United States Patent 5,529,791: A Detailed Analysis of Scope, Claims, and Patent Landscape
Introduction
United States Patent 5,529,791, issued on June 25, 1996, is a significant patent that has been the subject of various legal and technical analyses. This article will delve into the scope, claims, and the broader patent landscape surrounding this patent.
Background of the Patent
Issuance and Ownership
The patent, titled "Pharmaceutical Composition and Method ofPreparing Same," was granted to Biovail Corporation. It pertains to a specific pharmaceutical composition and the method of preparing it, which is crucial in the field of pharmacology and drug development[5].
Scope of the Patent
Technical Description
The patent describes a pharmaceutical composition that includes a specific active ingredient and a particular formulation method. This composition is designed to enhance the bioavailability and stability of the drug, making it more effective for therapeutic use. The scope of the patent covers both the composition itself and the process of preparing it[5].
Claims of the Patent
Claim Structure
The patent includes multiple claims that define the scope of the invention. These claims can be categorized into independent and dependent claims. Independent claims stand alone and define the invention broadly, while dependent claims build upon the independent claims and provide more specific details. The claims in this patent are structured to cover various aspects of the pharmaceutical composition and its preparation method[5].
Key Claims
- Independent Claims: These claims outline the core elements of the pharmaceutical composition, including the active ingredient, excipients, and the formulation process.
- Dependent Claims: These claims provide additional specifics, such as the ratios of ingredients, the method of mixing, and the conditions under which the composition is prepared.
Patent Landscape
Related Patents and Applications
To understand the patent landscape, it is essential to identify related patents and applications. Tools like the USPTO's Patent Public Search and Global Dossier can be used to find patent families and related applications filed in other jurisdictions. For example, the Global Dossier service allows users to see the patent family for a specific application, including all related applications filed at participating IP Offices[1].
Prior Art and Citations
The Common Citation Document (CCD) application is useful for consolidating prior art cited by multiple patent offices for the same invention. This helps in understanding how different offices have treated similar inventions and can provide insights into the novelty and non-obviousness of the patent in question[1].
Legal Implications and Litigation
Biovail v. Andrx Pharmaceuticals
One notable legal case involving this patent is Biovail v. Andrx Pharmaceuticals. In this case, the Federal Circuit Court decided that Andrx Pharmaceuticals did not infringe on the '791 patent either literally or under the doctrine of equivalents. This decision highlights the importance of claim construction and the doctrine of equivalents in patent infringement cases[2].
Impact on the Pharmaceutical Industry
Innovation and Competition
The '791 patent has contributed to advancements in pharmaceutical formulation and drug delivery. By protecting a specific composition and preparation method, it has encouraged innovation in the field while also influencing competition among pharmaceutical companies. Companies must navigate around existing patents or seek licenses to use similar compositions and methods[5].
International Patent Considerations
Global Patent System
The patent landscape is not limited to the United States. International patent offices, such as the European Patent Office (EPO), Japan Patent Office (JPO), and the World Intellectual Property Organization (WIPO), provide databases to search for similar patents globally. This is crucial for companies operating internationally to ensure their products do not infringe on existing patents in other jurisdictions[1].
Tools and Resources for Patent Search
USPTO Resources
The USPTO offers several tools for conducting thorough patent searches, including the Patent Public Search tool, Global Dossier, and the Public Search Facility. These resources help in identifying prior art, related patents, and understanding the patent family of a specific application[1].
Patent and Trademark Resource Centers (PTRCs)
Local PTRCs provide additional support by maintaining local search resources and offering training in patent search techniques. These centers are invaluable for individuals and businesses conducting patent research[1].
Statistical Analysis and Trends
Patent Claims Research Dataset
The USPTO's Patent Claims Research Dataset provides detailed information on claims from U.S. patents granted between 1976 and 2014 and U.S. patent applications published between 2001 and 2014. This dataset can be used to analyze trends in patent scope and claim structure over time, offering insights into how patents like the '791 patent fit into broader patenting trends[3].
Conclusion
United States Patent 5,529,791 is a significant patent that has had a notable impact on the pharmaceutical industry. Understanding its scope, claims, and the surrounding patent landscape is crucial for both legal and technical analyses. By leveraging various tools and resources provided by the USPTO and other international patent offices, one can gain a comprehensive view of the patent's importance and its place within the broader intellectual property ecosystem.
Key Takeaways
- Scope and Claims: The patent covers a specific pharmaceutical composition and its preparation method.
- Legal Implications: The patent has been involved in significant litigation, such as Biovail v. Andrx Pharmaceuticals.
- International Considerations: The patent's impact extends globally, requiring consideration of international patent offices and databases.
- Tools and Resources: Various USPTO tools and PTRCs are available for conducting thorough patent searches.
- Statistical Analysis: The USPTO's Patent Claims Research Dataset provides valuable insights into patent trends and scope.
FAQs
What is the main subject of United States Patent 5,529,791?
The main subject of United States Patent 5,529,791 is a pharmaceutical composition and the method of preparing it.
How can one search for related patents to the '791 patent?
One can use tools like the USPTO's Patent Public Search, Global Dossier, and international patent office databases to search for related patents.
What is the significance of the Biovail v. Andrx Pharmaceuticals case?
The Biovail v. Andrx Pharmaceuticals case is significant because it involved a decision on patent infringement under the doctrine of equivalents, which is crucial for understanding the scope of patent protection.
How does the '791 patent impact the pharmaceutical industry?
The '791 patent has contributed to advancements in pharmaceutical formulation and drug delivery, influencing innovation and competition within the industry.
What resources are available for conducting a thorough patent search?
Resources include the USPTO's Patent Public Search tool, Global Dossier, Public Search Facility, and local Patent and Trademark Resource Centers (PTRCs).
Sources
- USPTO: "Search for patents - USPTO" - https://www.uspto.gov/patents/search
- Finnegan: "Federal Circuit Court Decisions / Bioval v. Androx Pharmaceuticals" - https://www.finnegan.com/files/Publication/2963e559-c06b-4fff-b2c2-309ed779d523/Presentation/PublicationAttachment/0df5444e-0413-42aa-9fda-30ec79ddbeff/00-1260-021301.pdf
- USPTO: "Patent Claims Research Dataset" - https://www.uspto.gov/ip-policy/economic-research/research-datasets/patent-claims-research-dataset
- Commerce.gov: "U.S. Patent and Trademark Office | U.S. Department of Commerce" - https://www.commerce.gov/bureaus-and-offices/uspto
- Law.resource.org: "239 F.3d 1297" - https://law.resource.org/pub/us/case/reporter/F3/239/239.F3d.1297.00-1260.html
