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In the pharmaceutical arts, practical utility for patent law purposes may be shown by adequate evidence of any pharmacological activity when no utility is claimed.
Appellants and appellees both invented a drug that inhibited cholesterol synthesis. However, the United States Patent and Trademark Office Board of Appeals and Interferences granted priority in invention rights of the drug to appellees. Appellants challenged the finding, contending the date that appellees' invention was reduced to practice was erroneously determined. Appellants also argued that appellees had illegally suppressed or concealed their invention, and thus appellants should be given priority rights in the invention.
Did the Patent and Trademark Office Board err in granting the invention rights to the appellees?
The court held that the practical utility requisite to reducing an invention to practice could be shown in a chemical by proffering evidence of any pharmacological activity. In examining test results to prove pharmacological activity requisite to showing practical utility for patent law purposes, the test results need not absolutely prove that the compound at issue was pharmacologically active. All that was required was that the tests be reasonably indicative of the desired pharmacological response. In other words, there must be a sufficient correlation between the tests and an asserted pharmacological activity so as to convince those skilled in the art, to a reasonable probability, that the novel compound will exhibit the asserted pharmacological behavior. As appellees had arguably met this burden based on the evidence, the court upheld the board's determination as to appellees' reduction to practice of the drug. The court then held that while evidence showed appellees were slow in prosecuting their claim for a patent, their delay did not rise to the level of patent suppression or concealment.