Analyzing the Scope and Claims of United States Patent 9,572,856: A Comprehensive Guide
Introduction
Understanding the scope and claims of a patent is crucial for inventors, businesses, and legal professionals. This article delves into the analysis of United States Patent 9,572,856, focusing on its claims, scope, and the broader patent landscape.
Overview of Patent 9,572,856
United States Patent 9,572,856, titled "Angiotensin II and uses thereof," pertains to the use of angiotensin II, a peptide hormone, in medical treatments. Specifically, it covers the drug GIAPREZA, which is used to treat hypotension (low blood pressure)[5].
Claims Analysis
Types of Claims
Patent claims are the heart of any patent, defining the scope of protection. For Patent 9,572,856, the claims can be categorized into:
- Independent Claims: These stand alone and define the invention without reference to other claims.
- Dependent Claims: These build upon independent claims and further limit the scope of the invention.
Claim Structure
The claims in Patent 9,572,856 would typically follow a structured format, including:
- Preamble: Introduces the subject matter.
- Transition Phrase: Connects the preamble to the body of the claim (e.g., "comprising," "consisting of").
- Body of the Claim: Describes the essential features of the invention[3].
Example of a Claim
For instance, a claim might read: "A method of treating hypotension, comprising administering a therapeutically effective amount of angiotensin II to a patient in need thereof."
Scope of the Patent
Definition of Scope
The scope of a patent is determined by its claims and is a critical factor in patent litigation and licensing. It defines what is protected and what is not.
Determining Scope
To determine the scope of Patent 9,572,856, one must carefully analyze the language of the claims, considering:
- Literal Meaning: The plain meaning of the words used.
- Doctrine of Equivalents: Whether the accused product or process is substantially equivalent to what is claimed.
- Prosecution History: The history of how the patent was prosecuted, including any amendments or arguments made during the application process[3].
Patent Landscape
Global Dossier and International Search
To understand the broader patent landscape, tools like the Global Dossier can be used. This service provides access to the file histories of related applications from participating IP Offices, including the IP5 Offices (USPTO, EPO, JPO, KIPO, and CNIPA)[1].
Common Citation Document (CCD)
The Common Citation Document (CCD) consolidates prior art cited by all participating offices for the family members of a patent application. This helps in visualizing search results for the same invention produced by several offices on a single page[1].
Searchable Databases
Other international databases such as the European Patent Office's esp@cenet, Japan Patent Office's database, and the World Intellectual Property Organization's PATENTSCOPE can be used to see if similar inventions have been patented abroad[1].
Valuation of the Patent
Valuation Methods
The value of a patent like 9,572,856 can be determined using several methods:
- Cost Approach: The cost to develop the patent.
- Income Approach: The future benefits provided by the patent.
- Market Approach: Comparing the patent to similar assets sold in the market[4].
Market Data
Historical sales data of similar patents can provide insights. For example, the sale of Nortel's assets for $4.5 billion, where the consortium paid $750,000 per patent document, or Google's purchase of Motorola Mobility's assets for $12.5 billion, which included 24,500 patents and applications[4].
Legal and Regulatory Considerations
Patent Extension Applications
Patent extension applications, such as the one for GIAPREZA, can extend the life of a patent under certain conditions. These applications are reviewed by regulatory bodies like the FDA[5].
Office Actions and Prosecution History
Understanding the office actions and the prosecution history of the patent can provide valuable insights into its scope and validity. Tools like the Patent Examination Data System (PEDS) can be used to access this information[1].
Practical Applications and Impact
Medical Use
The patent covers the use of angiotensin II in treating hypotension, which has significant medical implications. This treatment can be life-saving in critical care situations.
Economic Impact
The economic impact of such a patent can be substantial, given the potential market size for hypotension treatments. The patent's value is not just in its direct use but also in licensing and potential future developments based on this technology.
Challenges and Limitations
Patent Profanity and Errors
Patents can be rendered worthless by errors or "patent profanity" in the drafting and prosecution process. Hiring a competent patent agent can mitigate these risks[4].
Competition and Prior Art
The presence of prior art or competing patents can limit the scope and value of the patent. Conducting thorough searches using tools like the Patent Public Search and Global Dossier is essential[1].
Key Takeaways
- Claims Analysis: Understanding the structure and types of claims is crucial for defining the scope of protection.
- Scope Determination: Analyzing the literal meaning, doctrine of equivalents, and prosecution history helps in determining the patent's scope.
- Patent Landscape: Using tools like Global Dossier and CCD to understand the broader patent landscape.
- Valuation: Employing cost, income, and market approaches to determine the patent's value.
- Legal Considerations: Understanding patent extension applications and office actions.
FAQs
What is the main subject matter of United States Patent 9,572,856?
The main subject matter of United States Patent 9,572,856 is the use of angiotensin II in medical treatments, specifically for treating hypotension.
How can the scope of a patent be determined?
The scope of a patent can be determined by analyzing the language of the claims, considering the literal meaning, doctrine of equivalents, and prosecution history.
What tools can be used to understand the broader patent landscape?
Tools such as the Global Dossier, Common Citation Document (CCD), and searchable databases from international intellectual property offices can be used.
How is the value of a patent typically determined?
The value of a patent is typically determined using the cost, income, and market approaches.
What are some common errors that can render a patent worthless?
Errors or "patent profanity" in the drafting and prosecution process can render a patent worthless. Hiring a competent patent agent can help avoid these errors.
Sources
- USPTO - Search for patents - USPTO - https://www.uspto.gov/patents/search
- FDA US FOOD & DRUG - Regulations.gov - https://downloads.regulations.gov/FDA-2018-E-2597-0005/attachment_1.pdf
- USPTO - Patent Claims Research Dataset - https://www.uspto.gov/ip-policy/economic-research/research-datasets/patent-claims-research-dataset
- Perpetual Motion Patents - The value of a patent - https://perpetualmotionpatents.com/the-value-of-a-patent/
- FDA - Patent Extension Application for GIAPREZA Patent No. 9572856 - https://www.regulations.gov/docket/FDA-2018-E-2597
