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   Claiming a pharmaceutical composition
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   Author  Topic: Claiming a pharmaceutical composition  (Read 5466 times)
bluesky
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Claiming a pharmaceutical composition
« on: May 14th, 2007, 12:10pm »
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Quick ?
 
If one has a claim to a pharmaceutical composition comprising X.  Generally, will such a claim be patentable over a reference disclosing simply a method for synthesizing X that does not teach or suggest its use as a pharmaceutical.  Does anyone know of a case with similar basic facts?  Thanks.
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Ted Gottlieb
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Re: Claiming a pharmaceutical composition
« Reply #1 on: May 14th, 2007, 12:34pm »
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From those facts alone, it may be allowable, but you will get a fight.
 
A method for synthesis, w/o more should not preclude patentability.  Especially if the reference having the method of synthesis does not disclose it pharmaceutical properties.  But if it is known in the art that X has the properties that render your composition useful, there could be a problem in getting the claims allowed.
 
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bluesky
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Re: Claiming a pharmaceutical composition
« Reply #2 on: May 14th, 2007, 12:41pm »
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on May 14th, 2007, 12:34pm, Ted Gottlieb wrote:
But if it is known in the art that X has the properties that render your composition useful, there could be a problem in getting the claims allowed.
 

 
Thanks for the quick feedback.  What if X has no known the****utic properties, however, X is a derivative of a compound that has the****utic properties?  
 
I would think a good showing of unexpected results of X relative to the parent compound would help support the non-obviousness of a pharmaceutical composition comprising X.
« Last Edit: May 14th, 2007, 12:42pm by bluesky » IP Logged
Isaac
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Re: Claiming a pharmaceutical composition
« Reply #3 on: May 14th, 2007, 2:23pm »
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on May 14th, 2007, 12:10pm, bluesky wrote:
Quick ?
 
If one has a claim to a pharmaceutical composition comprising X.  Generally, will such a claim be patentable over a reference disclosing simply a method for synthesizing X that does not teach or suggest its use as a pharmaceutical.  Does anyone know of a case with similar basic facts?  Thanks.

 
No.   Adding a characterizing word or two to the preamble won't allow you to claim a known composition.
 
Unless "pharmaceutical" is defined to mean something that makes "pharmaceutical X" different in structure or composition from "known X", the claim proposed claim as I understand it does not recite any novel subject matter.   Perhaps a method or process claim describing a treatment using the compound would be novel.
 
 
A recent CAFC case covering this old as dirt principle.
 
Abbott Labs v. Baxter Pharmaceutical Products
 
http://www.fedcirc.us/opinions/06-1021.pdf
 
« Last Edit: May 14th, 2007, 3:55pm by Isaac » IP Logged

Isaac
Sudhir Aswal
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Re: Claiming a pharmaceutical composition
« Reply #4 on: May 23rd, 2007, 4:49am »
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on May 14th, 2007, 12:10pm, bluesky wrote:
Quick ?
 
If one has a claim to a pharmaceutical composition comprising X.  Generally, will such a claim be patentable over a reference disclosing simply a method for synthesizing X that does not teach or suggest its use as a pharmaceutical.  Does anyone know of a case with similar basic facts?  Thanks.

 
You may claim the composition provided the new composition that appears to be a derivative in the instant case shows better efficacy in properties regard to X, depending upon the patent law of countries you may have to show that the compostion in addition to X react with X or form a synergisitc mixture.  
Yes if X is a known pharamaceutical you need not to elaboarate it much in the prior art, generally a reference may do, however make sure your composition includes an advancement to X and its known properties. You may also claim a process for syntesis of your composition.  
 
SUDHIR KUMAR ASWAL
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Sudhir Kumar Aswal
Patent Attorney, India
Aswal Associates
www.aswalassociates.com
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