Details for Patent: 8,765,680

Which drugs does patent 8,765,680 protect, and when does it expire?

Patent 8,765,680 protects PRIALT and is included in one NDA.

This patent has six patent family members in four countries.

Summary for Patent: 8,765,680

Title:	Method for administering omega-conopeptide
Abstract:	The present invention is directed to a method of producing analgesia in a mammalian subject. The method includes administering to the subject an omega conopeptide, preferably ziconotide, in combination with an analgesic selected from the group consisting of morphine, bupivacaine, clonidine, hydromorphone, baclofen, fentanyl 1, buprenorphine, and sufentanil, or its pharmaceutically acceptable salts thereof, wherein the .omega.-conopeptide retains its potency and is physically and chemically compatible with the analgesic compound. A preferred route of administration is intrathecal administration, particularly continuous intrathecal infusion. The present invention is also directed to a pharmaceutical formulation comprising an omega conopeptide, preferably ziconotide, an antioxidant, in combination with an analgesic selected from the group consisting of morphine, bupivacaine, clonidine, hydromorphone, baclofen, fentanyl, buprenorphine, and sufentanil.
Inventor(s):	Ellis; David J. (Los Altos, CA), Miljanich; George P. (Redwood City, CA), Shields; David E. (San Lorenzo, CA)
Assignee:	Jazz Pharmaceuticals International Limited (Hamilton, BM)
Application Number:	14/133,303
Patent Claim Types: see list of patent claims	Use; Composition; Formulation;

Analyzing the Scope and Claims of United States Patent 8,765,680: A Comprehensive Guide

Introduction

When analyzing a patent, understanding its scope and claims is crucial for determining its validity, potential infringement, and overall impact on the market. This article will delve into the details of United States Patent 8,765,680, exploring its claims, the patent landscape, and the tools and resources available for such an analysis.

Understanding Patent Claims

Patent claims define the scope of protection granted to the patentee. They are the most critical part of a patent document, as they delineate what is considered novel and non-obvious about the invention[3].

Types of Claims

• Independent Claims: These claims stand alone and do not rely on other claims. They define the broadest scope of the invention.
• Dependent Claims: These claims build upon independent claims and narrow down the scope by adding additional limitations.

The Patent in Question: US 8,765,680

To analyze the scope and claims of US 8,765,680, one must first identify the type of patent and its specific claims.

Patent Title and Abstract

The title and abstract provide a general overview of the invention. For example, if the patent is titled "Method and System for Data Processing," the abstract would describe the core idea of how data is processed and what makes this method or system unique.

Claim Structure

• Independent Claims: Identify the independent claims which outline the broadest scope of the invention.
• Dependent Claims: Analyze the dependent claims to understand how they narrow down the scope.

Tools for Patent Analysis

USPTO Patent Public Search

The USPTO's Patent Public Search tool is a powerful resource for searching and analyzing patents. It replaces legacy tools like PubEast and PubWest, offering enhanced access to prior art and modern interfaces[1].

Global Dossier

The Global Dossier service provides access to the file histories of related applications from participating IP Offices. This can help in understanding the global patent family and related citations[1].

Patent and Trademark Resource Centers (PTRCs)

Local PTRCs offer training in patent search techniques and maintain local search resources, which can be invaluable for detailed analysis[1].

Analyzing the Patent Landscape

Prior Art Search

Conducting a thorough prior art search is essential to understand the novelty and non-obviousness of the invention. Tools like the USPTO's Patent Public Search and international databases such as the European Patent Office's esp@cenet can be used for this purpose[1].

Common Citation Document (CCD)

The CCD application consolidates citation data from participating IP Offices, helping to visualize the prior art cited by multiple offices for the same invention[1].

International Patent Offices

Searching databases from other international intellectual property offices, such as the Japan Patent Office or the World Intellectual Property Organization (WIPO), can provide a comprehensive view of the global patent landscape[1].

Case Law and Legal Implications

Understanding how courts interpret patent claims is crucial. For instance, the case of Mobile Acuity Ltd. v. Blippar Ltd. highlights how courts determine the validity of patent claims under 35 U.S.C. § 101, focusing on whether the claims are directed to abstract ideas or patent-eligible subject matter[2].

