Your pharma client, DrugCo Inc., has a promising new compound. DrugCo has synthesized the compound and knows what it does. DrugCo wants you to draft and file a patent application immediately but it doesn’t yet have the experimental data to satisfy the requirements for patentability under 35 U.S.C. �101 concerning utility and enablement. Since time is of the essence, you include prophetic examples in the application based on your belief of what the compound does and how it works.
Throughout the prosecution of your client’s patent application, you repeatedly emphasize the prophetic “tests” in attempting to overcome rejections to the claims. Eventually the examiner allows the claims based on your representations. Shortly after the patent issues, another company attempts to obtain approval for a generic version of your patented (and now FDA-approved) drug. After your client sues for infringement, the defendant asserts that your patent is unenforceable based on inequitable conduct in obtaining the patent.
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