Understanding the Scope and Claims of United States Patent 7,462,645
Introduction to Patent 7,462,645
United States Patent 7,462,645, titled "Bronchodilating Beta–Agonist Compositions and Methods," is one of the patents involved in the patent infringement case of Dey, L.P. v. Teva Parenteral Medicines, Inc.[1][4].
Background and Inventorship
This patent, along with others such as 6,667,344, 6,814,953, and 7,348,362, was issued to Dey, L.P. and derives from provisional U.S. patent application 60/486,386. The inventors listed on these patents are crucial, as U.S. patent law mandates that only the "true and only" inventors be listed on the patent application[2].
Claims and Specifications
The claims of a patent are the most critical part of the patent application, as they define the scope of the invention and the patentee's right of exclusion. For Patent 7,462,645, the claims are closely tied to the specifications, which provide detailed descriptions of the bronchodilating compositions and methods.
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Claims Interpretation: When interpreting the claims, courts consider the claims themselves, the specifications, and the prosecution histories as intrinsic evidence. The specification often serves as the "best source for understanding a technical term" used in the claims[4].
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Scope of Claims: The claims in Patent 7,462,645 are designed to protect specific bronchodilating beta-agonist compositions and methods. These claims must be read in the light of the specifications to understand their full scope and meaning[4].
Claim Construction
Claim construction is a legal process that determines the meaning of the claims in a patent. This process is governed by federal statutes and decisions from the Supreme Court and the Federal Circuit.
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Intrinsic Evidence: Courts rely on intrinsic evidence, including the claims, specifications, and prosecution histories, to interpret the claims. This ensures that the claims are understood in the context provided by the patent itself[4].
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Ordinary and Customary Meaning: Terms in the claims are generally interpreted according to their ordinary and customary meaning. However, the patent specification can redefine these terms if the inventor acts as their own lexicographer[4].
Patent Landscape and Analytics
Understanding the patent landscape is crucial for managing intellectual property effectively. Here’s how Patent 7,462,645 fits into this landscape:
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Claim Coverage Matrix: Tools like the Claim Coverage Matrix help in categorizing patents by claims and scope concepts. This allows for a comprehensive analysis of which patents and claims are actively protecting the intellectual property and where gaps or opportunities exist[3].
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Claim Charts: Interactive claim charts generated by software like ClaimScape® can be used to review patent coverage. These charts help technical experts determine whether a particular scope concept is applicable to a target product or method, highlighting areas where claim coverage may be lacking[3].
Commercial and Strategic Implications
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Commercial Value: Patents like 7,462,645 are commercially valuable as they protect innovative compositions and methods. The commercial value is determined by the scope of the claims and how well they cover the intended technology[3].
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Cost and Maintenance: Maintaining a patent like 7,462,645 involves significant costs, including filing fees, prosecution costs, and maintenance fees over the patent's lifetime. These costs can range from $30,000 to much higher, especially for international patents[5].
Patent Prosecution and Examination
The process of obtaining a patent involves several steps, including filing a provisional patent application, followed by a non-provisional application.
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Provisional Application: The provisional application for Patent 7,462,645 was filed as part of the initial steps in the patenting process. This allows for a temporary protection period while the full application is prepared[5].
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Non-Provisional Application: The non-provisional application must describe the invention in full, clear, concise, and exact terms to enable a person with ordinary skill in the art to make or use the invention. The patent examiner reviews this application, and if the claimed invention is patentable, the patent is issued after fees are paid[5].
Public Disclosure and Grace Period
Public disclosure of an invention can affect its patentability. In the U.S., there is a one-year grace period for filing a patent application after an enabling public disclosure. However, in most foreign countries, there is no such grace period, and public disclosure can immediately bar patent protection[5].
Key Takeaways
- Claims and Specifications: The claims and specifications of Patent 7,462,645 are interdependent, with the claims defining the scope of the invention and the specifications providing detailed descriptions.
- Claim Construction: Claim construction is a critical legal process that relies on intrinsic evidence to interpret the claims.
- Patent Landscape: Understanding the patent landscape through tools like Claim Coverage Matrix and Claim Charts is essential for managing intellectual property.
- Commercial Value: The commercial value of the patent is tied to its ability to protect innovative compositions and methods.
- Patent Prosecution: The patent prosecution process involves several steps, including filing provisional and non-provisional applications, and can be costly.
FAQs
Q: What is the significance of the claims in a patent application?
A: The claims in a patent application define the scope of the invention and the patentee's right of exclusion, making them the most critical part of the patent.
Q: How are the claims of Patent 7,462,645 interpreted?
A: The claims are interpreted using intrinsic evidence, including the claims themselves, the specifications, and the prosecution histories.
Q: What is the role of the specification in a patent?
A: The specification provides detailed descriptions of the invention and is often the best source for understanding technical terms used in the claims.
Q: How does the patent landscape analysis help in managing intellectual property?
A: Patent landscape analysis helps in identifying which patents and claims are actively protecting the intellectual property and where gaps or opportunities exist.
Q: What are the costs associated with maintaining a patent like 7,462,645?
A: The costs include filing fees, prosecution costs, and maintenance fees over the patent's lifetime, which can range from $30,000 to much higher, especially for international patents.
Sources
- Dey, L.P. v. Teva Parenteral Medicines, Inc. - Federal Cases - Case Law.
- Determining Inventorship for US Patent Applications - Oregon State University.
- Patent Analytics - Schwegman, Lundberg & Woessner, P.A.
- MEMORANDUM OPINION AND ORDER CONSTRUING PATENT CLAIMS - U.S. District Court for the Northern District of West Virginia.
- Intellectual Property Protection - KU Office of Research.
