US product by process patents - Court of Appeal refuses en banc rehearing of SmithKline v Apotex

Copyright Thursday, July 13, 2006 Duncan Bucknell Company

For the foreseeable future at least some confusion will remain about the scope of product by process claims in the US.

On 22 June 2006 the US Court of Appeals for the Federal Circuit refused to hear an en banc appeal in SmithKline v Apotex. Click here for a copy of the dissenting decisions.

Comment

My article of 24 February 2006 discussed the initial Court of Appeal decision - CAFC creates another invalidity risk for US process patents. In essence, Smithkline v Apotex provides an avenue to argue that product by process claims are to be construed broadly. However, this particular decision is readily distinguishable on the facts.

In my humble opinion, I would agree with the dissenting Judges — greater clarity around this issue would have been very useful.