{"id":1608,"date":"2017-06-21T23:14:38","date_gmt":"2017-06-22T03:14:38","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1608"},"modified":"2017-06-21T23:14:38","modified_gmt":"2017-06-22T03:14:38","slug":"lack-of-enablement-in-provisional-application-results-in-loss-of-priority","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1608","title":{"rendered":"Lack of Enablement in Provisional Application Results in Loss of Priority"},"content":{"rendered":"

In Storer v. Clark<\/em><\/a>, [2015-1802] (June 21, 2017) the Federal Circuit affirmed PTAB’s decision awarding priority in an interference to Clark, on the grounds that Storer’s provisional application did not enable the interference subject matter.<\/p>\n

The subject matter in dispute\u00a0involved methods of\u00a0treating hepatitis C by administering compounds having\u00a0a specific chemical and stereochemical structure. \u00a0Storer was issued U.S. Patent No. 7,608,600, and Clark challenged priority of invention and moved to deny Storer the priority date of its provisional application. \u00a0Clark argued that the application did not enable the claimed compound, while Storer argued that the compounds were readily obtained based on the provisional application and the prior art.<\/p>\n

Enablement was relevant for validity and to the issue of\u00a0whether the provisional application was a constructive\u00a0reduction to practice. \u00a0It is a question of law, and is reviewed without\u00a0deference, although the factual underpinnings of\u00a0enablement are reviewed for substantial\u00a0evidence.<\/p>\n

Analyzing the disclosure under the factors set forth in In re Wands, <\/em>the Board determined that undue experimentation would be required to produced the claim compounds from the provisional application’s disclosure.<\/p>\n

The Federal Circuit began its analysis noting that the boundary between a teaching sufficient to enable\u00a0a person of ordinary skill in the field, and the need for\u00a0undue experimentation, varies with the complexity of the
\nscience. \u00a0 While the specification\u00a0need not recite textbook science, it must be more than\u00a0an invitation for further research. \u00a0Further, while the application need not disclose what is well-known in the art, it is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.<\/p>\n

The Federal Circuit concluded that substantial evidence\u00a0supported the Board\u2019s findings that the synthetic schemes\u00a0in Storer\u2019s provisional application did not enable\u00a0a person of ordinary skill to produce the target compounds\u00a0without undue experimentation.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Storer v. Clark, [2015-1802] (June 21, 2017) the Federal Circuit affirmed PTAB’s decision awarding priority in an interference to Clark, on the grounds that Storer’s provisional application did not enable the interference subject matter. The subject matter in dispute\u00a0involved … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[28,59,60],"tags":[],"class_list":["post-1608","post","type-post","status-publish","format-standard","hentry","category-enablement","category-priority","category-provisional-applications"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1608","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1608"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1608\/revisions"}],"predecessor-version":[{"id":1609,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1608\/revisions\/1609"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1608"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1608"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1608"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}