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

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.


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.

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