United States Patent 8,846,718: A Detailed Analysis of Scope and Claims
Introduction
The United States Patent 8,846,718, titled "Solid state forms of 3-(6-(1-(2,2-difluorobenzo[d][1,3]dioxol-5-yl)cyclopropanecarboxamido)-3-methylpyridin-2-yl)benzoic acid," is a patent that protects specific solid state forms of a chemical compound. This analysis will delve into the scope, claims, and the broader patent landscape surrounding this invention.
Background of the Patent
Publication and Priority
The patent was published on September 30, 2014, with the application number US13/933,223. It claims priority to earlier filed applications, which is a common practice to establish an earlier effective filing date[4].
Scope of the Patent
Subject Matter
The patent pertains to solid state forms, including crystalline forms, of a specific chemical compound: 3-(6-(1-(2,2-difluorobenzo[d][1,3]dioxol-5-yl)cyclopropanecarboxamido)-3-methylpyridin-2-yl)benzoic acid. This compound is likely used in pharmaceutical or chemical applications, given the complexity of its structure.
Claims
The claims in a patent application are crucial as they define the scope of the patent's protection. For US Patent 8,846,718, the claims would typically include:
- Independent Claims: These define the broadest scope of the invention. For example, claims might cover the specific crystalline forms of the compound, methods of preparing these forms, and their use in various applications.
- Dependent Claims: These narrow down the scope by adding additional limitations to the independent claims. They might specify particular conditions under which the crystalline forms are prepared or used[2].
Types of Claims
Utility Patents
This patent falls under the category of utility patents, which are the most common type of patent. Utility patents protect new and useful processes, machines, manufactures, or compositions of matter, or any improvement thereof[2].
Claim Structure
The claims would be structured to include:
- Composition Claims: These would cover the specific chemical structure and its solid state forms.
- Method Claims: These might include methods for preparing the crystalline forms or methods for using these forms in various applications.
- Use Claims: These would specify the intended use of the crystalline forms, such as in pharmaceutical formulations.
Patent Landscape
First-to-File System
The patent was filed and granted under the first-inventor-to-file system, which was introduced by the America Invents Act (AIA) in 2011. This system prioritizes the first person to file a patent application over the first person to invent, which can impact the strategy for filing and defending patents[5].
Prior Art and Novelty
To be patentable, the invention must be novel, non-obvious, and useful. The patent office would have conducted a search for prior art to ensure that the claimed solid state forms were not previously known or obvious to those skilled in the art[2].
Interference Proceedings
Although the AIA eliminated interference proceedings for patents filed after March 16, 2013, understanding the historical context is important. Interference proceedings were administrative contests to determine priority of invention, but they are no longer applicable under the first-inventor-to-file system[5].
Economic and Strategic Implications
Patent Scope Measurements
The scope of a patent, as defined by its claims, is crucial for determining its economic and strategic value. The USPTO's Patent Claims Research Dataset provides tools to analyze the scope and dependency of claims, which can help in understanding the patent's breadth and potential impact on the market[3].
Competitive Landscape
In the pharmaceutical and chemical industries, patents like US 8,846,718 can provide significant competitive advantages. By protecting specific solid state forms of a compound, the patent holder can control the production and distribution of these forms, potentially limiting competition and ensuring market dominance.
Key Takeaways
- Scope and Claims: The patent protects specific solid state forms of a chemical compound, with claims defining the scope of protection.
- First-to-File System: The patent was granted under the AIA's first-inventor-to-file system, emphasizing the importance of timely filing.
- Novelty and Non-Obviousness: The invention must meet the criteria of novelty, non-obviousness, and usefulness to be patentable.
- Economic and Strategic Value: The patent's scope and claims are critical for its economic and strategic implications in the market.
FAQs
What is the main subject matter of US Patent 8,846,718?
The main subject matter is the solid state forms, including crystalline forms, of the chemical compound 3-(6-(1-(2,2-difluorobenzo[d][1,3]dioxol-5-yl)cyclopropanecarboxamido)-3-methylpyridin-2-yl)benzoic acid.
What type of patent is US 8,846,718?
It is a utility patent, which protects new and useful processes, machines, manufactures, or compositions of matter.
Under which system was this patent filed and granted?
The patent was filed and granted under the first-inventor-to-file system introduced by the America Invents Act (AIA).
Why are claims important in a patent application?
Claims define the scope of the patent's protection and are essential for determining what is protected by the patent.
How does the patent landscape impact the strategic value of US 8,846,718?
The patent's scope and claims provide a competitive advantage by controlling the production and distribution of specific solid state forms of the compound, potentially limiting competition and ensuring market dominance.
What are the criteria for an invention to be patentable?
An invention must be novel, non-obvious, and useful to be patentable.
Sources
- US Patent and Trademark Office. Patent Claims Research Dataset. Retrieved from https://www.uspto.gov/ip-policy/economic-research/research-datasets/patent-claims-research-dataset
- The Maryland People's Law Library. Patents. Retrieved from https://www.peoples-law.org/patents
- Google Patents. US8846718B2. Retrieved from https://patents.google.com/patent/US8846718B2/en
- United States Court of Appeals for the Federal Circuit. SNIPR TECHNOLOGIES LIMITED v. ROCKEFELLER UNIVERSITY. Retrieved from https://cafc.uscourts.gov/opinions-orders/22-1260.OPINION.7-14-2023_2157777.pdf
