Academic journal article Santa Clara High Technology Law Journal

What Constitutes a "New Use" of a Known Composition and Should a Patentee's Purported Objective Make Any Difference?

Academic journal article Santa Clara High Technology Law Journal

What Constitutes a "New Use" of a Known Composition and Should a Patentee's Purported Objective Make Any Difference?

Article excerpt

ABSTRACT

This Article examines the long-standing patent principle that new uses directed to a result or property of a known composition are not patentable. The Article demonstrates that this principle is closely related to another well-known patent principle, namely that an alleged infringer's intent when performing a claimed method is irrelevant for purposes of determining infringement. To demonstrate the relationship between these two principles, the Article examines the recent Federal Circuit case of Jansen v. Rexall Sundown, which distinguished a claim directed to a method of using a composition over an allegedly infringing new use of the composition by construing the claimed method as limited to achieving a particular objective. The Article suggests that Jansen placed too much emphasis on the alleged infringer's intent when performing the claimed method, and that the decision stands as a dangerous precedent that a method of using an old composition may be patentable simply by reciting a new property of the composition or a different purpose for using it.

TABLE OF CONTENTS

Abstract
Introduction
I.   New Uses Directed to a Result or Property of a Known Composition
     Are Inherently Anticipated
  A.   Court of Customs and Patent Appeals Cases
  B.   Federal Circuit Case Law
  C.   Other Notable Cases
II.  Intent Is Not an Element of Infringement
III. These Two Principles Are Two Sides of the Same Coin
IV.  Jansen v. Rexall Sundown
  A.   Facts of the Case
  B.   Federal Circuit Opinion
  C.   Flaws in Jansen's Analysis
    1.   Court Disregarded Precedent That Intent Is Irrelevant
    2.   Court Placed Too Much Emphasis on Holding in Rapoport
    3.   Different Panel Reached Opposite Conclusion on Analogous
         Facts
V.   Jansen Highlights the Nexus Between the Two Principles
Conclusion

INTRODUCTION

Patents are an important means of protecting key scientific discoveries. Patentees are encouraged to disclose to the public their discoveries and, in turn, are awarded a limited monopoly in order to recoup the expenses associated with discovery and to turn a profit. There are, however, important checks on a patentee's ability to obtain such a monopoly. One such check is the requirement that all patentable inventions be novel. In the biotechnological context, courts have long applied this novelty requirement to preclude the patenting of so-called "new" uses of a known composition, where the "new" use is merely the recognition of an inherent property of that composition. Where one use already exists for a known composition, any "new" use of the composition is deemed to be anticipated by the old use, provided the composition is used in precisely the same manner as it always has been. A hypothetical illustrates this point.

Suppose that after years of research, Inventor 1 discovers that compound X, a compound well known in the art, is useful for treating arthritis. Inventor 1 subsequently obtains a patent claiming a method of using the compound to treat arthritis. The claim recites, "A method of treating arthritis, comprising intravenously administering between 1 and 100 milligrams of compound X to a patient in need thereof." Now suppose that Inventor 2, using compound X to treat arthritis, discovers that the compound is also useful for treating nearsightedness. May Inventor 2 obtain a patent claiming, "A method of treating near-sightedness, comprising intravenously administering between 1 and 100 milligrams of compound X to a patient in need thereof"? According to the general rule that new uses directed to a result or property of a known composition are not patentable, the answer should be no.

A recent Federal Circuit case, however, has suggested that a claim directed to a method of using an old composition for one purpose might be patentably distinct over a claim directed to the same method for an unrelated purpose. This Article begins by surveying the cases applying the long-standing principle that a claim directed to a new use of a known composition, where the "new" use is merely the recognition of an inherent property of that composition, is unpatentable over a reference disclosing the same composition used the same way. …

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