1. PHARMACEUTICAL PATENT APPLICATION
PROSECUTION TIPS Innovation Advancement Workshop
WENDY MARSH
Direct Number: (515) | Facsimile: (515) |
700 Walnut, Suite 1600 | Des Moines, IA | (515)
Attorneys at Law | Offices in Des Moines, Ames and Cedar Rapids
WENDY MARSH is a shareholder in the firm's Intellectual Property Department, practicing primarily in the area of intellectual property matters, including patents, trademarks, and copyrights. Wendy received her degree from Drake University in pharmacy, and practiced as a pharmacist for several years following graduation. She received her law degree from Drake in Wendy frequently appears before the Patent Office Board of Appeals and Interferences as well as the Trademark Trial and Appeal Board, before which she has argued numerous patent and trademark appeals. In addition to prosecuting patent and trademark applications, Wendy counsels clients on intellectual property issues relating to intellectual property acquisition, protection, enforcement, and management. She is a past chair of the Iowa Bar Association Intellectual Property Law section and past president of the Iowa Intellectual Property Law Association.
2017
©2017 Nyemaster Goode, P.C. 1

2. Goals in patent claim drafting
PATENTS
Goals in patent claim drafting
First, you must define a working invention
Second, the invention must be novel and non-obvious 2

3. PATENTS An invention must be patent eligible - § 101
Things that are NOT patent eligible:
Abstract ideas
Naturally occurring compositions
Natural principles
Previously unknown natural phenomenon 3

4. Tips for Navigating § 101
Apply naturally occurring substance to a new, useful end, i.e. a new drug
Focus on having a step that is not routine or conventional
Define unconventional step narrowly and specifically 4

5. An invention must meet the requirements of § 112:
PATENTS
An invention must meet the requirements of § 112:
The claims must set forth the subject matter that the inventor regards as the invention - subjective
The claims must particularly point out and distinctly define the metes and bounds of the invention - objective (person of ordinary skill in the art) 5

6. Tips for Navigating § 112
Describe invention broadly and definitely. Words of degree are risky, i.e. more stable, faster, stronger, etc.
Discern the boundaries
Sufficiently describe how to make and use the invention – only objective enablement required
Claim encompassing 10,000 combinations with only one example is probably not enabled 6

7. General Tips
Dream up alternatives: describe invention specifically but capture it broadly. Try to predict where competitors might be going
Think of different embodiments and convey in the specification there are many ways to carry out the invention. Describe more than a single embodiment if possible 7

8. General Tips
Consider your competitors: how could they get around your claims?
Take advantage of different claim types: i.e. composition, method of using the composition, method of manufacturing the composition 8

9. Define a New and Non-Obvious Invention
Include something in the claim that is different from what is in the prior art
Differences can include differences in the composition, dose, method of manufacturing, new and unexpected combination, unexpectedly good results/synergistic effect, different dosage form, dosing schedule, etc. 9

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