Patent: 10,064,856

Summary for Patent: 10,064,856

Title:	Pharmaceutical compositions
Abstract:	Methods and compositions are provided which comprise effective amounts of an analgesic to treat a subject, including reducing or eliminating an adverse effect associated with the analgesic.
Inventor(s):	Bosse; Paul (Jupiter, FL), Ameling; John (Jupiter, FL), Schachtel; Bernard (Jupiter, FL), Takigiku; Ray (Loveland, OH)
Assignee:	LOCAL PHARMA, INC. (Las Vegas, NV)
Application Number:	15/683,635
Patent Claims:	see list of patent claims

Understanding and Analyzing the Claims and Patent Landscape of US Patent 10,064,856

Introduction

When evaluating the strength and viability of a patent, such as US Patent 10,064,856, it is crucial to conduct a comprehensive analysis of its claims and the broader patent landscape. This analysis involves several key steps, including a prior art search, assessment of novelty and non-obviousness, and an examination of the patent's position within its technological field.

Prior Art Search and Analysis

A prior art search is the foundation of any patentability analysis. This involves identifying existing patents, publications, and other non-patent literature that may impact the novelty and non-obviousness of the patent claims[2].

Determining Novelty

Novelty is a critical requirement for patentability. It means that the invention must be new and not already disclosed in the public domain. A thorough search of prior art helps in determining whether the claims of US Patent 10,064,856 are novel. This includes reviewing patents, academic journals, conference proceedings, and other relevant publications to ensure that the invention has not been previously disclosed[2].

Assessing Non-Obviousness

Non-obviousness is another essential criterion. The invention must not be obvious to a Person Of Ordinary Skill In The Art (POSITA). This assessment involves comparing the claims of the patent with prior art to determine if the invention would have been readily apparent to someone skilled in the relevant field. If the claims can be seen as a straightforward combination of existing technologies or methods, they may be deemed obvious and thus not patentable[2].

Claim Analysis

Reviewing Invention Disclosure

The first step in analyzing the claims is to review the invention disclosure. This involves understanding the core elements of the invention and drafting potential claims that capture its essence. Claims should be clear, concise, and well-defined to ensure they meet the standards set by the USPTO[2].

Drafting and Refining Claims

Drafting claims is a delicate process. Claims must be broad enough to cover the invention but not so broad that they encompass prior art. The process involves several iterations, where claims are refined based on the results of the prior art search and analysis. For example, if a claim overlaps significantly with prior art, it may need to be narrowed or modified to distinguish it from existing technologies[2].

Example of Claim Analysis

Consider a hypothetical claim from US Patent 10,064,856: "A method of producing X, comprising steps A, B, and C." If prior art reveals a similar method with steps A and B, but not C, the claim might still be considered novel and non-obvious if step C is a significant and unexpected improvement. However, if step C is well-known in the field and its application is obvious, the claim could be rejected as obvious over the prior art[2].

Patent Landscape Analysis

Patent Classification and Technology Fields

Understanding the patent landscape involves categorizing the patent within its relevant technology field. The USPTO uses a classification system to organize patents into specific technology groupings. This helps in identifying similar patents and understanding the competitive landscape. For instance, if US Patent 10,064,856 falls under the "Electrical and Electronics" field, analyzing other patents within this field can provide insights into the state of the art and potential competitors[4].

Patent Landscape Reports

Patent landscape reports provide a comprehensive overview of the patent outlook for a given technology or industry. These reports can highlight trends, key players, and areas of innovation, which is crucial for strategic decision-making. For US Patent 10,064,856, such a report would help in understanding its position within the broader technological landscape and identifying potential opportunities or threats[4].

Continuations and Family Allowance Rates

In the context of US patents, continuations and family allowance rates are important considerations. Continuations can lead to multiple related applications and patents, complicating the calculation of allowance rates. For example, if US Patent 10,064,856 has continuations or is part of a larger family of patents, understanding these relationships is essential for assessing its overall strength and potential for future patents[1].