Data-Driven Analysis

The USPTO's Patent Claims Research Dataset can provide detailed statistical insights into patent claims. This dataset includes claim-level statistics and document-level statistics, which can help in understanding the scope and trends of patent claims over time[3].

Steps for Conducting a Preliminary Patent Search

Step 1: Define the Search Scope

Identify the key elements of the invention to determine the appropriate search terms and classifications.

Step 2: Use USPTO Resources

Utilize the USPTO's Patent Public Search tool and other resources like the Global Dossier and PTRCs to find relevant patents.

Step 3: Analyze Claims

Carefully read and analyze the claims of the patent in question, distinguishing between independent and dependent claims.

Step 4: Review Prior Art

Conduct a thorough prior art search to ensure the invention is novel and non-obvious.

Step 5: Consult International Databases

Search international patent databases to understand the global patent landscape.

Challenges and Considerations

Complexity of Claims

Patent claims can be complex and require careful interpretation. Misinterpreting claims can lead to incorrect conclusions about the scope of the patent.

Legal Interpretations

Court decisions, such as those under 35 U.S.C. § 101, can significantly impact the validity of patent claims. Staying updated with legal precedents is essential.

Global Implications

The global patent landscape can be intricate, with different jurisdictions having different standards and interpretations.

Key Takeaways

• Understand the Claims: Carefully analyze the independent and dependent claims to define the scope of the patent.
• Use Advanced Tools: Utilize tools like the USPTO's Patent Public Search and Global Dossier for comprehensive analysis.
• Conduct Thorough Searches: Perform prior art searches and review international databases to ensure novelty and non-obviousness.
• Stay Updated with Legal Precedents: Follow court decisions and legal interpretations to understand the validity of patent claims.

FAQs

Q: What is the importance of independent claims in a patent?

A: Independent claims define the broadest scope of the invention and are crucial for determining the patent's validity and potential infringement.

Q: How can I search for prior art related to a specific patent?

A: Use tools like the USPTO's Patent Public Search, Global Dossier, and international databases such as esp@cenet to conduct a thorough prior art search.

Q: What is the role of the Common Citation Document (CCD) in patent analysis?

A: The CCD consolidates citation data from participating IP Offices, helping to visualize the prior art cited by multiple offices for the same invention.

Q: How can I access detailed statistical insights into patent claims?

A: The USPTO's Patent Claims Research Dataset provides detailed claim-level and document-level statistics, offering insights into patent scope and trends.

Q: Why is it important to review international patent databases?

A: Reviewing international patent databases helps in understanding the global patent landscape and ensuring that the invention is novel and non-obvious on a global scale.

Sources

1. USPTO - Search for patents: https://www.uspto.gov/patents/search
2. CAFC - MOBILE ACUITY LTD. v. BLIPPAR LTD.: https://cafc.uscourts.gov/opinions-orders/22-2216.OPINION.8-6-2024_2362691.pdf
3. USPTO - Patent Claims Research Dataset: https://www.uspto.gov/ip-policy/economic-research/research-datasets/patent-claims-research-dataset

Drugs Protected by US Patent 8,765,680

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-002	Dec 28, 2004		RX	Yes	Yes	8,765,680					ANALGESIA
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-002	Dec 28, 2004		RX	Yes	Yes	8,765,680					TREATMENT OF PAIN
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-003	Dec 28, 2004		DISCN	No	No	8,765,680					ANALGESIA
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-003	Dec 28, 2004		DISCN	No	No	8,765,680					TREATMENT OF PAIN
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-001	Dec 28, 2004		RX	Yes	Yes	8,765,680					TREATMENT OF PAIN
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-001	Dec 28, 2004		RX	Yes	Yes	8,765,680					ANALGESIA
Tersera	PRIALT	ziconotide acetate	INJECTABLE;INTRATHECAL	021060-004	Dec 28, 2004		RX	Yes	Yes	8,765,680					ANALGESIA

International Family Members for US Patent 8,765,680

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
Canada	2540895
Canada	2930900
European Patent Office	1689401
Japan	2007507538
Japan	2011173931
World Intellectual Property Organization (WIPO)	2005032556