Filing a Patent Application

A draft of the patent application by the inventor usually requires several amendments and must be transferred into the correct form before it can be filed at a patent office. The scientific part of a patent relies largely on the inventor(s), but patent specialists should be consulted to help drafting the claims, to decide on the countries where 

After submission to a patent office, the file is examined for some basic formal requirements and, if adequate, is given a filing date. A first indication about the chances of a patent application may be obtained from a search report which is issued by the European Patent Office and also for international patent applications under the Patent Cooperation Treaty (see below). In most cases, the search report will list a number of earlier patents or publications and indicate whether these interfere with the proposed claims of the examined file. As a consequence of the search report the applicant can amend the proposed claims before the examination is initiated. 

The prosecution procedure of official action and responses may be repeated in all of the individual countries where a patent application was filed. Fortunately, international patent cooperation treaties exist to shorten and simplify this awkward process for both sides. 

The International Patent Cooperation Treaty (PCT) created the opportunity to file a patent application almost world-wide (most countries accept PCT applications) at international patent registration offices which are usually identical with the national patent offices. A search report summarizing relevant prior art will be issued and, if requested, a preliminary examination considering the prior art is performed. The preliminary international examination provides a non-binding opinion whether the claimed invention appears to be novel, inventive and industrially applicable. It does not investigate the patentability according to any national law. 

The International Patent Bureau in Geneva initiates the submission of the application in all designated member states, for which the application is intended, thus saving a considerable amount of time, effort and cost. However, due to the differences of international patent laws, the definitive substantial examination and granting of a patent applied for under the PCT is still in the hands of the individual countries. 

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Novartis AG has filed a patent application on novel naphthalene derivatives as potent cannabinoid agonists, especially at the CBi receptor [208]. One compound was specifically claimed, the naphthalene derivative (319), which exhibited CBi binding with a if value of 15 nM. This compound was also active in an in vivo model of neuropathic pain, reversing hyperalgesia... 

In addition, Novartis filed a patent application on a series of quinazolines as cannabinoid agonists [209]. Compound (320) is one of the two compounds specifically claimed and exhibited CBi and CB2 binding with if values of 34 and 11 nM, respectively. It was shown to be a full agonist at the CBi receptor with an EC50 of 132nM (no functional data for the CB2 receptor). Compound (320) was also active in the neuropathic pain model described above with an ED50 of 0.5mg/kg after oral dosing. 

AstraZeneca has filed a patent application on novel bis-aryl compounds as CB1/CB2 agonists that lack CNS penetration and thus avoid the unwanted side effects associated with activation of central CBi receptors [210]. Over 100 compounds are specifically claimed e.g. (321). Compounds were tested in receptor binding assays using human CBi and CB2 receptor preparations. Respective K values were in the ranges 50-5,000 and 15-2,800 nM, although no specific data were presented. 

Shionogi [211] has filed a patent application on a series of thiazine derivatives no compounds are specifically claimed. The thiazine derivative (322) was active in vivo in the formalin-induced licking-and-biting model in ICR mice with an ED50 of 1.5mg/kg after oral dosing. 

Pfizer too, has filed a patent application to protect a series of closely related pyrimidine-2-carboxamides [318]. Although no compounds are specifically claimed, the examples include compound (514) in which the chloro-substituted... 

Just prior to filing a patent application, scrutinize every page of the application to ensure completeness while avoiding extraneous and potentially damaging material. 

To be new, the invention must never have been disclosed publicly in any way, anywhere, before the date on which an application for a patent is filed. This may be checked in advance by searching trade and technical journals and patent specifications or by filing a patent application with relatively broad claims and leaving it to the Patent Office to make its search through such prior art. ... 

Patenting DNA sequences came under heavy legal and public scrutiny in 1992, when the US National Institutes of Health (NIH) filed a patent application on partial human cDNA sequences of unknown function. This patent was rejected, and the consensus has emerged that patent protection should only be considered for nucleotide sequences that can be used for specific purposes, e.g. for a sequence which can serve as a diagnostic marker or codes for a protein product of medical value. This appears to be a reasonable approach, as it balances issues of public interest with encouraging innovation in the area. 

Recently, Hu and co-workers, at Pfizer, filed a patent application on a process to prepare pregabalin (2) via enzymatic resolution (Hu et al., 2005). The Pfizer researchers investigated a large number of commercially available hydrolases to catalyze the hydrolysis of (3-cyanodiester 59, an intermediate from the malonate route (Scheme 16.16), to form (35)-3-cyano-2-ethoxcarbonyl-5-methylhexanoic acid potassium salt (71)... 

Close-looping an overunity EM system has very special Dirac sea hole current phenomena involved and special techniques are required. Bedini and the present author have filed a patent application on the major process required, and the details will be released a year from that filing. 

We state, however, that at about COP a 2.0 Special Dirac sea hole current phenomena are encountered in close-looping, as a new kind of decay mechanism from the disequilibrium state back to the Lorentz equilibrium. Bedini and Bearden have filed a patent application for energy transduction processes to overcome this effect and allow close-looping. 

As discussed in detail above, essential patentability requirements are novelty and inventiveness with respect to the prior art. In filing a patent application, it is therefore desirable that its content as claimed is at least novel with respect to the prior art. The question of whether an invention is obvious, considering the prior art, is often difficult to assess and should be subject to discussion with the corresponding patent authority. To avoid inventing subject matter already included in the prior art, inventors should have a clear knowledge and understanding of the state of... 

Section 102(f) is not a common source of prior art since it is concerned with the situation in which one party conceives an invention and that invention is learned of by another who then attempts to claim the invention himself in a patent application.21 Section 102(f) is useful in circumstances in which a citation under one of the other 102 sections is not appropriate. For example, under 102(a), we learned that public use outside of the United States would not be a basis for rejection under that section, but deriving one s invention from witnessing that public use and filing a patent application on that derivation could still be citable under section 102(f) since 102(f) does not have any geographic restraints. Perhaps more generically, one might best think of 102(f) as describing a situation in which the patent application fails to properly list the inventors. Under many circumstances, this type of error can be corrected (see Chapter 4). 

In Brazil, the safeguard of the rights of inventors, who are often obliged in some form to disclose their inventions or creations before filing a patent application, is established in the Industrial Property Law, Article 12, I to III (inventions and utility models), and Article 96, 3 (registration of industrial designs). The provisions of Article 12 are as follows ... 

In spite of the positive aspect conferred by the grace period, it must be noted that not all countries accept this provision or similar procedures. Therefore, even though this possibility exists in Brazil, the filing in other countries that do not accept previous disclosure (the majority of European countries, for example) can be prejudiced. Hence, even in Brazil disclosure before filing a patent application should be avoided. 

To obtain grant of a patent, it is necessary to prepare and file a patent application describing the alleged invention and then legally defining what the inventor believes his invention to be in terms of a series of patent claims. 

Patent applications have been filed covering compounds without the distal nitrogen constrained in a ring directly attached to the benzhydryl carbon. SmithKline Beecham scientists filed a patent application on diaryldi-amines typified by compound 48 [33], and Meiji Seika Kaisha researchers filed a patent application covering diphenylalkylpiperidines as mu opioid agonists—for instance, compound 49 [34]. 

In most companies the process for filing a patent application involves the filling in of inventorship forms by the inventors. There will normally be two forms. 

The problem of these high development costs was foreseen by the American computer giants IBM when, in 1971, they filed a patent application for a recon-figurable circuit — in other words, a single circuit which could be programmed to perform many different functions to suit different applications, avoiding the cost of... 

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