Understanding the Scope and Claims of United States Patent 7,329,689
Introduction
United States Patent 7,329,689, hereafter referred to as the '689 patent, is a significant intellectual property asset that has recently been granted an interim extension of its term. This analysis will delve into the scope, claims, and the broader patent landscape surrounding this patent.
Patent Overview
The '689 patent is owned by Italfarmaco SPA and pertains to the drug product known by the tradename DUVYZATTM (Givinostat hydrochloride monohydrate). This patent involves a product that has been subject to regulatory review, specifically by the Food and Drug Administration (FDA) for permission to market and use the product commercially[3][5].
Claim Scope
The claim scope of a patent is crucial as it defines the boundaries of the invention and the protection it offers. For the '689 patent, the claims must be carefully crafted to ensure they are neither too broad nor too narrow.
Avoiding Overly Broad Claims
It is important to avoid overly broad claims, as they can be more difficult to get granted and are easier to invalidate. Overly broad claims can run afoul of the abstract idea exception or fail to meet the written description requirement, as seen in cases like Yu v. Apple Inc. and *Minerva Surgical, Inc. v. Hologic, Inc.[4].
Anchoring Claims to Embodiments
The claims in the '689 patent must be anchored to the specific embodiments disclosed in the specification. This ensures that the claims are supported by the description provided and are less likely to be invalidated due to lack of written description or enablement[4].
Regulatory Review and Patent Term Extension
The '689 patent has been granted an interim extension of its term due to the ongoing regulatory review process. Under 35 U.S.C. § 156, the term of a patent can be extended for up to five years if the patent claims a product or method subject to certain regulatory reviews. In this case, the approval phase of the regulatory review period (RRP) is expected to extend beyond the original expiration date of the patent, justifying the interim extension[3][5].
Interim Extension Details
The United States Patent and Trademark Office (USPTO) granted a one-year interim extension of the term of the '689 patent, effective from its original expiration date of January 15, 2024. This extension is based on the ongoing FDA approval process for DUVYZATTM, which began on April 21, 2023[3][5].
Patent Landscape and Valuation
The value and significance of the '689 patent can be understood within the broader context of patent valuations.
Sales Data and Valuations
Historical data on patent sales show that the value of patents can vary widely. For instance, the sale of Nortel's patents to Rockstar Bidco in 2011 for $750,000 per patent document highlights the high value that strategic patents can command. Similarly, the sale of Motorola Mobility's patents to Google for $510,204.08 per patent underscores the importance of patents in technology sectors[1].
Mean and Median Prices
The mean price per document for patent sales can be as high as $483,924, with median prices ranging from $108,000 to $163,000 per US patent, depending on the deal specifics. These figures indicate the significant financial value that patents like the '689 patent can hold[1].
Importance of Claim Scope in Patent Quality
The quality of a patent is often debated, with claim scope being a critical factor. Narrower claims, which are more specific and well-defined, tend to have a higher probability of grant and shorter examination processes compared to broader claims. This is evident from studies that show the examination process often narrows the scope of patent claims to ensure clarity and validity[2].
Key Takeaways
- Claim Scope: The claims in the '689 patent must be carefully balanced to avoid being overly broad or too narrow, ensuring they are anchored to the specific embodiments disclosed.
- Regulatory Review: The patent's term extension is justified by the ongoing FDA approval process, highlighting the importance of regulatory reviews in patent term extensions.
- Patent Valuation: The '689 patent, like other strategic patents, holds significant financial value, as evidenced by historical patent sales data.
- Patent Quality: The quality of the '689 patent is influenced by the claim scope, with narrower claims generally associated with higher grant probabilities and shorter examination processes.
FAQs
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What is the '689 patent about?
The '689 patent pertains to the drug product DUVYZATTM (Givinostat hydrochloride monohydrate), owned by Italfarmaco SPA.
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Why was the '689 patent granted an interim extension?
The patent was granted an interim extension due to the ongoing FDA approval process, which is expected to extend beyond the original expiration date of the patent.
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What are the risks of overly broad claims in a patent?
Overly broad claims can be more difficult to get granted and are easier to invalidate due to issues like the abstract idea exception or failure to meet the written description requirement.
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How does the claim scope affect the quality of a patent?
The claim scope significantly affects patent quality; narrower claims are generally associated with higher grant probabilities and shorter examination processes.
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What is the typical value range for patents similar to the '689 patent?
The value of patents can range widely, but historical data shows mean prices around $483,924 per document, with median prices ranging from $108,000 to $163,000 per US patent.
Sources
- Perpetual Motion Patents - The Value of a Patent
- SSRN - Patent Claims and Patent Scope
- Federal Register - Grant of Interim Extension of the Term of U.S. Patent No. 7,329,689
- Rimon Law - The Importance of Getting the Claim Scope Right in a US Patent Application
- Federal Register - Grant of Interim Extension of the Term of U.S. Patent No. 7,329,689 (Duplicate Source)
