Understanding the Scope and Claims of United States Patent 5,760,090
Introduction
United States Patent 5,760,090, part of a series of patents related to the treatment of bronchial disorders, is a critical piece of intellectual property in the pharmaceutical industry. This patent, along with others such as 5,362,755, 5,547,994, 5,844,002, and 6,083,993, was at the center of a significant patent infringement case, Sepracor Inc. v. Dey, L.P. Here, we will delve into the scope, claims, and the broader patent landscape surrounding this patent.
Background of the Patent
The patent in question pertains to methods of using the optically pure R(-) isomer of albuterol to treat bronchial disorders, such as asthma, while reducing side effects associated with the racemic mixture of albuterol[2].
Claims Construction
Claims construction is a crucial aspect of patent law, as it defines the scope of protection afforded by the patent. In the case of Sepracor Inc. v. Dey, L.P., the court conducted a Markman hearing to construe the disputed terms of the patent claims.
Literal Language and Specification
The court considers the literal language of the claim, the patent specification, and the prosecution history when construing claims. For Patent 5,760,090, the specification is particularly relevant. It describes the invention as a method of treating bronchial disorders, such as asthma, using the R(-) isomer of albuterol. The specification highlights that asthma is described only as an exemplary bronchial disorder, suggesting that the claims should not be limited to the treatment of asthma alone[2].
Prosecution History
During the prosecution of the related patent 5,844,002, the applicants explained that the claims were directed to a "method of treating asthma," whereas new claims were directed to "inducing bronchodilation or providing relief of bronchospasms." This distinction is crucial in understanding the scope of the patent claims[2].
Scope of the Patent
The scope of Patent 5,760,090 is defined by its claims, which cover the use of the R(-) isomer of albuterol for treating bronchial disorders. Here are some key aspects:
Bronchial Disorders
The patent covers the treatment of various bronchial disorders, not limited to asthma. The claims specifically refer to "inducing bronchodilation" and "bronchospasm," indicating a broader application than just asthma[2].
Reduction of Side Effects
A significant aspect of the patent is the reduction of side effects associated with the racemic mixture of albuterol. The use of the optically pure R(-) isomer is intended to minimize these side effects while maintaining therapeutic efficacy[2].
Patent Landscape
Understanding the patent landscape involves looking at related patents, continuation procedures, and the overall trends in patent allowances.
Related Patents
The patents-in-suit, including 5,760,090, all claim priority to a single parent application that ultimately resulted in the '755 patent. They share the same specification and pertain to similar methods of using albuterol isomers for treating bronchial disorders[2].
Continuation Procedures
Continuation procedures are common in patent practice and can significantly impact the patent landscape. For the patents related to 5,760,090, continuation procedures such as Requests for Continued Examination (RCEs) were frequently used. These procedures allow applicants to continue the examination process, potentially leading to additional patents or broader claims[1].
Trends in Allowance Rates
The allowance rates for patent applications, including those related to 5,760,090, have shown trends over the years. For applications filed between 1996 and 2005, the allowance rates declined, though the exact reasons are complex and multifaceted. This decline could be due to various factors, including changes in patent office policies and the increasing complexity of patent applications[1].
Search and Analysis Tools
For professionals analyzing the patent landscape, several tools are available:
Patent Public Search
The USPTO's Patent Public Search tool provides enhanced access to prior art and allows users to search for existing patents and published patent applications. This tool is essential for conducting thorough searches related to patents like 5,760,090[4].
Global Dossier
The Global Dossier service offers access to the file histories of related applications from participating IP Offices. This service helps in identifying the patent family for a specific application, including classification, citation data, and office actions[4].
Common Citation Document (CCD)
The CCD application consolidates prior art cited by all participating offices for the family members of a patent application. This tool is useful for visualizing search results for the same invention produced by several offices on a single page[4].
Key Takeaways
- Claims Construction: The scope of Patent 5,760,090 is defined by its claims, which cover the use of the R(-) isomer of albuterol for treating bronchial disorders beyond just asthma.
- Patent Landscape: The patent is part of a series claiming priority to a single parent application and is influenced by continuation procedures and trends in allowance rates.
- Search Tools: Utilizing tools like Patent Public Search, Global Dossier, and CCD is crucial for thorough analysis of the patent landscape.
FAQs
Q: What is the main subject of United States Patent 5,760,090?
A: The main subject is the method of using the optically pure R(-) isomer of albuterol to treat bronchial disorders while reducing side effects.
Q: How are the claims of Patent 5,760,090 constructed?
A: The claims are constructed based on the literal language, patent specification, and prosecution history, with a focus on treating bronchial disorders beyond just asthma.
Q: What is the significance of continuation procedures in the patent landscape?
A: Continuation procedures, such as RCEs, allow applicants to continue the examination process, potentially leading to additional patents or broader claims.
Q: How can one search for related patents and prior art?
A: Tools like the USPTO's Patent Public Search, Global Dossier, and Common Citation Document (CCD) are essential for searching related patents and prior art.
Q: Why did allowance rates for patent applications decline between 1996 and 2005?
A: The decline in allowance rates is complex and multifaceted, potentially due to changes in patent office policies and the increasing complexity of patent applications.
Sources
- Carley, M., & Hegde, D. (n.d.). What Is the Probability of Receiving a US Patent?. Emory Law Journal.
- Sepracor Inc. v. Dey, L.P., 590 F. Supp. 2d 649.
- USPTO. (2017). Patent Claims Research Dataset.
- USPTO. (2018). Search for patents.
