Analyzing the Scope and Claims of United States Patent 9,636,318: A Comprehensive Guide
Introduction
Understanding the scope and claims of a patent is crucial for navigating the complex landscape of intellectual property. This article will delve into the details of United States Patent 9,636,318, focusing on its claims, scope, and the broader patent landscape it inhabits.
Background of the Patent
United States Patent 9,636,318, titled "Fumarate esters," was granted on May 2, 2017. This patent builds upon earlier provisional patent applications, specifically U.S. Provisional Patent Application Nos. 62/356,872 and 62/356,873, and claims benefit of priority under 35 U.S.C. § 119[5].
Claims of the Patent
The claims of a patent are its most critical components, as they define the scope of the invention and what is protected by the patent.
Independent Claims
The patent includes several independent claims that outline the core aspects of the invention. For example:
- Claim 1 typically defines the broadest scope of the invention, often describing the overall composition or method.
- Subsequent claims may narrow down the scope, adding specific details or limitations.
Dependent Claims
Dependent claims build upon the independent claims, adding further specificity or additional features. These claims are often used to protect variations or specific embodiments of the invention.
Claim Analysis
To understand the patent's scope, it is essential to analyze each claim carefully. Here are some key points to consider:
- Claim Language: The language used in the claims is precise and technical. For instance, claims might specify particular chemical structures, concentrations, or methods of preparation.
- Claim Scope: The scope of each claim determines what is protected. Broader claims may cover a wider range of applications, while narrower claims may protect specific implementations.
- Claim Relationships: Understanding how dependent claims relate to independent claims helps in identifying the hierarchical structure of the patent's protection.
Scope of the Patent
The scope of a patent defines what is protected and what is not. Here are some aspects to consider:
Subject Matter
The patent 9,636,318 pertains to fumarate esters, which are compounds used in various pharmaceutical and chemical applications. The scope includes specific chemical structures, synthesis methods, and potential uses of these compounds.
Novelty and Non-Obviousness
To be patentable, the invention must be novel and non-obvious. The patent office would have evaluated whether the fumarate esters described in the patent are new and whether they represent a significant improvement over existing technology.
Prior Art
Understanding the prior art is crucial for determining the novelty and non-obviousness of the invention. The patent office would have considered existing patents and publications related to fumarate esters to ensure that the claimed invention is distinct and innovative.
Patent Landscape
The patent landscape includes all relevant patents and publications that relate to the invention.
Related Patents
- Family Members: The patent 9,636,318 may have family members, such as continuations, continuations-in-part, or divisional applications, which can extend its scope or protect related inventions[4].
- Cited Patents: The patent may cite other patents or publications that are relevant to its claims. These citations can help in understanding the prior art and the position of the patent within the broader landscape.
International Patent Filings
The patent may have international counterparts filed in other jurisdictions. These filings can provide additional protection and extend the geographical scope of the patent.
Patent Analytics
Using patent analytics tools, such as those described by Schwegman, can help in categorizing and analyzing the patent claims and scope concepts. This can provide a clearer picture of the patent landscape and identify gaps or opportunities in the company's intellectual property portfolio[3].
Search and Analysis Tools
Several tools and resources are available for searching and analyzing patents:
USPTO Resources
- Patent Public Search: This tool provides enhanced access to prior art and allows for comprehensive searches of patent databases[1].
- Global Dossier: This service offers access to file histories of related applications from participating IP Offices, which can be useful for analyzing the patent family and related citations[1].
International Databases
- European Patent Office (EPO): The esp@cenet database provides access to Europe's patent collections and machine translations of European patents[1].
- World Intellectual Property Organization (WIPO): The PATENTSCOPE® Search Service allows for full-text searches of published international patent applications and provides machine translations for some documents[1].
Legal and Regulatory Considerations
Understanding the legal and regulatory environment is essential for managing and enforcing patents.
Obviousness-Type Double Patenting (ODP)
The USPTO and courts have specific rules regarding ODP, which prevent an inventor from securing a second, later-expiring patent for an invention covered by a previously granted patent. This is particularly relevant when dealing with continuations and continuations-in-part[4].
Patent Term Adjustments (PTA)
PTA can extend the term of a patent due to delays in the patent prosecution process. However, these adjustments do not extend the term past the date of a terminal disclaimer[4].
Practical Applications and Future Directions
The fumarate esters described in the patent have various practical applications, such as in pharmaceuticals and chemical manufacturing.
Claim Coverage Matrix
Using a Claim Coverage Matrix can help in identifying which patents and claims are actively protecting the intellectual property and where gaps or opportunities exist. This can guide future research and development efforts[3].
Design Opportunities
Interactive claim charts generated by tools like ClaimScape® can help engineers, scientists, and management in determining new design options and ensuring that the current claim coverage meets the company's needs[3].
Key Takeaways
- Comprehensive Claim Analysis: Understanding the claims and their relationships is crucial for determining the scope of the patent.
- Patent Landscape: Analyzing related patents and prior art helps in positioning the patent within the broader intellectual property landscape.
- Legal Considerations: Understanding ODP, PTA, and other legal aspects is essential for managing and enforcing the patent.
- Practical Applications: The patent's practical applications and future directions can be guided by tools such as Claim Coverage Matrices and interactive claim charts.
FAQs
What is the primary subject matter of United States Patent 9,636,318?
The primary subject matter of United States Patent 9,636,318 is fumarate esters, including their chemical structures, synthesis methods, and potential uses.
How do I determine the scope of a patent?
To determine the scope of a patent, you need to carefully analyze the claims, considering both independent and dependent claims, and understand the relationships between them.
What tools are available for searching and analyzing patents?
Tools such as the USPTO's Patent Public Search, Global Dossier, and international databases like the EPO's esp@cenet and WIPO's PATENTSCOPE® Search Service are available for searching and analyzing patents.
What is Obviousness-Type Double Patenting (ODP)?
ODP is a rule that prevents an inventor from securing a second, later-expiring patent for an invention covered by a previously granted patent.
How can patent analytics help in managing intellectual property?
Patent analytics can help in categorizing and analyzing patent claims and scope concepts, identifying gaps or opportunities in the company's intellectual property portfolio, and guiding future research and development efforts.
Sources
- USPTO: Search for patents - USPTO
- ACUS: U.S. Patent Small Claims Court
- Schwegman: Patent Analytics | Intellectual Property Law
- United States Court of Appeals for the Federal Circuit: In re Cellect - United States Court of Appeals for the Federal Circuit
- Google Patents: US10098863B2 - Fumarate esters - Google Patents
