SmithKline Beecham Corp. v. Apotex: Experimental Use as Applied to Claim Scope

By: N. Scott Pierce

The following is the abstract from the article:

Claims now must explicitly or inherently include a feature or intended use that is the subject of experimentation in order to negate a finding of public use under 35 U.S.C. § 102(b).  Reasoning that experimental use cannot extend beyond improvement or verification of express or inherent features of an invention as claimed, the Court of Appeals for the Federal Circuit (CAFC) held that testing of a claimed compound, where the language of the claim is silent is to "any property, commercially significant amount, or use of the compound," such as its safety and efficacy, may not, as a matter of law, qualify as negation of public use.  This prohibition is based on a misinterpretation by the court of case precedent and will have a chilling effect on experimentation.  The full scope of patent protection that previously has been available will now be denied to an inventor making "a bona fide effort to bring his invention to perfection."

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By: N. Scott Pierce

The following is the abstract from the article:

Claims now must explicitly or inherently include a feature or intended use that is the subject of experimentation in order to negate a finding of public use under 35 U.S.C. § 102(b).  Reasoning that experimental use cannot extend beyond improvement or verification of express or inherent features of an invention as claimed, the Court of Appeals for the Federal Circuit (CAFC) held that testing of a claimed compound, where the language of the claim is silent is to "any property, commercially significant amount, or use of the compound," such as its safety and efficacy, may not, as a matter of law, qualify as negation of public use.  This prohibition is based on a misinterpretation by the court of case precedent and will have a chilling effect on experimentation.  The full scope of patent protection that previously has been available will now be denied to an inventor making "a bona fide effort to bring his invention to perfection."

To read the full article, please click on the PDF tab above.

PDF FileView as PDF

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