A CRISPR patent was revoked due to unsuccessful transfer of priority rights to Europe through PCT.
Claims in chemical patents may cover a composition of matter (for example a particular chemical substance or mixture of substances), a process for making a chemical substance or mixture, a product yielded by a particular process or a particular method of using a product. One of the earliest patented chemical processes, in fact the first US patent, was awarded to Samuel Hopkins in 1790 for his process to produce potash.
Biotechnology involves harnessing biological systems, substances and processes to improve daily life. Some of these systems have been utilised for centuries, even before the modern patent system arose. One such example is the use of yeast in brewing alcohol. Biotechnology patents are often awarded to the novel use of known systems to yield a new outcome or for modification of such systems to improve their performance. One of the earliest and most notable patents awarded in the biotechnology field was awarded to Louis Pasteur, who developed a way to heat-treat milk and several fruit juices so as to extend their shelf life, by destroying pathogens.
Pharmaceutical inventions can present features of both chemical and biotechnology innovations. Useful drugs can originate from new approaches to extracting naturally occurring substances, or may be modifications of natural substances, or may be entirely new synthetic compounds. For example, new anti-cancer drugs have been synthesised based on the human genetic sequence.
Advances in the fields of chemistry, biotechnology and pharmaceuticals greatly affect the quality of life of humans, mostly for the better. However, inventors who bring about these innovations cannot benefit immediately after these technologies are revealed. Research and development place a large pressure for innovators to publish their work in journals to establish a pseudo “prior claim” over an invention of a chemical, biotech and pharmaceutical nature, but this practice results in the innovation being ineligible for patenting on the grounds of public disclosure before patent grant. Thus, a proper patent strategy should be in place, or else the inventors may end up forgoing the opportunity to maximise the commercial value of their innovations or even end up invalidating their patent applications altogether. A successful grant of a patent means exclusive rights of the patent owner over a certain innovation for 20 years in most countries.
The concept of patents in the chemical, biotech and pharmaceutical industries can be considered controversial because certain parties see patents as a way to stifle innovation and solely as a way to make a profit. However, patents are, to a certain extent, rewards to inventors for having contributed to science. How so? In return for having the patent in force, the patent owner makes the patent details public. Thus, the specifications in the patents provide background literature for future innovators to use in developing new or improved materials, processes and drugs.
Baker Hughes, a GE company, LLC
Saint IP Pty Ltd
Geistlich Pharma AG
Guangzhou Bobei Info-tech Ltd
|Chemical and industrial processes|
Clariant International Ltd
|Hydrocarbon extraction and refining|
Linde Engineering North America, Inc
|Mining processes and mineral extraction|
Uranium Beneficiation Pty Ltd
Agency for Science, Technology and Research
Chengdu Ka Di Fu Technology Co. Ltd
European Molecular Biology Laboratory
The Children’s Hospital of Philadelphia
|Antibody technology and characterisation|
Sagabio Co., Ltd
|Gene silencing and RNA interference|
Alnylam Pharmaceuticals, Inc
|Infectious diseases, particularly viral infectious diseases such as HIV and hepatitis|
Gilead Sciences, Inc.; Institute of Organic Chemistry and Biochemistry of the AS CR, v.v.i.
|Stem cell isolation and culture|
The Regents of the University of Michigan
|Protein structure and function|
|Cancer biology and genetics|
In order to maximise the value that the clients can obtain from their patent applications, a strategy suitable for many circumstances involves the following approach:
Depending on specific circumstances, however, other strategies may be more appropriate. It is important to discuss your particular situation with a qualified attorney to determine the best strategy in each case.
A range of different types of claims may be used in drafting chemical and pharmaceutical patent specifications. It is important to include as many of these as possible to allow for different patent conventions and rules in different jurisdictions. For example:
It is important where possible to claim a compound or class of compounds per se. This will often be in the form of a Markush claim, which provides for various alternatives for various groups in a chemical structure. It is important that the claimed structure does not encompass known compounds and that all compounds within the scope can reasonably be expected to meet the aim of the invention. Thus, for example, if a claim is to a compound for treating liver cancer, it should be reasonably predictable that all compounds within the scope of the claim have some (not necessarily high) activity against liver cancer.
Claims to a generic process for making the compounds can also be of value. This can enable action against a manufacturer, who is generally more able to pay large damages than an individual user.
Occurs when a compound is known, and the invention resides in the use of it for treating a disease. Claim forms include:
Occurs when compound A has been known for treating disease X, and the invention resides in the use of it for treating a different disease Y. Claim types include:
These are a form of second medical use claim which was developed in jurisdictions (particularly Europe) to:
Swiss-style claims are of the form “Use of compound A for the manufacture of a medicament for the treatment of Y”. Although Swiss-style claims originated in Europe, the European Patent Office no longer allows them, preferring the “compound for use” form.
Warren Chandler is a highly experienced patent attorney, an applied chemist and worked at CSIRO in field of pharmaceutical and drug delivery systems for treatment of diseased states. Warren has drafted and prosecuted numerous patent applications in the medical field including nasal dilation devices, mandibular advancement devices, devices for correcting spinal column misalignment, and new drugs and compounds for treatments of diseases such as Alzheimer’s, Hepatitis C virus.
Richard Grant has 20 years of experience as a researcher in the academic sphere and at CSIRO, and as a researcher/research manager in the chemical industry. He has worked on a wide range of chemical inventions spanning organic synthesis, pharmaceuticals, nanotechnology, polymer synthesis and processing, polymer composites, solar energy, carbon sequestration, graphene synthesis, sensor technology and others.