The claim section is the most important part of the patent. The claims define the buondaries of patent protection afforded under the patent and the Patent Office. The claims are also reviewed by the courts and compared to the prior art to determine whether the claimed invention is novel and non-obviousness and thus valid and protectable.
The following case looks at whether claiming a step of “informing” someone of an inherent property of a known medical method is eligible for patent protection. King Pharmaceuticals v. Eon Labs, 95 USPQ2d 1833 (Fed. Cir. 2010). The Court held that such step does not make an invention ineligible for patent protection. The Court reviewed the invention as a whole and decided that the invention or subject matter was eligible for patent protection but struck the patent down based on other grounds. In particular, the Court invalidated the patent at issue based on anticipation and obvious grounds. In arriving at its holding, the Court reviewed a line of cases involving “printed matter”. In these cases, the court held that printed matter did not distinguish the invention from the prior art in terms of patentability if the printed matter was not functionally related to the product or item on which the printed matter appeared. Likewise, a known medical method does not become patentable if the “instructional limitation” does not have a new and unobvious functional relationship with the known medical method.
The claim at issue recited the step of informing another that the bioavailability or effectiveness of taking a certain medication increases when taken with food. The Court held that the “informing” step had no functional relationship with the known medical method.
This case teaches how one might impart a patentable aspect into an otherwise unpatentable method. In particular, the steps that you add to a known method should have a functional relationship with the known method.
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