The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Jan 31st, 2023, 11:47pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Patent Drafting/Interpretation
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Product patents
« Previous topic | Next topic »
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Product patents  (Read 3406 times)
cicy
Newbie
*




   


Posts: 14
Re: Product patents
« Reply #5 on: May 6th, 2004, 10:37pm »
Quote Quote Modify Modify

Dear vartak,
 
Thank you for your clarification.
 
If the specific salt and specific hydrate claimed in the second patent is not disclosed concretely in  the description and claims of the first patent, the second patent is virtual.
 
Best regards,
 
cicy
IP Logged
Ben
Newbie
*




   


Posts: 3
Re: Product patents
« Reply #6 on: May 8th, 2004, 12:53am »
Quote Quote Modify Modify

Hi everyone,
 
I'm a law student, and I just wanted to make sure my understanding is correct.
 
The first patent is a genus claim, which is by definition, broad and covers a bunch of different salt/active ingredient combinations.  The new product would be a species claim, basically a specific salt/AI combination.
 
In order to get a new patent (and new patent term) on this specific combination, you have to show that it is novel and unobvious in light of all prior art, including your first patent.  Basically, if the average scientist reading your first patent says, "Oh, we can just plug in this salt and it should work," then you shouldn't be able to get a new patent.  Think about it.  If you got a brand new patent, you'd essentially get two full patent terms for one invention.  But if this new combination is sufficiently novel and unobvious, then you should be able to get a new patent since its a new invention.  In either case, this new product should still be covered under your original patent.
 
Did I get that right?  Also, assuming the new combination isn't sufficently novel and unobvious, can you file a new patent application with a terminal disclaimer?
 
Ben
« Last Edit: May 8th, 2004, 12:57am by Ben » IP Logged
Rahul Vartak
Guest
Re: Product patents
« Reply #7 on: May 8th, 2004, 1:57am »
Quote Quote Modify Modify Remove Remove

Hi Forum,
 
Thanks for all the opinions.
The general opinion seems to be that the second patent which is a specific patent can get a product patent status?
 
I also wish to add that all the salts and hydrates claimed in the original patent are not usually exemplified in one patent.
 
Does this mean that if the Active ingredient has ben claimed in one patent with a general claim of salts and hydrates then OTHER PRODUCT patents can be granted for Na ,K , mesylate, fumarate,maleate, besylate, monohydrate, dihydrate, sesquihydrate etc  of the API claimed,if it is found to have better stability during formulations or as such.
In that case there could be more than one product patent for one API.
 
Secondly as long as the original patent is assigned to the same assignee, he can continue research and come up with better salts ,hydrates and continue extending  patent terms.
As long as the new product (the salt or hydrate ) is more stable than the earlier one it is going to have better market value and the new patent term should hold for the marketable product.
 
Looking at in the other way  If I search for a New product patent (very recent) and study it and within a short period claim  the salt or the hydrate not specifically claimed in the patent ,
Do I get a PRODUCT patent?
 That I suppose should not be too difficult a job  for big organisations !!!!.
 
 
Rahul Vartak.
 
IP Logged
M. Arthur Auslander
Full Member
***


I love YaBB 1G - SP1!

   
Email

Posts: 541
Re: Product patents
« Reply #8 on: May 8th, 2004, 2:47am »
Quote Quote Modify Modify

Dear Mr. Vartak,
 
As long as the patent is new, useful and unobious, you can keep on patenting for ever.
 
Others can also patent improvements, even if use of the patent would infringe you basic rights.
IP Logged

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
Reality Check® ELAINE's Workshop®
cicy
Newbie
*




   


Posts: 14
Re: Product patents
« Reply #9 on: May 9th, 2004, 5:06am »
Quote Quote Modify Modify

Dear Ben and Vartak,
 
You are right.
 
In China (also in US, i think), only the products (such as  compounds), which are disclosed concretely in the examples, are seemed to be known to a skilled person in the art. Therefore, if a first patent disclose a kinds of products (such as polymers), then the concrete products in this kind of products (such as polyethylene), which is not disclosed in the examples of the first patent,  can not destroy the novelty of the same products in the second patent whose patentee can be different from those of the first, i.e., the concrete products in the second patent is novel, according to the Chinese patent practice.
 
In addition, if the concrete products (such as polyethylene) can have unforeseen or much better effects than those in this kind of products, the concretely products can have inventiveness.
 
I wish these is enough for your understanding, and the second patent is a so-called selection invention in China.
 
Cicy
IP Logged
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board