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[bluesky]

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.

[Ted Gottlieb]

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.

[bluesky]

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 therapeutic properties, however, X is a derivative of a compound that has therapeutic 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.

[clarklawyer]

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

[sudhiraswal]

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

[smartchante]

go to johnson and johnson website you can submit your info to them, thats if its patented...go to the investors link

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.

[ThinkPatent]

You can definitely patent a claim for pharmaceutical composition comprising X, despite of a known reference disclosing synthetic process for X. Technically when you file a patent application for pharmaceutical composition comprising X then such application is examined in specific patent classification related to therapeutic medicament, and examiner would try figure out references which will closely relate to your pharmaceutical composition, not exactly related to X. If there are patent disclosures which disclose pharmaceutical compositions quite similar to your claimed composition only differing in active ingredient then it may hurt your inventive-step, especially if disclosed active ingredient and X have same therapeutic properties.