Interference No. 104,843 Paper 51
Kundu v. Ragunathan Page 19
unless the intervening period were spent "perfecting" the invention. Lutzker, 843 F.2d at 1367,
6 USPQ2d at 1372.
Kundu's problem in this case, however, is that the standard indicium of perfecting
efforts--a reflection of such work in the patent application--has less credibility than usual. First,
the perfecting in the present case is defined in terms of having a successful ANDA batch, the
stated trigger for the ultimate instruction to draft an application. A successful ANDA batch
indicates greater interest in achieving a critical commercialization milestone (a demonstrated
ability to meet the rigorous requirements of drug approval) than in satisfying the very different
patentability requirements of utility and enablement. On the question of commercialization,
Lutzker cites Fitzgerald v. Arbib, 268 F.2d 763, 766, 122 USPQ 530, 532 (CCPA 1959), which
holds that investigating manufacturing details does not excuse delay, yet much of Alpharma's
effort was directed to developing an ANDA-sufficient method of manufacturing its MEGACEŽ-
equivalent megestrol formulation. Second, in Lutzker and the cases it cites on reporting
perfecting work in the application, the applicants did not have Kundu’s advantage of knowing
what was in the other parties’ disclosures when they filed. Applications filed after the other
side's patent has issue have the lowered credibility of any post litem motam statement,
particularly when as in this case the applicant seeks to provoke a patent interference. The case
law provides ample motivation for a new applicant seeking to provoke an interference with a
patent, and facing the need to overcome an appearance of suppression, to include any and all
remotely related work in the specification.
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007