The patent application

Many of the most significant patenting regions (e.g. Japan, the USA and Europe) are also signatories of the International Patent Cooperation Treaty (PCT). This allows for an initial review of the patent application to be undertaken by a single patent office. The office then provides a summary assessment of this application, which provides an indication of the likely response that would be obtained from individual PCT countries. For many, this initial assessment plays a major role in deciding whether to proceed with the patent application in individual countries. 

The patent application document may be considered under a number of headings (Table 2.2). After the title comes the abstract, which identifies the innovation and the innovation area. Relevant prior art is then overviewed in detail in the background section. This is drawn mainly from published research articles and pre-existing patents. An adequate preparation of this section relies on prior completion of a comprehensive literature and patent search. Next, a short paragraph that details the problem the innovation will solve is presented. This should emphasize why the innovation should be considered novel and non-obvious. This in turn is followed by a detailed technical description of the innovation, such that an ordinary person skilled in the art could reproduce it. If, for example, microbial cultures or animal cells form part of the innovation, these must be deposited in an approved depository (e.g. the American Type Culture 

Background to patent application Outline of problems the innovation will solve Detailed technical description of innovation The specific patent claims 

Collection, ATCC). The last section of the patent outlines exactly what claims are being made for the innovation. 

While the inventor often prepares the first draft of the patent application, a patent specialist is normally employed to prepare a final draft and guide the application through the patenting process. 

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Keep records that document when and what was invented. It is important that accurate records are kept showing your original sketches with a disclosure statement describing what and how your invention works. It is useful to have someone witness this disclosure document and verify the date that this invention took place. It is often during this step that the invention concept is either modeled (mathematical or physical or both) and tested. Thus, accurate records of these analyzes or test results should also be kept. In the U.S. it is the first to invent that will obtain a patent in the event of two individuals inventing the same thing. Keep the disclosure document secret until the patent application is submitted to the patent office. 

Prepare and file the patent application documents. This document is called a specification. The specification must be clear enough so that anyone skilled in the subject matter of the invention could recreate your invention and use it. In the written portion of the specifications the inventor must slate the claims of the invention. These claims must show that the invention is novel and unobvious. Also, where applicable, illustrations must accompany the specification. There are filing fees for patent applications and if the application is successful there are maintenance fees to keep the patent in force. Literature describing patent applications and how they are to be submitted can be obtained from the Commissioner of Patents and Trademarks, Washington, D. C., 20231. This is also the address to submit properly prepared patent applications. 

In a further case relating to the structure of data stored on or in a record carrier used in a picture retrieval system, the European Patent Office s Boards of Appeal have considered the issue of patentability of a data structure [22]. Initially the patent application had been rejected on the grounds that the presentation of data was excluded from patentability (see above). However, in accepting an appeal filed by the patent applicant, the Board pointed out that there was a difference between the functional data, which controlled the technical working of the system, and the cognitive information, which represented the picture that could be retrieved and displayed. The Board stated that functional data relates to data that control the technical operation of the system. These data do not relate to the presentation of information, and thus data structures containing this information should be patentable. On the other hand, the cognitive information relates to the picture that could be retrieved and displayed. 

Makriyannis and Liu claimed a series of pyrazole analogues in a patent application published in 2003 [272]. Of the 29 compounds specifically exemplified in the patent application, compound (389) was demonstrated to reduce lever presses when administered to rats that were trained to expect delivery of a food pellet as the outcome. It was proposed that the reduction in lever pressing was the result of decreased appetite brought about by CBi receptor antagonism. 

Application of magnesium amide instead of alkyl lithium for the cyclopropanation formation from 5-chloropentyne was reported in the patent application ... 

We shall have to wait and see whether the patent application made by Craig Venter for a unicellular synthetic organism with 381 synthetic genes ( Synthia ) will become reality. Optimists estimate that it will be possible within the next 3-10 years to create wet artificial life . The next few years promise to be interesting ... 

Two recently published patent applications [44,45] extended previously described work by the same group [21]. Enzymatic data in the patent applications is reported in ranges (<1, 1-10, >10 iM, etc), making it difficult to thoroughly assess the compounds covered in the claims. Bissulfonamide 35 is a representative compound and is reported to inhibit both ACC1 and ACC2 with IC50 s < 5 iM. 

A thornier issue than written description for ESTs and SNPs, however, is that of utility. Section 101 of the patent statute requires that the subject of a patent must be a "useful invention." Under the Guidelines, an application satisfies the utility requirement if the invention has "specific, substantial, and credible" utility such that "a person of ordinary skill in the art" would recognize the claim as credible "in view of disclosure [contained in the patent application] and any other evidence of record. .. that is probative of the applicant s assertions"(Utility Examination Guidelines, 2001). The Guide-... 

