As opposed to engineering and physics, the field of chemistry/pharma/biotech is often characterized as an "unpredictable art," based on the widely held notion that it is usually not possible to predict the functionality of a molecule (or a composition), simply based on knowledge of its structure. Among others, based on an increasing awareness of this uncertainty and lack of pre­dictability, patent offices and courts in the US and overseas appear to successively and significantly limit the scope of protection allowed for chemistry/pharma claims, compared to what was seen as allowable previously. In particular, the comparatively strict approach as adopted by the European Patent Office early on is now also increasingly adopted by the US Federal Circuit (and implemented by the USPTO), effectively bringing the patent praxis in regard to "enablement," "written description," and "clarity" of claims for chemistry/pharma patents in the US and Europe in line with each other. We will outline important developments in recent case law in the US and overseas. Based on these developments and in line with the "best practice" for patent applications that are valuable in a global setting, chemistry/pharma inventors are encouraged to describe the inventive concept as comprehensively and as clear as possible, provide as many enabled examples as possible, in particular compara­tive examples, and consider whether the potentially broad scope of protection is supported by the actual "technical" disclosure.

Chemistry/pharma patents AND the "unpredictable arts"– increasing restrictions on patent protection for chemical compounds and compositions

249th National Meeting (2015)

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