The Intellectual Property Forum

Reading this string convinces me that my long-ago-made decision to go "old school" with Markush claims was a sound one  .  I think it is established that, in well written English, and is conjunctive, or is disjunctive. But i took freshman retoric a long time ago.  Maybe in construing claims in a particular issued patent with a particular spec and a particular PH, CCPA/CAFC held otherwise.  Same result next patent?   

PH:  Maybe I’m not devious enough, but I can’t see a real benefit to delaying issue and, if you have a Notice of Allowance and Issue Fee Due, it will cost you some money to withdraw and still keep application alive (e.g. eschew QPIDS and file an RCE just to have some miscellaneous piece of prior art” considered”).  And the patent term clock is already running.  Concerning issue fees, an old commercial from Ford Motor comes to mind: “you can pay me now [for maintenance], or you can pay me later”.  But pay you will (or abandon). 

You mentioned this is a national stage.  The 2005 PCT application has published and your competitors - if awake - are already “on” to you.  They just don’t know when - if ever - you will launch.  So???  If the app matures, they still won’t know your business plans. 

Fill me in on your business thinking.  Is there a benefit to “this skin cream is so good they have even applied for a patent!” vs. “this skin cream is so good it’s even patented!”  If all you want is “patent pending”, just keep filing  - and paying for - CONs and abandoning parents. 

If launch secrecy is your biggest business concern (don’t necessarily understand that), never file a PCT.  File US only w/ nonpub request and assume the risk of getting knocked-off overseas. 

Unless you are on the “PPH”, other jurisdictions are usually “non-plussed” with your US allowance, and vice versa. 

smgsmc:  Thanks!  You saved me a little embarrassment.  That case is not (yet!) in my “fave binder”.  And, uninformed by UR post, I would have, a priori, responded quite differently.  Will check case tomorrow.  Very curious how recitation of “at least one” with conjunctive excluded a combination. Didn't do well in high school grammar.  Maybe why I personally use traditional-stiff-and-stilted  “Markush” language and end w/ … and a/any combination thereof / of them (if intended).  It's only a few extra key strokes 

Soul:  If you want a claim-as-filed to require three elements, yes.  Or use a multiple dependent claim: 3. The apparatus of either of claims 1 or 2 further comprising ...  But multiple dependent claims are "disfavored" in US practice (and cost $ to file and can rapidly run-up claim fees).   

Gerd:  Finally got a chance to get back to this.  Sorry.  Academically interesting 4 me.  Are we making more out of the “distinction”  than needed?  But, from experience (sigh), I know how much the late night infomercial people love to tout patented / patent pending. 

Concerning UR last post, IMO “prevention” is not always “treatment”.  For example, a vaccine can prevent a disease (e.g. smallpox, measles, polio), which I take to mean prevention of development of clinical manifestation of signs and symptoms, maybe lab findings too.  But as far as I am aware, vaccines are not used to “treat” a disease once signs & symptoms have manifested themselves.  It goes back to the underlying mechanism of action.  (N.B. of course up/downregulation can be anticipated, my comment was directed to my personal view of ‘best practice’ when claiming a method of treatment ab initio).  So, at least in some circumstances, prevention and treatment are IMO clearly distinct from each other.  And if they are not distinct, either one presages - anticipates or renders obvious - the other.  I was wrong when I typed that which cures always prevents. 

Concerning ED, if I recall the underlying mechanism of sidenafil is blocking (or unblocking?) a particular signaling enzyme that “closes the spigot” to vascular tissue in the penis.  Production of this enzyme is reduced (or something that inhibits same reduced) during sleep, giving rise to nocturnal erections, nature’s way of checking the plumbing if you will.  The molecular mechanism is reasonably well established. 