By analogy to the initial work on trifluoromethyl ketones as ZBGs in their hydrated forms [34], as in compounds 12, silanol versions 13 have been developed. HDAC1 and 8 assays are mentioned in the patent application, but activities are not stated, nor is there any indication of whether the compounds suffer similar metabolic liabilities [35]. 

A series of pyrazoles was disclosed in a patent application claiming members of this series as AKT inhibitors [27]. The pyrazole 15 is representative of this series, with AKT activity reported as IC50<0.1pM. In the patent application, these compounds were specifically claimed to have oral exposure, reduced or no... 

There have been many proposals on how to accomplish reexamination. Most foreign countries have a relatively simple procedure, whereby for a few months after a patent is published some third person can file with the Patent Office, in writing, the reasons why the Patent Office should not grant the patent. The opposer and the patent applicant then... 

Another provision of interest to chemists is the compulsory filing of a patentability brief, wherein the inventor discusses pertinent literature references and other background information and explains why his invention is patentable in the fight of this background. This requirement for a patentability brief is not in itself disadvantageous. It does, however, present risks to the patent applicant when considered in the context of other provisions of S.2255, particularly that which requires that the inventor, the assignee, and the attorney investigate all sources of information within their possession or control—this surely means within all... 

Sufficiency of disclosure is a more straightforward requirement. Sufficient technical detail must be provided in the patent application such that somebody of ordinary technical skill in the area could reproduce/repeat the innovation. Utility or industrial applicability is the last major prerequisite to patenting. This simply means that the innovation must have some applied use. 

After its submission to a patent office, the patent application is briefly reviewed and, if all the required information is provided, a formal filing date is issued. A detailed examination of the patent will then be undertaken by patent office experts, whose assessment will be based upon the four main criteria previously outlined. A report is subsequently issued accepting or rejecting the patent claim. The applicant is given the opportunity to reply, or modify the patent and resubmit it for further evaluation. In some cases, two or three such cycles may be undertaken before the patent is granted (or perhaps finally rejected). 

In the patent application, Terrapure states that the technology is most applicable to treated chlorinated organic contaminants present in concentrations ranging from 5 to about 200 ppm. 

As part of the bargain between the patent applicant and the state, the patent applicant must disclose his invention so as to allow a suitably-qualified third party to carry it out... 

Generally, if the invention has been disclosed to the public, even by one of the inventors, before the filing date of the patent application the invention is no longer novel and so a patent cannot be granted. However, major exceptions to this are in the USA and Canada where a one-year grace period for inventor disclosures applies. Some, more restricted, grace periods apply in other countries such as Japan and Australia. 

It is not possible, once the patent application is filed, to add further informahon. The applicant must therefore rely on the original disclosure which should be as complete and accurate as possible. Problems may arise if this is not the case. If the application does not describe the invention in sufficient detail, ideally across the full breadth of the monopoly claimed, the patent claims may be completely bad or their breadth may have to be reduced significantly. Thus, as much information as possible on how to carry out the invention should be given in the patent application. For example, if the patent application claims the production of a polypeptide in a host cell, and the only working example is its... 

Also, during examination of a patent application the scope or breadth of the claims often needs to be narrowed because of prior disclosures. Any amendments to the claims must be based on the contents of the application and so, ideally, the patent application contains many layers of fall-back positions which identify useful features or preferred variants of the invention ranging from the full scope of the claimed invention which was initially considered to be justified, down to the specific embodiments described. 

Search and examination of an application are necessary in most countries before a patent can be granted. The purpose of the search is to identify documents (whether earlier patent applications or journal articles) which are relevant in assessing whether the invention claimed in the patent application is new or non-obvious the purpose of the examination is for a patent office examiner to assess whether the claimed invention meets all the requirements of patentability and other requirements of patent law. The examination process is an interactive procedure between the patent examiner and patent applicant (or more usually his professional representative) in which the patent applicant may have to put forward arguments and evidence to rebut objections that the patent examiner may have to the patent application. During this process the patent applicant may have to amend (i.e. redefine) the claims to his invention. 

In most countries valid patent protection cannot be obtained once knowledge of the invention has entered the public domain, by written or oral description, by use, or in any other way before the date of filing the patent application. 

Hackh McLeod Explosive. A preliminary investigation of the effect on the explosion props of 50/50 Amatol of incorporating with it Nitronaphthalene benzaldehyde, in accordance with a process set forth in the patent application of Messrs Hackh McLeod, showed conclusively that the addn of 10% alpha Nitronaphthalene ( catalyst ) 2% benzaldehyde ( promoter ) renders the Amatol less sensitive to friction, less bfisant, and undesirably insensitive to initiation to detonation... 

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