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[ikir07]

Hello.  I had a great idea for a scar cream (prevents and gets rid of acne scars), tested it on myself for many months, and determined that it actually works.  However, a doctor out there already has a patent for the active ingredient, for a different use, but the patent is broad, so it would cover my use as well.  I would like to contact a pharmaceutical company (the ingredient is prescription grade) and somehow profit off this cream, but, of course, it's not my patent!  The doctor himself has no idea what power his patent holds!

How would I tactfully contact both the pharmaceutical company and the doctor who owns the patent so that I somehow benefit from all of this if the company decides to market this cream (which definitely works)?  Or am I screwed? Thanks.

[DogDayPM 9er9er9er]

...a scar cream ...actually works.  However, a doctor out there already has a patent for the active ingredient, for a different use, but the patent is broad, so it would cover my use as well. ...How would I tactfully contact both the pharmaceutical company and the doctor who owns the patent so that I somehow benefit from all of this if the company decides to market this cream (which definitely works)? 

Seems like you're asking the right questions here.  Congrats on your cream working, by the way.  You might also want to look at the available scar remedies and/or publications on scar remedies to try to find out if your invention/that ingredient has already been disclosed for that purpose.

If not, seems like you may have some options for patenting your own invention.  If the patent for the active ingredient doesn't basically disclose all of your own ingredients, you might have a shot at patenting the formulation itself.  Note, though, that if your other ingredients in addition to the one active ingredient you've mentioned are essentially common cream ingredients, then you'll have an uphill battle arguing why your traditional cream ingredients + the one active is not an obvious combination.  Unless you've got arguments for why no one would obviously add this active ingredient to a cream base.

The other option for patenting is method or system type claims, e.g. "method of treating scar tissue, comprising the steps of applying a composition comprising magic ingredient X and watching the scars magically disappear" ( ) type claims, if your main ingredient is unknown for this type of use and it's not an obvious substitution for something that is known for this use.  A patent professional can help you draft claims sets that try to cover both the actual use of the method (for which the patient is actually the infringer) and also try to cover a company providing the composition.

All the above regarded patentability, which is a wholly separate question from whether your invention infringes the doctor's patent - that is, you can have a patentable invention that still infringes the patent of another.  To your question, if you contact a pharma who would then be marketing the product, it would be dishonest for you not to inform them of the doctor's ingredient patent.  But if I was in your shoes, I would let them make the decision about how and when to contact the doctor.

Finally, I think you've already considered this given your original post, but it'd probably be a good idea to explore ways to protect your idea prior to disclosing it to the pharma corp.  Filing a patent application before disclosure is probably the best way to go about that. 

[ikir07]

There is only one active ingredient, so I can't re-patent this cream.

As for the method patent, in the doctor's patent, he claims in his method that this covers topical application of the active ingredient as well (his intended use was oral for some other condition), but it does not mention acne scars.  Could I spin this somehow in my favor?

Can you please walk me through this?  What can I do, and whom can I contact?  I am just a college student who has no idea how to handle this haha.  Thank you.

[klaviernista]

First, a word of caution.  Tread lightly.  You are wading into some highly litigious waters.  I don't say that to dissuade you.  But rather to let you know in clear, unambiguous language that pharma and cosmetics manufacturers are generally militant about enforcing their patent rights against would be competitors.  I know this first hand, as a former client of mine (responsible for ~30% of my 400+ case docket at my old firm) was a large cosmetics manufacturer who significantly invested in the development of therapeutic ointments.  It was not at all uncommon for them to ask one of our attorneys to buy all the topical ointments sold, e.g., at a CVS or Rite Aid, compare the ingredients to what was disclosed in some of their applications (which had priority dates stretching back 10+ years), and to write new applications with claims that read, verbatim, on the ingredients identified on the packaging of a competitors product.  The implications of that practice are obvious.  And if a cosmetics/pharma company is willing to pay a lawyer $350/hour to go to CVS and then create IP based on what he found, it will have no qualms crushing a would be competitor who might be infringing the existing claims of one of its patents.

But all that said, DogDay's advice is good.  You may well be able to obtain use or treatment claims in this instance.  "Topical" application does not necessarily imply, e.g., "treatment of scar tissue," or "treatment of acne scarring," or "use of a composition comprising X for the treatment of scar tissue."  Given the right facts, it is possible that a case could be made that such a use or treatment is novel and non-obvious in view of the prior art.  Considerations such as dosage, manner of application, side effects, etc. all come into play.

I also second DogDay's suggestion that you have some protection (read, IP) in place before contacting the pharma company.  An ounce of prevention . . . as they say.

[klaviernista]

There is only one active ingredient, so I can't re-patent this creampatent the composition of the active ingredient.

Fixed.  Companies successfully patent new methods of treatment that use old compounds all the time.

[ikir07]

I get what you are saying, klaviernista, but this time the pharma has no patent.  Would they really be able to add bullshit ingredients to my active ingredient and try to get their own patent?  There are zero substances out there that actually reduce scarring...I don't see how they can convince anyone that these ingredients are necessary (I am well versed on all skincare products).  If I get a patent for this "method" using my active ingredient, and I outline all the steps, isn't it pretty much set for me?  How could they get around it?

I understand that if a cosmetics company patents something, then they will try to cover as many ingredients as possible, but this is 1) treating a legitimate medical condition (not just simple cosmetics where there is no research to back any claims up), and 2) a situation that I feel I have control.

Oh and I won't be infringing on anything of any cosmetic company...this ingredient has never been seen before in a cream.  I will try to get a patent going asap...

[MYK]

You misunderstand.  They don't need to add ingredients.  The patent would be on the "method of use" to reduce scarring.

Probably the most famous example of this was the patent on the use of aspirin as a feed additive to increase pig growth.  Aspirin was not new, novel, or nonobvious -- but feeding it to pigs so that they grew faster was.

[ikir07]

So I if get this method of use patent submitted, then I am good to move on into the next phase?

[ikir07]

in reference to you aspirin example, the original patent owner mentioned that it may used as a topical and may be used for any kind of scarring.  it does not mention acne scarring.  am i still good to go?

[MYK]

So I if get this method of use patent submitted, then I am good to move on into the next phase?

First off, you submit an application, not a "patent".  Once you file your application, it will be several years (typically) before you get a patent, if indeed you get a patent at all.

And no, submitting an application is not sufficient, especially in light of what you asked next:

in reference to you aspirin example, the original patent owner mentioned that it may used as a topical and may be used for any kind of scarring.  it does not mention acne scarring.  am i still good to go?

Does "acne scarring" fall within "any kind of scarring"?  Is there something unique about "acne scarring" that makes it substantially different from "any kind of scarring"?

I suspect the answers are, respectively, "yes" and "no", but that is, as they say, highly fact-dependent, and will require that you go get a real legal opinion from someone whom you have made thoroughly familiar with the entire situation.

[MYK]

Actually, I should take that back -- it depends on what your "next phase" is.  For some reason, I assumed that that meant "rush off to start production".

Still, from your most recent post, it sounds very much like your best course of action right now, if you want to move forward, would be to find an attorney and get a real opinion on this matter.