Details for Patent: 3,428,735

Summary for Patent: 3,428,735

Title:	Method of treating depression with 5-(3-dimethylaminopropylidene)dibenzo(a,d) (1,4)cycloheptadiene or its non-toxic salts thereof
Abstract:
Inventor(s):	Edward L Engelhardt
Assignee:	Merck and Co Inc
Application Number:	US662907A
Patent Claim Types: see list of patent claims

Understanding the Scope and Claims of United States Patent 3,428,735

Introduction

United States Patent 3,428,735, issued to Edward L. Engelhardt on February 18, 1969, is a significant patent that has undergone various legal and procedural challenges. This analysis will delve into the patent's scope, claims, and the broader patent landscape surrounding it.

Patent Background

The patent in question, U.S. Patent No. 3,428,735, was filed as a continuation-in-part of an earlier patent application, Serial No. 855,981, which was submitted on November 30, 1959. The patent application was later filed as Serial No. 662,907 on August 24, 1967[1].

Scope of the Patent

The scope of a patent is defined by its claims, which are essential for determining the extent of the patent's protection. For U.S. Patent No. 3,428,735, the claims were crucial in establishing what aspects of the invention were novel and non-obvious.

Claims and Their Significance

The claims of a patent application are the heart of the patent, as they delineate the boundaries of the invention and what is protected by the patent. In the case of U.S. Patent No. 3,428,735, the claims were subject to rigorous examination and reexamination processes.

• Initial Claims and Rejections: During the reexamination process, claims 1 through 3 of the patent were initially rejected under 35 U.S.C. § 102 for being anticipated by prior art references and under 35 U.S.C. § 103 for being obvious over the cited references[1].
• Effective Filing Date: The Board of Patent Appeals and Interferences (BPAI) reversed the § 102 rejection because the effective filing date of the application antedated all the references cited. However, the rejection for obviousness under § 103 was sustained[1].

Patentability Requirements

For a patent to be granted, the invention must meet specific criteria outlined in Title 35 of the U.S. Code:

• Novelty: The invention must be new and not previously disclosed.
• Non-Obviousness: The invention must be significantly different from existing technology.
• Usefulness: The invention must have a practical application[2].

In the case of U.S. Patent No. 3,428,735, the non-obviousness requirement was a point of contention, with the BPAI ultimately sustaining the rejection for obviousness.

Patent Application and Prosecution Process

The process of obtaining a patent involves several steps, including filing the application, conducting a prior art search, and undergoing examination by a patent examiner.

• Filing the Application: The patent application can be filed as a non-provisional or provisional application. A provisional application allows for an early filing date but has fewer formal requirements. A non-provisional application must be filed within 12 months of the provisional application and must comply with all statutory requirements[2].
• Examination: The patent examiner reviews the application, including the claims, to ensure compliance with legal requirements and conducts a prior art search to determine if the claimed invention is patentable. If the examiner finds issues, an Office Action is issued detailing the reasons for rejection or objections[2].

Reexamination and Appeal

The reexamination process for U.S. Patent No. 3,428,735 involved a detailed review of the patent claims in light of new prior art references.

• Reexamination Request: Following the dismissal of the reissue appeal by the Court of Customs and Patent Appeals (CCPA), Merck & Co., Inc. requested and was granted a reexamination of the patent[1].
• Board of Patent Appeals and Interferences: The BPAI reviewed the claims and prior art references, leading to the reversal of some rejections but the sustainment of others, particularly regarding obviousness[1].

Patent Landscape and Implications

The patent landscape surrounding U.S. Patent No. 3,428,735 is complex and influenced by various legal and procedural factors.

• Presumption of Validity: U.S. patents are accompanied by a presumption of validity, which can be challenged through reexamination or litigation[5].
• Claim Construction and Indefiniteness: Claim construction and indefiniteness are critical issues in patent law, often reviewed de novo on appeal. The clarity and specificity of claims are essential to avoid indefiniteness and ensure the patent's validity[5].

Statistical Context

The probability of receiving a patent and the outcomes of patent applications can provide context for the challenges faced by U.S. Patent No. 3,428,735.

• Allowance Rates: Studies on patent allowance rates indicate that the process is complex, with various measures such as first-action allowance rates, progenitor allowance rates, and family allowance rates. These rates can vary significantly based on the technology field and the entity status of the applicant[4].

Key Takeaways

• Claims Define the Scope: The claims of a patent are crucial in defining its scope and protection.
• Patentability Requirements: Inventions must be novel, non-obvious, and useful to be patentable.
• Reexamination Process: The reexamination process can significantly impact the validity and scope of a patent.
• Legal and Procedural Challenges: Patents can face various legal and procedural challenges, including rejections for obviousness and indefiniteness.
• Presumption of Validity: Patents are presumed valid but can be challenged through reexamination or litigation.

FAQs

Q: What is the significance of the claims in a patent application? A: The claims define the scope of the patent's protection and are essential for determining what aspects of the invention are protected.

Q: What are the patentability requirements for an invention? A: An invention must be novel, non-obvious, and useful to be considered patentable.

Q: What is the reexamination process in patent law? A: The reexamination process involves a review of the patent claims in light of new prior art references to determine if the patent should be maintained, modified, or revoked.

Q: How does the presumption of validity affect a patent? A: A patent is presumed valid, but this presumption can be challenged through reexamination or litigation.

Q: What are the different types of patent applications? A: There are utility, design, and plant patent applications. Utility patents are the most common and can be filed as non-provisional or provisional applications.

Sources

1. In Re Merck & Co., Inc., 800 F.2d 1091.
2. Patents | The Maryland People's Law Library.
3. Patent Claims Research Dataset - USPTO.
4. What Is the Probability of Receiving a US Patent? by Carley, Hegde, and Marco.
5. VASCULAR SOLUTIONS LLC v. MEDTRONIC, INC., CAFC Opinion.

Drugs Protected by US Patent 3,428,735

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
No data available in table