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Is it Patentable?
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   Is this new method of use patentable?
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   Author  Topic: Is this new method of use patentable?  (Read 1749 times)
bwashburn
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Is this new method of use patentable?
« on: Jun 13th, 2006, 4:48am »
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Assume the following situation.  
 
1.  A prior art publication discloses that compound X is suitable for the treatment of depression. It further notes that compound X is in the same class of drugs as compound Y. Compound Y is previously known to be very effective for depression, albeit with some undesirable side effects.  Compound X, the publication claims, is free of these side effects. The publication further suggests a daily dosage of 300mg, which is comparable to the daily dosage commonly used for compound Y. The prior art publication only includes studies in a small group of rats.  
 
2.  Subsequently, in the course of clinical trials, it is surprisingly discovered, that compound X is in fact 200 times more potent than compound Y. Based on this surprising discovery, it is concluded, that the suggested daily dosage should be 1.5 mg.  
 
Question:  
 
Would a claim covering a “method of treating depression with compound X in daily doses of about 1.5 mg”, be patentable over the prior art publication?  
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Wiscagent
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Re: Is this new method of use patentable?
« Reply #1 on: Jun 13th, 2006, 5:41am »
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The invention, i.e. "treating depression with compound X in daily doses of about 1.5 mg," is certainly useful and novel.
 
It also appears to be non-obvious.  A treatment method that requires only 1/200th of the prior art dosage appears unexpected.
 
Since the invention is useful, novel, and non-obvious it should be patentable.
 
Of course the scenario is a simple hypothetical situation.  In an actual patent application it is likely that the examiner will also cite prior art suggesting that the higher potency X was obvious.
 
Richard Tanzer
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Richard Tanzer
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Isaac
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Re: Is this new method of use patentable?
« Reply #2 on: Jun 13th, 2006, 5:42am »
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Possibly.
 
But almost certainly the publication says more than is described here.  Even though the publication recommends 300mg, the publication may contain data which would disclose or suggest lower doses.  
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Isaac
bwashburn
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Re: Is this new method of use patentable?
« Reply #3 on: Jun 15th, 2006, 5:44pm »
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Thanks Richard and Issac for your replies.
 
Please let me clarify my question.
 
The inventors or the prior art publication simply mistook compound X to be comparable to compound Y in terms of effectiveness.  Based on this understanding they suggested a daily dosage of about 300mg for compound X.
 
However, subsequently, in the course of clinical trials it is discovered that compound X is 200 times more potent than compound Y.  Thus, the recommended dosage for compound X is just 1.5 mg.
 
Now, this is no doubt a very surprising discovery.
 
However, if the claim includes “comprising of” a dose of 1.5 mg, wouldn’t a dose of 300mg anticipate the 1.5 mg dose?  In other words, isn’t a 1.5 mg dose inclusive in the 300 mg dose?  
 
While I may want to use “consisting of”, the transitional phrase “comprising of” is much more desirable.
 
Thanks,
Brian
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Isaac
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Re: Is this new method of use patentable?
« Reply #4 on: Jun 15th, 2006, 8:51pm »
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on Jun 15th, 2006, 5:44pm, bwashburn wrote:

 
However, if the claim includes “comprising of” a dose of 1.5 mg, wouldn’t a dose of 300mg anticipate the 1.5 mg dose?  In other words, isn’t a 1.5 mg dose inclusive in the 300 mg dose?

 
I don't think so.  In any event  a claim to an exact dosage would be very limiting.  You probably won't to claim a range or else claim a calcuated dose.    
 
The difference between comprising and consisting is not helpful here.
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Isaac
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