Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerFeaturesSectionsNewsLJN Newsletters

The New 'Material Effect' Test

By Otis Littlefield
October 02, 2003

In Bayer AG v. Schein Pharm., Inc., 301 F.3d 1306 (Fed. Cir. 2002), the Federal Circuit articulated a new 'material effect' test for the best mode requirement. The court affirmed the validity of a patent covering the antibiotic drug ciprofloxacin on the grounds that it properly claimed priority to a parent application that satisfied the best mode requirement. With the priority date of the parent application, the patent was not invalidated under section 102(d) by an earlier filed foreign patent. The three-judge panel agreed that the parent application met the best mode requirement; however, the panel disagreed as to why the best mode requirement was satisfied. The majority reviewed the prior case law and found 'that the best mode of making and using the invention need be disclosed if it materially affects the properties of the claimed invention.' Id. at 1319-1320. Judge Radar concurred in the result, but strenuously objected to the creation of this additional criterion.

Majority Opinion

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

The Bankruptcy Hotline Image

Recent cases of importance to your practice.

Use of Deferred Prosecution Agreements In White Collar Investigations Image

This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.

How AI Has Affected PR Image

When we consider how the use of AI affects legal PR and communications, we have to look at it as an industrywide global phenomenon. A recent online conference provided an overview of the latest AI trends in public relations, and specifically, the impact of AI on communications. Here are some of the key points and takeaways from several of the speakers, who provided current best practices, tips, concerns and case studies.

The DOJ's New Parameters for Evaluating Corporate Compliance Programs Image

The parameters set forth in the DOJ's memorandum have implications not only for the government's evaluation of compliance programs in the context of criminal charging decisions, but also for how defense counsel structure their conference-room advocacy seeking declinations or lesser sanctions in both criminal and civil investigations.