By:Â Alison M. Taroli
Introduction
Patent protection for newly discovered chemical compounds is one of the most important priorities for a successful pharmaceutical company. In order to obtain a patent, a chemical compound must be nonobvious at the time of its invention. As compared with obviousness evaluations in chemical cases, application of the law of obviousness to inventions in the electrical and mechanical sciences is fairly straightforward. Obviousness in the chemical arts has been difficult to determine in light of chemistry’s inherent unpredictability. The properties of a chemical compound can be dramatically altered with only slight structural changes. Courts have attempted to address this difficulty by further defining the law of chemical obviousness to include subtests relating to structural similarity and motivation to make the claimed composition. However, these tests have failed at simplifying the obviousness test for chemical compounds, particularly in light of the significant increase in combinatorial chemistry techniques in the pharmaceutical industry. Due to the enormous costs associated with drug research and discovery, the law of obviousness of chemical compounds needs to be further defined to provide pharmaceutical companies with sufficient notice as to whether their newly created compounds will be refused patent protection due to obviousness in view of the prior art.