Understanding the Scope and Claims of United States Patent 9,687,474
Introduction
United States Patent 9,687,474, titled "Patch," is a utility patent that covers a specific type of transdermal patch. To delve into the details of this patent, it is crucial to analyze its scope, claims, and the broader patent landscape it operates within.
Patent Overview
The patent in question, US 9,687,474 B2, was granted for a patch comprising a support layer and an adhesive agent layer. The adhesive agent layer includes asenapine or a pharmaceutically acceptable salt thereof. Here is a brief overview of the key components:
- Support Layer: This layer provides the structural base for the patch.
- Adhesive Agent Layer: This layer contains asenapine, a medication used for treating certain psychiatric conditions, such as schizophrenia and bipolar disorder[4].
Scope of the Patent
The scope of a patent is defined by its claims, which outline the specific protections granted to the inventor.
Claims
The claims in a patent application are critical as they define the boundaries of the invention and the protection it receives. Here are some key points regarding the claims in US 9,687,474:
- Independent Claims: These claims stand alone and define the invention without reference to other claims. In this patent, the independent claims focus on the composition and structure of the patch, including the specific components and their arrangement.
- Dependent Claims: These claims refer back to and further limit the independent claims. They often provide additional details or variations of the invention. For example, dependent claims might specify different concentrations of asenapine or additional components in the adhesive layer[4].
Patent Eligibility and Subject Matter
To be patentable, an invention must meet the criteria outlined in Title 35 of the U.S. Code, which includes being novel, non-obvious, and useful.
Novelty
The invention must be new and not obvious to someone skilled in the relevant field. A prior art search, which involves reviewing existing patents and publications, is essential to ensure the invention has not been previously disclosed[5].
Non-Obviousness
The invention must be significantly different from existing technology and not obvious to someone with ordinary skill in the field. This is often a point of contention and requires careful analysis to determine if the invention offers a substantial improvement over prior art[5].
Utility
The invention must have a practical application and be useful. In the case of US 9,687,474, the patch is designed to deliver asenapine transdermally, providing a specific and practical use in the field of psychiatry[4].
Recent Guidance on Patent Eligibility
The 2024 USPTO guidance update on AI patent eligibility, while not directly applicable to this pharmaceutical patent, provides insights into how patent eligibility is determined. Key takeaways include:
- Integration into Practical Application: Claims must integrate judicial exceptions (such as abstract ideas or natural phenomena) into a practical application to be considered patent-eligible. This principle can be applied broadly to ensure that any invention, including pharmaceutical patches, demonstrates a concrete technological improvement[1].
Inventorship and Patent Applications
Determining the true and only inventors is crucial for a patent application. In the United States, invention involves two steps: conception of the idea and reduction of the idea to practice. The inventors listed must have contributed to these steps[2].
Patent Filing Process
The patent application process involves several steps, including:
- Provisional vs. Non-Provisional Applications: A provisional application allows for an early filing date with fewer formal requirements, but a non-provisional application must be filed within 12 months to comply with all statutory requirements[5].
- Filing and Examination: The application is filed with the USPTO and undergoes a search and examination process to ensure the invention meets the criteria for patentability[5].
Patent Landscape
The patent landscape for pharmaceutical patches is competitive, with numerous patents covering various aspects of patch design, drug delivery systems, and specific medications.
- Prior Art: Conducting a thorough prior art search is essential to ensure that the invention is novel and non-obvious. This involves reviewing existing patents, publications, and other relevant materials[5].
- Competitor Patents: Understanding competitor patents helps in identifying gaps in the market and potential areas for innovation. This can also inform strategies for differentiation and improvement[5].
Examples and Case Law
While the patent in question is not related to AI, the principles of integrating abstract ideas into practical applications and demonstrating concrete technological improvements are relevant. For example:
- AI-Related Patents: The 2024 USPTO guidance update includes examples where claims involving AI technologies are evaluated for patent eligibility. These examples illustrate how specifying real-world applications and demonstrating practical utility can make a claim patent-eligible[1].
Key Takeaways
- Claims Define Scope: The claims in a patent application are crucial as they define the scope of protection.
- Patent Eligibility: The invention must be novel, non-obvious, and useful.
- Practical Application: Integrating judicial exceptions into practical applications is key to patent eligibility.
- Inventorship: Correctly determining the true and only inventors is essential.
- Patent Filing: Understanding the difference between provisional and non-provisional applications and the examination process is vital.
FAQs
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What is the main component of the adhesive agent layer in US 9,687,474?
- The main component is asenapine or a pharmaceutically acceptable salt thereof.
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Why is it important to conduct a prior art search?
- To ensure the invention is novel and not obvious, and to avoid potential infringement issues.
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What are the key criteria for patent eligibility?
- The invention must be novel, non-obvious, and useful.
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How do dependent claims differ from independent claims?
- Dependent claims refer back to and further limit the independent claims, often providing additional details or variations.
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What is the significance of integrating judicial exceptions into practical applications?
- It ensures that the claimed invention offers a concrete technological improvement and meets the criteria for patent eligibility.
Sources
- Understanding the 2024 USPTO Guidance Update on AI Patent Eligibility - Mintz
- