The Chemist's Companion Guide to Patent Law (PDF)

Disclaimer Preface. 1 Patent Basics. 1.1 Introduction. 1.2 Patents as Property. 1.3 Patent Rights Are Rights to Exclude. 1.4 Patents Do Not Convey Freedom to Operate the Invention. 1.5 Contrasting Freedom to Operate with Patentability. 1.6 Assignment and Recording of Patents. 1.7 Why Have Patents? 2 The Patent Process. 2.1 An Overview of the Patent Process in the United States. 2.2 Post Grant Procedures at the USPTO. 2.2.a Patent Maintenance Fees. 2.2.b Reissue Applications and Patents. 2.2.c Ex Parte Procedures. 2.2.d Inter Partes Procedures. 2.3 Inequitable Conduct in Patent Prosecution. 3 Prior Art and the Chemical Invention. 3.1 What is Prior Art? 3.2 Prior Art That Can Be Antedated. 3.3 Prior Art That Is an Absolute Bar. 3.4 Section 102 References in Support of Obviousness Rejections. 3.5 Double Patenting. 3.6 Obviousness-Type Double Patenting. 3.7 Prior Art Hypothetical Example 1. 3.8 Hypothetical Example 2. 4 Inventorship. 4.1 Inventorship and Ownership of U.S Patents. 4.2 Patent Validity and Correct Listing of Inventorship. 4.3 Determining Inventorship. 5 Patent Claims. 5.1 Introduction to Claim Language and Structure. 5.2 Independent and Dependent Claim Types. 5.3 Claim Structure. 5.4 Transition Phrases. 5.5 Markush Claiming in Chemical Patents. 5.6 Claim Construction. 6 Basic Requirements of Patentability: Utility. 6.1 The Six Requirements of Patentability. 6.2 Statutory Subject Matter of the Utility Requirement. 6.3 What Makes a Chemical Invention Useful? 7 Basic Requirements of Patentability: Novelty. 7.1 Requirements of the Prior Art to Defeat Novelty. 7.2 Anticipation in Chemical Patents. 7.3 Anticipation of a Claimed Genus by a Species Falling Within that Genus. 7.4 Anticipation of a Species Claim by a Prior Art Genus. 7.5 Anticipation of a Range by a Prior Art Species Falling Within that Range. 7.6 Inherent Anticipation. 8 Basic Requirements of Patentability: Nonobviousness. 8.1 The Basis for the Nonobviousness Requirement. 8.2 Understanding §103(a).

CHRIS P. MILLER obtained his PhD in organic chemistry from
the University of Pittsburgh and is a magna cum laude graduate of
the Temple University Beasley School of Law. Dr. Miller has over a
decade of research experience as a medicinal chemist in the
pharmaceutical industry and has worked as an associate at a law
firm as well as served as in-house patent counsel in big pharma and
the biotech industry. Dr. Miller is licensed to practice law before
the state bar of Pennsylvania and the United States Patent and
Trademark Office. He currently is practicing both medicinal
chemistry and patent law in the Boston area.

MARK J. EVANS obtained his PhD from Northwestern
University and his MBA from Penn State University; has fifteen
years of pharmaceutical industry experience in the development of
both small molecule and protein therapeutics at Wyeth
Pharmaceuticals and Alexion Pharmaceuticals; and currently works in
regulatory affairs in the Philadelphia area.

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