About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Conference & CLE Calendar | Main | Could Alice Be Used to Invalidate Diehr? Of Course It Could »

April 18, 2021


I'm writing from Europe. Can somebody clarify something for me, because to me the law here seems trite.

Suppose the claim in issue is directed to a chemical compound, per se. Suppose there is a prior written publication,D1, published ten years before the date of the claim, that discloses that very compound but does not enable it. Ergo, it fails to destroy novelty. But how about obviousness? In the intervening ten years there was much technical progress. The Parties present evidence whether what D1 discloses is something that the skilled person could readily have manufactured already, prior to the date of the claim. Would (could) the outcome of that argument over enablement be decisive to the obviousness debate?

The statement of "In the intervening ten years there was much technical progress." holds the answer.

The answer does not -- and cannot - include the D1 reference, for the simple reason that D1, as if its critical date is nothing more than science fiction for the chemical compound.

It would be necessary to use whatever that later item is (and THAT item's critical date) that occurred in that intervening ten years to deny patentability on the basis of obviousness.

Will you accept this answer?

Well, I am:

Verify your Comment

Previewing your Comment

This is only a preview. Your comment has not yet been posted.

Your comment could not be posted. Error type:
Your comment has been saved. Comments are moderated and will not appear until approved by the author. Post another comment

The letters and numbers you entered did not match the image. Please try again.

As a final step before posting your comment, enter the letters and numbers you see in the image below. This prevents automated programs from posting comments.

Having trouble reading this image? View an alternate.


Post a comment

Comments are moderated, and will not appear until the author has approved them.

Your Information

(Name is required. Email address will not be displayed with the comment.)

May 2021

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29
30 31