So what is ED anyways?  Looking at the couples in the xxxxx(R) or Cialis(R) ads, and absent some confounding factors, it is just part of the natural aging process.  It is not something you “prevent”, you “ameliorate” the (natural) lack of ability to achieve or maintain erection by quashing that enzyme that gets overproduced (or whose natural antagonist get under produced).  In fact, every time a male takes xxxxx(R) to “treat” ED, they are just “preventing” clinical manifestation of the sign / symptom.  The Argaiv folks could, in principle, file an NDA for the second indication.  But FDA will put them to their proofs re endpoint.   

A different but “related” hypo comes to mind: HSV2.  Once one has the virus, they have it forever.  Valacyclovir was developed as an improvement to acyclovir and famcyclovir for treating HSV2 outbreaks (i.e. treating signs and symptoms).  But I understand valacyclovir is also approved for so-called “suppression therapy” (don’t know if indication patented)  But valacyclovir does not prevent infection w/ HSV, no prophylaxis like a vaccine, it only suppresses signs and symptoms or recurrence thereof.  Any "prophyaxis" is agianst manifestation of signs and symptoms, not against the viral infection pre se. 

So IMO there is no one size fits all situations“rule”.  It all depends on the individual facts.  And the only way to “know” that I will develop the disease / disorder is if it has a proven genetic component.  Even then it is only a “disposition” to develop same. 

I’ll add my (always off-key) voice to the chorus.  I, too, have always considered the terms as synonyms.  But I can see the shading:  no enforceable patent vs. enforceable but possibly invalid based on older prior art.  The later does involve more work, more risk, and more $$$.  Timing is indeed an issue.  But I can’t “clear” a product or process wrt enforceable patents until I have a reasonably fixed idea of what commercial activity is contemplated.  And at least some cost will have always been sunk to get to that stage. 

I did a brief stint "on loan" as in-house for a "big pharma" firm and was in lots of meetings at very early stages.  But that is perhasps the exception.   

I try to do it in stages.  Don’t we all?  Look for a potential “deal killer” first, deal with it if one is found if client willing to plunk-down the additional $$$ and willing to live live with the uncertainty inherent in an invalidity opinion (no guts? no glory.  After all, the go-for-the-gusto-devil-may-care-entrepenurial spirit is allegedly the 'backbone' of our economy, our nation).  Why go “whole hog” from the getgo?  Guess it depends on the individual situation and the risk tolerance of the particular players.  FWIW on (alas rare) occasion I’ve earned a fee from potential investors willing to spend their own 10 - 20K before plunking-down 1 to 2 M+ on a venture, rather than looking for reps and warranties from investee.  How do I find more of such?   

Patentstudent:  Oops  I didn’t address the second part of UR post.  “Shuffling” steps around is in principle OK.  The steps of a method claim are not restricted to the order recited unless “logic and grammar” otherwise require.  “Comprising” A, B, and C does not of course exclude D.  So if the combination of A+B+C+D is known and needed in the process; “shuffling” hasn’t IMO accomplished anything.  No matter how you slice it, and if my understanding of UR OP is correct, the patentability of your claims to novel subject matter would depend on the nonobviousness of employing step E.  OTHO if client has unexpectedly discovered that step D is in fact not needed, your major indy could be “a process for … comprising (or comprising the steps of, subject of a different thread) A, B, C, and E.”  But you still have to “pony-up” the unexpected results. 

Caveat: I practice in the chemical arts where “logic” usually - but not always - requires steps be performed in a particular order, e.g. step E would make no sense without step D having been performed (e.g. if step e is hydrolysis, there has to be something to hydrolyse).  But I recognize “one-step” method claims can be allowable. 

MYK:  I think that's a big part of the point of TEAS versus TEAS-PLUS.  You want the "plus" and save a crummy $50? (ok, its not my money), you use a "canned" description IF it accurately describes the G/S.  Otherwise, write UR own.  I started doing TM only about 3yrs ago and quickly learned that properly crafting those few sentences ain't always so easy.  Per JS, usually 'correctable' w/ a telecon.  But a couple of times in the beginning, I had to pay for a second class     But the client was cool with that (phew!).  Best, NJP1