October 24, 2021

Volume XI, Number 297

Advertisement
Advertisement

October 22, 2021

Subscribe to Latest Legal News and Analysis

STORER v. CLARK: Enablement from a Provisional Application Must Be Supported by the Disclosure and Not Require Undue Experimentation by a Person Having Ordinary Skill in the Art

STORER v. CLARK: June 21, 2017.  Before Prost, Newman, and Dyk.

Takeaway:

  • In order for a non-provisional patent application to be enabled by the provisional patent application from which it takes priority, the disclosure in the provisional patent application must enable one having ordinary skill to produce the claimed chemical compound without undue experimentation.

Procedural Posture:

Storer appealed a PTAB decision in an interference proceeding that the claims in Storer’s patent were not enabled from the provisional patent application from which it takes priority, and thus the claims in the patent could not claim priority to the provisional patent application.  The CAFC affirmed the PTAB’s decision.

Synopsis:

  • Enablement: The CAFC affirmed a PTAB decision in an interference proceeding that the claims in Storer’s patent were not enabled from the provisional patent application from which it takes priority. The interference proceeding involved two patents related to the treatment of hepatitis C by administering compounds with a specific chemical and stereochemical structure.  Clark moved to deny Storer the priority date of a related provisional patent application in order to invalidate the claims in Storer’s patent, arguing that the provisional patent application did not enable one having ordinary skill in the art to produce compounds having the requisite  2´F (down) substituent.  The CAFC ruled that the enablement requirement can be met when one skilled in the art could practice the invention upon reading the specification without undue experimentation.  In its holding, the CAFC relied on the eight enablement factors enumerated in In re Wands, 858 F.2d 731 (Fed. Cir. 1988).  The CAFC confirmed the PTAB’s finding that the synthetic schemes in Storer’s provisional patent application did not teach or suggest conversion of any precursor into the 2´F (down) structure, and that knowledge of synthesis from a well-known precursor compound did not enable a person having ordinary skill in the art to produce the target compounds without undue experimentation.  The CAFC ruled that, based on the disclosure in the provisional patent application, the Storer claims subject to the interference proceeding were not enabled because an undue amount of experimentation was needed in order to synthesize the compound claimed in the non-provisional patent.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 250
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Tonya Gray, Intellectual Property Attorney, Andrews Kurth Law Firm
Partner

Tonya's practice encompasses complex civil and commercial litigation matters at both the trial and appellate levels and in both federal and state court. She has significant experience in intellectual property litigation defending patent infringement suits (particularly in the Eastern District of Texas) and trade secret misappropriation claims. Tonya's intellectual property experience includes cases about battery technology, video games, electronic gift cards, internet advertising, check imaging, online banking and e-commerce. Her practice also includes contract disputes, fiduciary claims, ...

214-659-4545
Gregory Miller, Andrews Kurth, IP, Intellectual Property, patent
Associate

Gregory is an Associate in the Intellectual Property section of Andrews Kurth. He concentrates his practice on the preparation and prosecution of patents, patent appeals, patent opinions, patent litigation, intellectual property licensing and acquisitions, transactions, agreements and due diligence. He works with companies in all stages of growth, and has extensive experience in a variety of matters, from the development of initial patent strategies for start-ups, to the maintenance of cost-effective quality in the management of high volume filings for Fortune 500...

+1.212.850.2892
Dragan Plavsic, Andrews Kurth, fuel cell systems lawyer, hybrid vehicles attorney
Associate

Dragan represents firm clients in patent litigation matters and in the Patent Trial and Appeal Board proceedings. In addition, he prepares and prosecutes patent applications and provides IP counseling to clients. The range of services that he provides further includes validity opinions, freedom to operate opinions and due diligence. Dragan provides his clients with services in a wide variety of technologies, including automotive safety systems, telematics systems, and fuel cell systems, hybrid vehicles, oil and gas exploration and production, oil and gas processing and...

202-662-2733
Advertisement
Advertisement
Advertisement