Are You Prepared To Face The Patent
Office As It Is Going To Grant Only Narrow Patents?
Chemical and pharmaceutical companies protect their
investment in research and development and the future of the companies
by securing patents on their inventions. Success or failure of the
company often depends on the strength of the patent or in its ability to
resist competition.
Recently, the United States Patent and Trademark Office proposed changes
to the way patents will be processed with a view to reduce patent
Examiner’s work load. These changes could drastically limit the
company’s ability to secure strong patents. Under the current practice,
if the company is not happy with the Examiner’s refusal to grant a
patent, the company can file one, two, or more continuation patent
applications so that additional exchanges can take place between the
applicant and the Examiner.
If the proposed rule changes are made permanent, and it is widely
expected they will be, the patent applicant will have opportunity to
file only one continuation application, which means only a limited
number of exchanges are possible. If such exchanges do not result in
patent grant, the applicant may have to narrow the scope of invention by
further distancing the invention from a known drug formulation; or in
some cases, lose its patent entirely.
When the patent applicant tries to amend or narrow the application, he
may face several legal hurdles. For example, the Examiner may refuse
saying that the originally filed application does not contain the
language that applicant wants to use for amending the application. To
avoid such an unfavorable result, the patent application must have been
prepared in such a way that the Examiner cannot refuse the amendment.
To illustrate this, consider the following situation where the applicant
describes his invention which is a drug formulation containing a drug in
an amount from 1 to 50%. The Examiner rejects the application since a
formulation containing 7% drug is known. If the patent application had
disclosed only 1 to 50% drug, the inventor cannot amend the application
to say 8 to 50% to avoid the known formulation. On the other hand, if a
cascade of fall back positions had been built into the application at
the time of patent filing, such as 5 to 30%, 10 to 20%, and 12 to 15%,
then he can amend the application by defining 10 to 30% or 10 to 20%
drug so as to cover his invention which may contain 11% drug. In the
absence of a fall back position, the applicant will have to forego the
entire patent.
A patent application is a serious legal document and should be prepared
with great care. This requires knowledge of the industry, for example,
what has been done before and what the competition might try to get
around the patent. In the wake of the proposed rules, the importance of
writing a good patent application cannot be overemphasized.
Article Source:
http://www.articlewheel.com
Dr. Xavier Pillai specializes in patent matters
involving chemistry, pharmaceuticals, biotechnology, and polymers; see
www.leydig.com.
|
