Patent Law

A reader has posited the following scenario:

If there is a patent claiming a composition consisting of A and B ingredients. wherein by adding B ingredient, the efficacy of A is enhanced.

In this case if we are able to find a patent or research articles talking about the combination of A and B, but they do not say anything about an "increase in efficacy," then:

1) Is this information sufficient to invalidate the said patent?
2) Should we consider composition application or property during invalidation searches or not?

Since I am not an attorney, I asked Jim Singer, a friend, fellow blogger (IP Spotlight) and partner with Pepper Hamilton LLP, to respond.  Jim writes:

You reader's question will be fact-specific, and it will depend on the precise language of the claim and the contents of the prior art.  Based on the information that he provided, it sounds like the question will be "is the claimed use of the compound obvious in view of the fact that the compound was already known."  The standard for obviousness depends on numerous factors, and the application of those standards is undergoing some change in view of the U.S. Supreme Court's recent decision in KSR v. Teleflex.

I suggest that he ask a patent attorney to review the patent, its file history and the prior art to provide an informed response to the situation at hand.

Anyone else want to weigh in on this scenario?  For more on KSR v. Teleflex, see Gene Quinn's blog (PLI Patent Blog) live from the 2nd Annual Patent Law Institute in New York City.