Chemical and pharmaceutical companies spend millions of dollars on research and development, and come up with great inventions, be it on a novel drug to treat high blood pressure or a new kind of plastic that can resist a bullet; however, they often find that their patents do not stand up to a challenge by an infringer who wants to sell a copy-cat product.Patents are valuable tools in a company's arsenal to resist competition because it provides an exclusive right up to a period of twenty years. However, often inventors and businesses find out, five or ten years down the road, that the patent does not cover the product that they are selling or does not cover the product the competitor is selling. By the time they realize that the defect, it is often too late to correct it.
Patents are expected to describe the discovery in detail, and end in one or more succinct definitions of the invention, what are called patent "claims". The "claims" section is an important part of the patent, and success or failure in the market place rides on the accuracy of the claims. The claims, most often written by lawyers, contain many legal terms. When the legal terms do not match with the scientific meaning the inventor had in mind, then the patent may not survive a challenge by the competitor.Take for example the patent for an extended release drug formulation containing a drug solvent described in the claims as a "solubilizer". The patent holder argued that the term covers many different kinds of solvents and not just a surfactant.
The infringer argued that the disputed term covers only a surfactant and nothing else. The appeals court ruled, much to the disappointment of the patent holder, in favor of the infringer saying that the invention was described in the patent with only a surfactant as the solubilizer.Consider the patent for making crisp and flaky cookies. The patent claim stated, as part of the baking step, that the cookie dough is heated to 400 to 800 degrees.
Can a cookie really survive this intense heat? Wouldn't it produce a charcoal briquette rather than a crisp and flaky cookie? The judge ruled against the patent holder. The patent could have succeeded had it used "at", rather than "to".To avoid such problems and unpleasant surprises, the patent must be written carefully, keeping in mind that every word used to describe the invention must scientifically and legally correct, and every argument made to obtain the patent must be consistent with the original intent of the inventor.
For a free no-obligation consultation, please call Xavier Pillai, Ph.D., a Partner in the law firm of Leydig, Voit & Mayer, Ltd.
in Chicago, IL; Phone: (312)-616-5600 or email at xpillai@leydig.com. I help small to medium size chemical and pharmaceutical companies resist competition by securing strong patent protection.
.Xavier Pillai, Ph.D. is a Partner in the law firm of Leydig, Voit & Mayer, Ltd. in Chicago, IL. He specializes in the area of intellectual property, particularly patents as they relate to chemical, pharmaceutical, and biotechnological inventions. He is active in procuring patents worldwide and counseling clients on intellectual property related issues.
His clients include chemical industry, pharmaceutical industry, universities, and independent inventors.
By: Xavier Pillai
