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I have an Invention ... Now What?
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   Drug for a different use
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   Author  Topic: Drug for a different use  (Read 1513 times)
iprindia75
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Re: Drug for a different use
« Reply #5 on: Aug 29th, 2006, 7:08am »
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Ya this what exectly ex. of swiss claim. In European contries you can not apply for the same but in US and In india it is allowable if the use is in such a huge requirement of the country. as you know that in the case like AIDS, Cancer or other life treatening disease the state can give approval for the patent but that may me for the method for manufacture of the so and so drug for the used of so and so disease. No product patent you will get. another thing is you can also get the patent on Process for the prearation of the so and so formulation in the treatment of so and so disease.
 
In this case if your preparation of the formulation method is different than you have o take permission of the FDA,.  
One major problem of this type of patent will be a lawsuit from the company wherein innovator and generic companies are existing in the market for the same drug but for the different disease.
 
Best of luck.
 :)
« Last Edit: Aug 29th, 2006, 7:10am by iprindia75 » IP Logged
Rajeev_Madnawat
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Posts: 9
Re: Drug for a different use
« Reply #6 on: Dec 10th, 2006, 4:58pm »
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You may need to look closely into the patentability aspects of this "new use". Here is what MPEP section 2112 states:
 
I.SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DIS-COVERY OF A NEW PROPERTY
 
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.”
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable......
 
 
on Apr 14th, 2006, 8:33am, cjpress wrote:
I think that I may have discovered that a drug already in the market for a specific use can also be effective to cure another disease.  It has worked on me so far. I still need to give it time to verify such claim. This drug is already sold in its generic version.  Could I file a patent or should I try to make a deal with one of the companies which make the drug since it is sold generic?  
 
Thank you.

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Rajeev Madnawat, Patent Attorney , San Jose, CA

WARNING: This public message board posting is designed for a general discussion on the subject matter. This is not a legal advice.
Rajeev_Madnawat
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Re: Drug for a different use
« Reply #7 on: Dec 10th, 2006, 5:02pm »
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Well, it appeared that you just discovered a "hidden property" of something, you really did not invent that "something". Also, IMHO, just because it worked in a certain manner on you, is not enough to bypass the FDA approval process.
 
on Apr 14th, 2006, 10:08am, cjpress wrote:
FDA has not been involved.  It happens that I believe that this drug is responsible for curing my desease since I am not taking any other medication.  

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Rajeev Madnawat, Patent Attorney , San Jose, CA

WARNING: This public message board posting is designed for a general discussion on the subject matter. This is not a legal advice.
ThinkPatent
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Re: Drug for a different use
« Reply #8 on: Jan 3rd, 2007, 1:39am »
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Yes, you can file a patent application for a new or more specifically unknown use of a known drug. But just going through your queries it seems to be that it is just your observation that drug is working to cure disease which is prima facie not indicated by the drug companies. However, to file a patent application for a new indication you have to support your contention by referring and disclosing supporting clinical data for new indication, which may be quite expensive sometimes. Otherwise it would be a reach-through claim, which may be difficult to get through examination process and can be easily revoked later on.  
 
As already mentioned by others such type of claims are often referred as Swiss-type claims in Europe. However, in US such claims are referred as indication or method-of-use claims. To file a patent application for a new indication you need to be very careful in making disclosure, remember not to make disclosure such that it signify that a new indication is mere ‘hidden property’ which an inventor accidentally came across (which in case you did).  
 
Patent Specialist & Analyst
Mumbai, India
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Rajeev_Madnawat
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Re: Drug for a different use
« Reply #9 on: Jan 3rd, 2007, 8:17am »
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Wouldn't this be a violation of "Duty of Disclosure, Candor, and Good Faith"?  
 
 
 
on Jan 3rd, 2007, 1:39am, ThinkPatent wrote:
......... To file a patent application for a new indication you need to be very careful in making disclosure, remember not to make disclosure such that it signify that a new indication is mere ‘hidden property’ which an inventor accidentally came across (which in case you did).  
 
Patent Specialist & Analyst
Mumbai, India

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Rajeev Madnawat, Patent Attorney , San Jose, CA

WARNING: This public message board posting is designed for a general discussion on the subject matter. This is not a legal advice.
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