Patent applications strategy

Supplement and Crop Protection Strategies. International Patent application 97044713, Aberdeen University. 

Anthranilide bioisosteric replacement has also been pursued as a strategy for identifying novel GPR109A agonists. For example, five-membered heterocycles (F) in particular thiophene or furan regioisomers as bioisos-teres of benzene have been disclosed in patent applications by a number of groups (e.g., 23 and 24) [69-72]. 

Replacement of the phenyl group of anthranilic acid by a cycloalkene represents another strategy to obtain intellectual property. This endeavor resulted in three consecutive patent applications [73-75] and a publication [76]. The advantages of tetrahydro anthranilic acid as a surrogate for anthranilic acid include reduced CYP2C8 and 2C9 inhibition and improved oral exposure in mice (analogs 25 vs. 12). Ultimately, a pre-clinical candidate, MK-6892 (26), was selected from this series due to its... 

We have developed a new strategy for synthesizing a new class of ILs [69]. The basic concept and proof-of-principle experiments have been summarized in a patent application, which was filed on December 2, 2003 by UT-Battelle, LLC. The conventional formation of ILs can be regarded as the complexation reactions of simple anionic species and neutral compounds. 

A strategy of using different types of claims and claims of the same type but different in scope can be applied to robotics [2] used in making peptides and nucleotide sequences, libraries created on the surface of phage [9], diagnostics [10] which use combinatorial libraries or to virtually any invention in the field of molecular diversity - limitations on the type and scope of the claim being dictated by the prior art (under 35 USC 102 and 103 the claim cannot cover that which was previously known or claim subject matter deemed to be obvious in view of that which was previously known) existing at the time of the invention and the extent of disclosure included in the patent application. (A patent application must fully describe and disclose the invention which is claimed. This is referred to as an enablement requirement under 35 USC 112.)... 

The majority of patented pharmaceuticals cannot recoup the cost of product development during the life-span of their patents (Prentis et al., 1988). Thus, patents do not guarantee high profits, but -depending on their quality- patents can significantly improve the chances of commercial success of innovative products. The quality of patents does not only depend on the quality of the research which led to the patented invention, but also on the quality of the patent application and a skilful patent strategy. 

An important feature of the Paris Convention allows applicants to claim priority to their first-filed application in any member country, provided the applicant files a patent application in that country within 1 year. This is referred to as convention priority, and it is of great importance in the patent strategies developed in the pharmaceutical industry, as described below. If the first application meets the conditions of the Convention, the applications in all member countries are treated as if they were filed on the same day as the first application. 

The simplest strategy would be to file patent applications for each invention in each and every country having a patent system. Such a strategy could, of course, be prohibitively expensive and in most cases less than cost-effective. A cost-benefit strategy should be applied to each particular invention and its uses. It is essential to evaluate the market potential of the invention around the world and the ability to control that market based on patent protection in key countries. For countries with interrelated markets, it may be possible to protect technology effectively in one country with a patent in another. 

Several differences between U.S. patent law and the patent law of almost every foreign country also significantly affect patent strategy, especially the determination of when to file a patent application in the United States. Some of the most important of these include the rules for determining priority and the requirement of "absolute novelty" essentially everywhere except the United States. These differences are discussed next. 

National patent offices act within the boundaries of the country they exist within and apply that country s patent law. Patent applicants may file applications directly with national patent offices in each country where patent protection is required. The decision of where to hie an application is generally based on the predicted potential markets for the invention. For example, a crop plant genetically modihed to be resistant to frost may only be marketable in countries with colder climates and with markets open to genetically modihed foods. Another consideration is the patentable subject matter allowed in each jurisdiction. For this product, an inventor can seek patent protection for a plant in the United States, but not Canada or Europe. The most cost-effective strategy for an invention that is only marketable in a small number of countries is to hie patent applications directly with individual national patent offices. 

In contrast, we at BASF were now compelled to concentrate further research outside of the I Cl claims. We decided to focus on pharmacophore variations -admittedly a risky strategy - and were rewarded by finding that oxime ethers (or oximino esters) were also active. This discovery was covered by a patent application filed in 1986, just two days before I Cl filed on the same subject. So the next round of the patent race went to BASF [30, 31]. 

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