, and thus, most of these have arisen from companies applying their own technology. 

A useful overview of legal issues relating to the patenting of DNA. R. Eisenberg, Emory LawJ. 1990, 39, 721-745. 

INPADOC (International Patent Documentation Center) is the most comprehensive tttbliographic database of scientific and technological patent documents in the world. The stock encompasses more than 26 miUion patent documents, more than 59 miUion legal status data, and about 10 million patent famihes (January, 2003). The database contains more than 35 milhon patent citations from 71 patent-issuing organizations (European Patent Office, World Intellectual Property Organization (WlPO)) and is updated weekly with about 40 000 new citations. 

The Court of Appeals for the USA Federal Circuit issued (1992) a decision that could strengthen the legal position that so-called pure software could be patented (Arrhythmia Research Technology vs. Corazonix Corp. 22 USPQ2d 103 of CAFC march 12,1992). 

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