obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for May, 2012

Should We Expand Takeda Beyond Chemicals: Otsuka Pharmaceuticals Co., Ltd. v. Sandoz inc. et al. and the Problem-and-Solution Approach

by Orlando Lopez

Although reading the CAFC opinion on Otsuka Pharmaceuticals Co., Ltd. v. Sandoz inc. et al. is painful for those of us who have strayed away from the chemical rings (it also points out why we call our colleagues with PhD’s in organic chemistry “Lords and Ladies of the Ring”), the opinion makes those of us who practice mostly outside of the chemical area jealous of the obviousness analysis for chemical composition. As stated in Takeda, the obviousness analysis for a claim for a chemical composition starts with the identification of a lead compound that would be the most promising to modify and, after identifying the lead compound, determines whether the prior art would have provided a reason or motivation to modify the lead compound in a manner that shows obviousness of the claimed chemical composition.  Otsuka sheds more light on the identification of the lead compound, such as the fact that mere structural similarity between the chemical composition of the proposed lead compound and the claimed chemical composition is not enough.

Those of us who are somewhat outside of the chemical area look at this and grow green with envy. The Takeda approach has a strong similarity to the European problem-and-solution approach.  In the European problem-and-solution approach to the examination of inventive step (a.k.a. obviousness), the first step is the determination of the “closest prior art.”  In determining the closest prior art, the first consideration is a similar purpose or effect.  In order to determine non-obviousness, the problem being solved by the claimed invention is identified and a determination is made as to whether it was obvious to provide the differences between the claimed invention and the closest prior art in order to solve the problem. Read the rest of this entry »