United States Patent 3,819,635: A Detailed Analysis of Scope, Claims, and Patent Landscape
Introduction
United States Patent 3,819,635, hereafter referred to as US Patent '635, is a significant patent in the field of organic chemistry, particularly in the synthesis of pharmaceutical compounds. This patent, issued to Bristol-Myers Company, outlines a process for the preparation of Butorphanol, a synthetic opioid used for pain relief and other medical applications.
Background and Context
Butorphanol is a potent opioid analgesic that has been used in various medical settings. The synthesis of such compounds is complex and involves multiple steps, making the efficiency and cost-effectiveness of the process crucial.
Scope of the Patent
The scope of US Patent '635 is centered around the synthesis of Butorphanol through a specific chemical process. Here are the key aspects of the patent's scope:
Starting Materials and Process
The patent describes a process that starts with the 7-methoxy-3,4-dihydro-1(2H)-naphthalenone compound. This starting material undergoes a series of reaction steps to form Butorphanol. The process involves several intermediates and requires careful control of reaction conditions to achieve the desired product[1].
Reaction Steps
The patent schematically presents the reaction steps involved in the synthesis. These steps include various chemical transformations such as condensation, reduction, and protection/deprotection sequences. The detailed scheme highlights the complexity and the precision required in each step to ensure the formation of Butorphanol with high yield and purity[1].
Claims of the Patent
The claims of US Patent '635 are critical in defining the scope of protection granted to the inventors. Here are some key points regarding the claims:
Independent and Dependent Claims
The patent includes both independent and dependent claims. Independent claims define the broad scope of the invention, while dependent claims narrow down the scope by adding specific details or limitations. In this patent, the independent claims focus on the overall process of synthesizing Butorphanol, while the dependent claims specify particular reaction conditions, intermediates, and reagents used[1].
Claim Structure
The structure of the claims is designed to ensure comprehensive protection of the invention. For instance, the claims might include:
- The specific starting materials used.
- The sequence of reaction steps.
- The conditions under which these reactions are carried out.
- The intermediates formed during the process.
This detailed claim structure helps in preventing others from using similar processes to synthesize Butorphanol without infringing on the patent[1].
Patent Landscape
The patent landscape surrounding US Patent '635 is complex and involves several other patents related to the synthesis of Butorphanol and similar compounds.
Prior Art
The patent highlights the differences between its process and those described in prior art. For example, it contrasts with US Patent '389, which uses a different starting material and involves different intermediates. The present invention emphasizes the use of more economical and eco-friendly reagents and solvents, making it a more viable commercial process[1].
Related Patents
Other patents, such as US Patent '273 and US Patent '292, also describe processes for synthesizing related compounds but do not suggest the use of these processes for Butorphanol. The unique intermediates and steps outlined in US Patent '635 differentiate it from these prior patents[1].
Economic and Environmental Considerations
The patent landscape also reflects the economic and environmental considerations of the processes. US Patent '635 aims to provide a process that is not only simple and economical but also eco-friendly by avoiding the use of expensive reagents and hazardous organic solvents[1].
Strategic Claim Management
In the context of patent filings, the management of claims is crucial for maximizing the value of the patent. Here are some insights into how claim management could be applied to US Patent '635:
Claim Optimization
Ensuring that the patent utilizes its full complement of claims can enhance its defensive capabilities and value. This involves consolidating dependent claims into broader independent claims and adding new dependent claims for every claim that is canceled, as highlighted by Neil Kardos[5].
Commercial Implications
The strategic management of claims can impact the commercial success of the patent. By securing a more robust and nuanced protection, inventors can better position themselves in licensing discussions or infringement disputes. This meticulous approach to claim management demonstrates a value-driven strategy that can differentiate the patent’s quality and potential for commercial success[5].
Key Takeaways
- Process Efficiency: US Patent '635 provides a detailed process for synthesizing Butorphanol, emphasizing efficiency and cost-effectiveness.
- Claim Structure: The patent includes both independent and dependent claims to ensure comprehensive protection of the invention.
- Patent Landscape: The patent differentiates itself from prior art through the use of novel intermediates and eco-friendly reagents.
- Strategic Claim Management: Effective claim management can enhance the patent’s value and defensive capabilities.
- Economic and Environmental Considerations: The process is designed to be economical and eco-friendly, avoiding expensive reagents and hazardous solvents.
FAQs
Q: What is the main focus of US Patent 3,819,635?
A: The main focus is the synthesis of Butorphanol through a specific chemical process.
Q: What starting material is used in the process described by US Patent '635?
A: The starting material used is 7-methoxy-3,4-dihydro-1(2H)-naphthalenone.
Q: How does US Patent '635 differ from prior art?
A: It uses different starting materials, intermediates, and reagents, and emphasizes an economical and eco-friendly process.
Q: What is the importance of claim management in patent filings?
A: Effective claim management can enhance the patent’s defensive capabilities, value, and potential for commercial success.
Q: Why is the process described in US Patent '635 considered eco-friendly?
A: It avoids the use of expensive reagents and hazardous organic solvents.
Sources
- European Patent Office, EP 3 436 425 B1, January 6, 2021.
- USPTO, Patent Claims Research Dataset, August 28, 2017.
- DrugPatentWatch, Details for Patent: 12,048,695, January 9, 2025.
- Google Patents, Opioid and opioid-like compounds and uses thereof, December 10, 1991.
- Harrity LLP, Maximizing Patent Value: A Strategic Approach to Claim Management, February 5, 2024.
