Patents: Claims

This Text is very narrow definition of claims but most common claims structure 

Claims are indispensable part of non-provisional patent specifications and Claims defines what is protected and/or which is to be protected (interest of Applicant/Patentee). In fact, the vaule of patents lies on what is protected by claim, than what is disclosed in patent specification.

Structure of Claims

a) Preambles

Shows scope of the particular claim like “An improved process of Preparation of …” and preambles should not contain unnecessary limitations. Dependent claims preambles may be similar to parent claim(s).

b) Transition words

The word(s) between the preamble and the claim body are transition word(s) and that materially affects the claim. Two transition words are commonly used in claims, they are “Comprising” and “Consisting of“ 

Comprising is open transition word, it means “including following elements but not excluding others”

Consisting of  is closed transition word, it means “including following element, no more or no less”

Consisting essentially of is slightly broader version of Consisting of  this means “including following elements, but also elements which do not affect the basic and novel characetristics of the invention” 

c) Elements of claim

Elements of claim is body portion of claim includes various components of invention

Types of claims

1) Product by process claim 2) Markush or chemical claims 3) Method or process claim

Ref:

1) Landis on Mechanics of Patent Claim Drafting

2) Draft manual of Patent Practice and Procedures, Indian Patent office

To start posting daily

As the name of the blog indicates,  Here after i post little informations on Patents/IP

Patent granted in India 2007-08

Indian Patent office granted 15,262 of patents in financial year 2007 -08 and this is record number of patent granted in a year. (Click here for full story). In previous year it was 7539 and total number of filing also crossed 35,000.

The another news source made note on this news that quality of the indian granted patents are also of concern and it compares with EPO’s No. last year EPO had granted 54,000+ having 1300 of examiners and Indian patent office having approxi. 135+ examiners had granted 15,262 patents. (To read full story Click here)

Patenting Flow Chart

Eisai got favorable injunction for preventing generic version of Aricept

Teva Pharmaceutical is not allowed to start selling generic version of Aricept Anti Alzhimer’s drug. Teva had file PIV ANDA for launching generic version of Eisai’s product Aricept.

According to Bloomberg, Eisai’s biggest product with $2.16 billion in worldwide sales in the year ended in march 2007.

The case is Eisai Co. v. Teva Pharmaceuticals USA Inc., 05cv5727 and 07cv5489, U.S. District Court for the District of New Jersey (Newark).

To read full story: http://www.bloomberg.com/apps/news?pid=20601101&sid=a_oB7QDoTda0&refer=japan

Roche Erlotinib Patent suit brief

Roche is an exclusive licensee for Erlitinib hydrochloride in india and patent details are below:
Granted patent: IN196774
Grant Publication: 14/Sep/2007
Application: 537/DEL/1996
Applicant: Pfizer
Corresponding patent: US5747498 [Orange Book listed]
US expiry: 30/Mar/2015

Erlotinib was developed jointly by OSI pharma and Pfizer, later pfizer granted developmental and marketing rights to OSI pharma for royalty free. OSI started clinical development and clinical studies alliance with roche and genentech. This mail-box application of erlotinib was opposed by Natco pharma (Indian drug company) before grant and lost in the pre-grant opposition.

Cipla, indian drug company, announced lunch of generic version of erlotinib (Tarceva) even when patent is in force in india. As expected Roche file infringement suit against lunch of generic version of Erlotinib by cipla and asking injunction to stop manufacture, sale and distribution in Delhi High court.This awaited judgement of delhi high court came on 20th March 2008, allowing Cipla to continue the manufacture of drug till a final ruling on the case. Court declined the temporary injunction against cipla in the view of public interest or as the Mint put it – ‘irreversible damage to the patients’ since the cost of Cipla’s generic version is one-third that of Roche’s patented drug.Elabarate blog article on judgement in SpicyIP: http://spicyipindia.blogspot.com/2008/03/patents-vs-patients-ciplas-victory-and.html

After this judgment, there was a news in economic times that Natco plans to lunch of generic version.