Legal Framework and Patentability Requirements

The legal framework governing patentability is outlined in the Manual of Patent Examining Procedures (MPEP) and relevant statutes such as 35 U.S.C. § 102 and § 103. These requirements include novelty, non-obviousness, utility, and enablement. Ensuring that US Patent 10,064,856 meets these criteria is vital for its validity and enforceability[2][3].

Utility and Enablement

Besides novelty and non-obviousness, the patent must also meet the requirements of utility and enablement. Utility means the invention must have a practical application, while enablement requires that the patent disclosure be sufficient for a POSITA to replicate the invention. These aspects are often overlooked but are crucial for the patent's validity[2].

Interference Practice and Pre-AIA Provisions

For patents that pre-date the America Invents Act (AIA), interference practice under pre-AIA 35 U.S.C. § 102(g) may apply. This involves determining if another inventor made the same invention before the applicant and whether it was abandoned, suppressed, or concealed. Understanding these provisions is necessary for patents that straddle the pre-AIA and AIA regimes[3].

Conception and Mental Element

The concept of conception is central to patent law. It involves the formation of a definite and permanent idea of the complete and operative invention in the mind of the inventor. This mental element is superior to the physical act of creation and is a key factor in determining priority of invention[5].

Key Takeaways

• Prior Art Search: A thorough prior art search is essential to determine the novelty and non-obviousness of patent claims.
• Claim Analysis: Drafting and refining claims to ensure they are novel, non-obvious, and meet USPTO standards is critical.
• Patent Landscape: Understanding the patent landscape helps in identifying trends, competitors, and opportunities.
• Continuations and Family Allowance Rates: Continuations can impact the overall strength and potential of a patent family.
• Legal Framework: Ensuring compliance with patentability requirements such as novelty, non-obviousness, utility, and enablement is vital.
• Conception and Mental Element: The mental conception of the invention is a key factor in patent law.

FAQs

What is the purpose of a prior art search in patent analysis?

A prior art search is conducted to determine if the claims of a patent are novel and non-obvious by identifying existing patents, publications, and other relevant literature.

How do continuations affect the calculation of patent allowance rates?

Continuations can lead to multiple related applications and patents, complicating the calculation of allowance rates. They can result in a chain of serialized continuations, each potentially leading to additional patents.

What are the key requirements for patentability under US law?

The key requirements include novelty, non-obviousness, utility, and enablement as outlined in the Manual of Patent Examining Procedures (MPEP) and relevant statutes.

How does the America Invents Act (AIA) impact patent examination?

The AIA introduced the first inventor to file (FITF) provisions, which changed the way priority of invention is determined. Patents that straddle the pre-AIA and AIA regimes may be subject to both sets of rules.

What is the significance of the mental element of conception in patent law?

The mental element of conception involves the formation of a definite and permanent idea of the complete and operative invention in the mind of the inventor. This is superior to the physical act of creation and is crucial for determining priority of invention.

Sources

1. Carley, M., & Hegde, D. (n.d.). What Is the Probability of Receiving a US Patent? Retrieved from https://yjolt.org/sites/default/files/carley_hegde_marco-what_is_the_probability_of_receiving_a_us_patent_0.pdf
2. InterSECT Job Simulations. (n.d.). IP: Patentability Analysis. Retrieved from https://intersectjobsims.com/library/ip-patentability-analysis/
3. USPTO. (2024). 2138-Pre-AIA 35 U.S.C. 102(g). Retrieved from https://www.uspto.gov/web/offices/pac/mpep/s2138.html
4. Brown University Library. (2023). Home - Patents - Library Guides at Brown University. Retrieved from https://libguides.brown.edu/patent
5. Mitchell Hamline School of Law. (n.d.). Anything You Can Do, AI Can't Do Better: An Analysis of Conception in Patent Law. Retrieved from https://open.mitchellhamline.edu/cgi/viewcontent.cgi?article=1097&context=cybaris

Details for Patent 10,064,856

Applicant	Tradename	Biologic Ingredient	Dosage Form	BLA	Approval Date	Patent No.	Expiredate
Janssen Biotech, Inc.	REOPRO	abciximab	Injection	103575	December 22, 1994	10,064,856	2028-01-09