Thursday, January 29, 2009

Determining Specific Portions of a Claimed Compound is not Conceiving the Compound

Plaintiff's request under 35 USC §256 to add three scientists to the patent in suit was denied. The scientists "contributed the 'starting materials' for a chemical compound," but "having in mind specific portions of a claimed compound is not the same as conceiving the compound with all of its components." The court did not state that the scientists "did not make contributions to [the] inventive process; only that, under the applicable law, these contributions fall more into the category of 'prosaic' contributions because they did not conceive the invention as claimed."

Vanderbilt University v. ICOS Corp., 1-05-cv-00506 (DED January 27, 2009, Opinion)

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