Thursday 5 September 2013

10 Top Tips for Patent Drafting


1.       How Important And Valuable Is The Case?

Knowing how important a case is allows you to decide how much resource you want to commit when drafting it.  If this is going to be the main case protecting the company’s main product then careful thought will need to be given to it being in the best shape possible to undergo examination, opposition and even litigation.  That might mean providing more disclosure, for example in the form of fallback positions, and perhaps reviewing the quality of the data that is used.  However it should also be borne in mind that more disclosure will increase costs, particularly translation costs at national phasing.

2.       What Is The Purpose Of The Case?

A patent case has a commercial purpose which might be distinct from protecting the immediate implications of the experimental finding.  The claims will need to reflect that.  For example if the experimental work was done on disease X, but only related condition Y is of importance, then treatment of disease X might not even be mentioned in the claims.  Such considerations will also determine how the rest of the application is written and how the contribution is described.

3.       The Prior Art Effect  On Your Subsequent Cases

Any application you file will be prior art against your subsequent cases.  It is therefore important to consider during the drafting process what future patent applications are likely to be filed and whether are perceived to be more important.  Consideration should then be given to how this might affect drafting of the present case.  For example you may decide to avoid mentioning certain embodiments, e.g. combinations with other drugs, to minimise the prior art effect.

4.       Consider The Prior Art Effect On Competitor Cases

If you are in the situation where competitors are filing on similar subject matter, then it might be worthwhile to think about how to your application could be used to make it more difficult for them to gain patent protection in the area with subsequently filed cases.  One way of doing this is to draft the application so that it will make it more difficult for competitors to gain claims directed to a selection invention, for example by providing appropriate point disclosures within specified ranges. In the case of inventions relating to therapy it might be helpful to introduce disclosure relating to different patient groups, ranges of dosages and to describe all the relevant disease types.

5.       The Invention Is Only Defined In Examination

The problem being solved can change substantially depending on the prior art that is being cited.  The application needs to be drafted in a way that takes account of this.  All contributions and subconcepts need to be listed and there needs to be disclosure which gives flexibility to the way the invention is defined.

6.       Write The Summary Of The Invention Carefully

The summary of the invention needs to give a succinct description of what has been found and what the claimed invention essentially is.  This should be done in a way that does not limit the arguments that can be used in examination.  Often it is helpful to use very general terms, such as ‘The invention concerns treatment of condition A.  The inventors have investigated the binding between X and Y, which has allowed regulators of the binding to be identified which can be used to treat A’. This phrasing allows flexibility in the arguments that can be used to defend the claims.  Inventive step could be argued on the choice of focusing on X and Y, the finding of unexpected binding properties, the identification of regulators able to affect binding or the realisation that such regulators can be used to treat condition A.

7.       Consider All Layers Of The Invention

Biotech inventions can sometimes be seen at different levels.  Where this is possible consideration should be given to how best to view and present the invention.  For example if a polymorphism in the insulin gene is found to affect calcium levels, then the invention can be seen as:

(i)                  finding a link between the polymorphism and calcium levels

(ii)                finding a link between insulin and calcium levels

(iii)               finding a link between factors that affect insulin expression or activity and activities affected by calcium ions

Clearly the prior art and considerations of support/sufficiency will affect how best to view and present the invention and thus how broadly to draft the claims.

8.       Consider All Product Claims And Novelty Over Nature

Where a product is found in nature there should be basis for claiming it in isolated form, preferably with defined levels of purity.  It might also be worthwhile to consider claiming it in the different forms it occurs in the invention, for example as part of a viral capsid or in combination with substance X.

9.       Are There Claimable Data/Computer Aspects

In cases where data is the product of a method of the invention consideration should be given to whether analysis of the data on a computer would be patentable.  For example if presence of gene polymorphisms is being used as the basis of diagnosis then it may be possible to claim comparing the results of the diagnostic test with a database of polymorphisms to determine the disease condition.  Further claims to choosing or manufacturing the appropriate medication based on the data might also be possible.

10.   Think About In Vivo Generation Of Substances. 

Consider whether you need to cover administration of a pro-drug or other substance that only gives rise to the active compound in vivo. 

 

4 comments:

  1. Dr Itua cure my HIV, I have been a ARV Consumption for 10 years. i have been in pains until i came across Dr Itua on blogs site.I emailed him about my details of my HIV and my location i explained every thing to him and he told me that there is nothing to be scared of that he will cured me, he gave me guarantee,He ask me to pay for items fees so when i'm cured I will show gratitude I did and giving testimony of his healing herbs is what I'm going to do for the rest of you out there having HIV and other disease can see the good work of Dr Itua.I received his herbal medicine through EMS Courier service who delivered to my post office within 5 working days.Dr Itua is an honest man and I appreciate him for his good work.My GrandMa called him to appreciate him and rest of my friends did too,Is a joy to me that I'm free of taking Pills and having that fat belle is a nightmare.you will understand what i'm talking about if you have same problem I was having then not now though.I'm free and healthy Big Thanks To Dr Itua Herbal Center.I have his calendar too that he recently sent me,He Cure all kind disease Like,Cancer,Herpes,Fibromyalgia,Hiv,Hepatitis B,Liver/Kidney Inflamatory,Epilepsy,Infertility,Fibroid,Diabetes,Dercum,Copd ,and also Bring back Ex Lover Back..Here his Contact .drituaherbalcenter@gmail.com Or Whats_app Number +2348149277967

    ReplyDelete
  2. such a nice post i really apprciate your writting skills and thanks for providing me all information regarding ardrntip.Office Action Response Drafting

    ReplyDelete
  3. Hi,

    Thanks for sharing your Blog. It was very nice. If you are looking for the patent drafting services, Then Metacog Patent Research Solutions Pvt Ltd is here to help you out. We provide the best services to our clients with proven results.

    ReplyDelete
  4. Good day everyone i am from zambia, I have this
    great opportunity to share this testimony about
    how I get cure for my HIV,Two years ago I was
    HIV positive so I was suffering from it I was
    doing one thing or the order to get a cure there
    was know way for it so I was on my research on
    the internet I saw a testimony of a young man,
    about how DR udo get a cured for HIV
    with his herbal medicine I was surprise and I
    do not believe I said okay let me try him I
    contact him that night on his email and he gave
    me instructions and I follow it he told me what
    to do and I did it, after a week he sent to me
    the medicine true DHL he told me how to use it
    and I did exactly how he instructed me to use it,
    after two weeks he told me that I should go for
    test, indeed I did it, and behold I was HIV
    "negative" am so grateful Doctor, now am happy
    with my Husband and two kids I want to use this
    opportunity to say this, please if you have this kind
    of disease called HIV, I want you to contact him on is
    email; DR.(udoherbalhome@gmail
    .com) or whatsapp
    him +2347042731673 also help you get a cure for HPV, HERPES,
    CANCER,disease and he can cure you from any kind of diseases
    with his herbal medicine. all you have to do is to believe
    him. thank you my Dr udo may god bless you.....

    ReplyDelete