Due Wednesday, March 23, 2011
The case I investigated was Fernanda MISANI v. ORTHO PHARMACEUTICAL CORP. It was decided in the Superior Court of New Jersey, Appellate Division on March 11, 1964. A patent on a chemical compound, used in an anti-convulsant for treating epilepsy, was found to be invalid because it was described in a printed publication in Germany more than one year prior to the date of the U.S. patent application. Misani had worked for Ortho Pharmaceutical, which was owned by Johnson & Johnson, and claimed to have invented the compound, but was not given credit for it, and a different person was designated the inventor in the patent application. The compound itself had been published in a German chemical encyclopedia, but in it no reference was made to any reduction to practice of the compound; it merely described the formula. The original ruling which is being appealed in the present case contained failures by the trial court in terms of properly instructing the jury on relevant law as it pertained to the general subject matter under question. Therefore, the ruling stated that the case should be remanded for a new trial. Regardless, the interesting point from the case is the contention by the plaintiff that, even though the compound was published more than a year prior to the date of the patent application, it did not invalidate the patent because it was merely a description of the compound formula and contained no information regarding the process of creating it or potential uses of the compound.