Detailed Analysis of the Scope and Claims of United States Patent 4,777,163
Introduction
United States Patent 4,777,163, titled "Diphosphonate derivatives, pharmaceutical compositions and methods of use for calcium disturbances," is a significant patent in the field of pharmaceuticals, particularly focusing on treatments for calcium-related disorders. Here, we will delve into the scope, claims, and the broader patent landscape surrounding this invention.
Background
The patent, issued to the inventors, describes a class of diphosphonate derivatives, their pharmaceutical compositions, and methods of use. These compounds are designed to address calcium disturbances, which are common in various medical conditions such as osteoporosis, hypercalcemia, and bone diseases.
Scope of the Patent
Invention Overview
The patent covers a range of alkyldiphosphonic acid derivatives characterized by a specific chemical structure. These compounds are designed to inhibit bone resorption and are useful in the treatment of diseases where there is an abnormal calcium metabolism[5].
Chemical Structure
The general formula of the diphosphonate derivatives is outlined in the patent, with the structure including a heteroaromatic five-membered ring and various substituents such as hydroxy, ethane, and amino groups. This specific chemical configuration is crucial for the biological activity of the compounds[5].
Claims of the Patent
Independent Claims
The patent includes several independent claims that define the scope of the invention. These claims cover:
- Compounds: Specific diphosphonate derivatives with defined chemical structures.
- Pharmaceutical Compositions: Formulations containing the diphosphonate derivatives, often combined with other pharmaceutical ingredients.
- Methods of Use: The application of these compounds in treating calcium disturbances, including prophylaxis and treatment of conditions like osteoporosis and hypercalcemia[5].
Dependent Claims
Dependent claims further specify the independent claims by detailing particular aspects such as:
- Substituents: Specific groups attached to the heteroaromatic ring.
- Dosage Forms: Various forms in which the pharmaceutical compositions can be administered, such as tablets, capsules, or injectables.
- Therapeutic Indications: Detailed descriptions of the medical conditions that can be treated using these compounds[5].
Patent Landscape
Prior Art and Novelty
The patent distinguishes itself from prior art by introducing new chemical entities with improved efficacy and specificity in treating calcium-related disorders. The novelty lies in the specific combination of chemical groups and the resulting biological activity[5].
Related Patents and Applications
The patent landscape in the field of diphosphonate derivatives is extensive, with numerous patents and applications focusing on similar compounds and their applications. For instance, other patents may cover different substituents, formulations, or therapeutic uses, but the unique combination in US 4,777,163 sets it apart[4].
Global Dossier and International Filings
Using tools like the Global Dossier, one can track related applications filed at participating IP Offices. This helps in understanding the global patent family and any office actions or citations related to these applications, which can be crucial for maintaining and enforcing the patent[1].
Analytical Tools and Strategies
Patent Analytics
To fully understand the coverage and value of this patent, patent analytics tools can be employed. These tools help in categorizing patents by claims and scope concepts, creating claim charts, and identifying gaps or opportunities in the patent portfolio. For example, using ClaimScape® software, one can generate interactive claim charts to review patent coverage with technical experts and management[3].
Claim Coverage Matrix
A Claim Coverage Matrix can be used to determine which patents and claims are actively protecting the intellectual property related to the diphosphonate derivatives. This matrix helps in identifying high-value claims, potential future directions, and areas where claim coverage may be lacking[3].
Legal and Regulatory Considerations
Patent Eligibility
The patentability of claims under Section 101 of the Patent Act is a critical consideration. The Supreme Court's "Alice" test is often applied to determine if claims are directed to abstract ideas or if they include elements that transform them into patent-eligible applications. In the context of pharmaceutical patents, ensuring that the claims are specific and tied to a particular process or machinery is essential to avoid preemption concerns[2].
Litigation and Enforcement
Patent litigation, such as the case of Contour IP Holding LLC v. GoPro, Inc., highlights the importance of clear claim construction and the application of legal tests to determine patent eligibility and infringement. For US 4,777,163, any litigation would need to carefully consider the specific claims and the prior art to establish infringement or validity[2].
Key Takeaways
- Specific Chemical Structure: The patent covers a unique class of diphosphonate derivatives with a specific chemical structure.
- Therapeutic Use: The compounds are designed to treat calcium disturbances, including osteoporosis and hypercalcemia.
- Patent Analytics: Tools like ClaimScape® and Claim Coverage Matrix are essential for understanding the patent landscape and identifying gaps or opportunities.
- Legal Considerations: Ensuring patent eligibility under Section 101 and clear claim construction is crucial for enforcement and litigation.
FAQs
What is the primary use of the diphosphonate derivatives described in US 4,777,163?
The primary use is in the treatment and prophylaxis of calcium disturbances, such as osteoporosis and hypercalcemia.
How does the patent distinguish itself from prior art?
The patent introduces new chemical entities with improved efficacy and specificity in treating calcium-related disorders through a unique combination of chemical groups.
What tools can be used to analyze the patent coverage of US 4,777,163?
Tools such as ClaimScape® software and Claim Coverage Matrix can be used to analyze the patent coverage and identify gaps or opportunities.
What legal test is often applied to determine the patentability of pharmaceutical claims?
The "Alice" test is commonly applied to determine if claims are directed to abstract ideas or if they include elements that transform them into patent-eligible applications.
How can one track related international filings for US 4,777,163?
Using the Global Dossier service, one can track related applications filed at participating IP Offices and access file histories, classification, and citation data.
Sources
- USPTO: "Search for patents - USPTO"
- CAFC: "CONTOUR IP HOLDING LLC v. GOPRO, INC."
- SLWIP: "Patent Analytics | Intellectual Property Law"
- Google Patents: "US4777163A - Diphosphonate derivatives, pharmaceutical compositions and methods of use for calcium disturbances"
- Google Patents: "US4777163A - Google Patents"
