We talked about KSR International v. Teleflex in class on Monday, and I wanted to reiterate some important points to draw from the case:
- In ruling of the case, the Supreme Court for the first time in decades commented on the meaning of "obviousness" under patent law.
- According to the Court, when a patent simply combines previously known elements to produce a result that was no more than expected, the combination would be obvious.
- On the other hand, inventions involving known elements that work together in an unpredictable manner would not be obvious.
Thus, an important principle reaffirmed in KSR is that a patent is more likely to be upheld if an invention is unpredictable in view of what was already known. This is good news for pharmaceutical innovators, because drug development is notoriously unpredictable.
Such an emphasis on unpredictability was illustrated in a litigation from 2008 concerning Eisai's antiulcer drug known as AcipHex (rabeprazole). This drug garners over $1-billion in annual worldwide sales. The infringer alleged that the patented compound was obvious because any skilled person would have known to prune a particular chemical side chain from a structurally similar known compound and yielded the patented drug in question. The court, however, determined that this modification was not a "predictable solution", because that side group was credited in an earlier publication with bestowing certain desirable traits. Consequently, the advantages of trimming/pruning the side chain were not predictable and the patent not obvious.
I could not find much information on the case, but found it to be very interesting nonetheless. I continue to talk about another pharmaceutical case in my next blogpost!
Hey Srushti,
ReplyDeleteI like how you used the example of Eisai's anti-ulcer drug as an example of how the pharmaceutical industry is very unpredictable and thus it is much hard to prove obviousness in the drug industry.
Srushti,
ReplyDeleteNice post. You really cleared up the meaning of obviousness in the context of patent infringement for me. I feel like it must be difficult for judges to make decisions on cases like this; there is a fine line between your second and third bullet points. In both, an inventor is combining known elements from previous art, but the resulting product must not be predictable... very interesting.
Interesting post! It will be interesting to see how the decision in this case will affect patenting in the pharmaceutical industry in the years to come. It seems like the drug in this patent would have been obviously discovered by anyone skilled in this field, but it will be interesting to see what the court thinks about that.
ReplyDeleteGreat post! I think that as obviousness becomes an increasingly more relevant IP issue, demonstrating what distinguishes obvious from non-obvious methods and products will ensure that companies have the capacity to conserve, protect, and enforce their IP that gives them a competitive advantage.
ReplyDeleteGreat post! I think that as obviousness becomes an increasingly more relevant IP issue, demonstrating what distinguishes obvious from non-obvious methods and products will ensure that companies have the capacity to conserve, protect, and enforce their IP that gives them a competitive advantage.
ReplyDelete