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« Microsoft Corp. v. AT&T Corp. (2007) | Main | The "Unfairness" of World Intellectual Property Protection According to The New Yorker »

May 16, 2007

Comments

Your analysis suggests the courts may find an invention obvious if it is 1)obvious to try, 2) there are a finite number of predictable solutions, and 3) a predictably successful result.

So, my question is: How does this impact the patentability of single enantiomers?

If a racemate has a desired effect, it is known in the art that one of the isolated enantiomers will likely have superior efficacy, binding, etc., when compared to the other enantiomer (a predictable result, although the identity of the "better" enantiomer cannot be ascertained until both are tested).

It is arguably obvious to try and resolve the enantiomers. The pharmaceutical industry has been doing this for decades.

Since there are only two enantiomers (a finite number of solutions) and one of ordinary skill in the art would know of a finite number of methods, reagents, procedures that are taught by the prior art and are useful for resolving enantiomers (which makes the isolation of any given pair of enantiomers predictable, i.e., the prior art teaches that enantiomers can be separated) are the isolated enantiomers then obvious?

Exactly. The only way to overcome this conclusion would be 1) if there was no suggestion that one enantiomer was more active than the other, and/or 2) the active enantiomer has MUCH higher (i.e., unpredictably higher) activity than the racemate.

There is also some comfort in that chemistry is inherently much less predictable than the kind of mechanical equivalents in KSR.

Finally, you might argue that you didn't know which enantiomer was active, and the skilled worker did not know how to separate them (i.e., if they were not separated using routine methods known to work for that racemate). Clearly, this argument wouldn't work if you isolated enantiomer A from racemate AB that was related to racemate CD where it was known to be separable into enantiomers C and D (and where one enantiomer had more activity than the other).

Thanks for the comment.

The comments to this entry are closed.

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