Intellectual Property Law

General disclosure in prior art not enabling for specific pharmaceutical compound's use in treatment

By McKee, Voorhees & Sease, P.L.C.

In a decision last week, the Federal Circuit affirmed a district court's holding that a prior art patent was not enabling and thus did not anticipate the patent-in-suit.  Applying the In re Wands factors, the district court held undue experimentation would be required in order to produce the claimed invention based on the prior art's disclosure.

The Federal Circuit affirmed, and observed the asserted prior art was broad and general without sufficient direction to practice the claimed invention.  Moreover, the asserted prior art provided no working examples of the invention claimed in the patent-in-suit.  Finally, the court held the district court correctly placed the burden of proving non-enablement on the patentee, given the prior art reference was an issued U.S. Patent, but it was not necessary for the district court to specifically articulate its burden-shifting framework.

More on Impax Labs, Inc. v. Aventis Pharms Inc., after the jump.

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Full post as published by FileWrapper on October 07, 2008 (boomark / email).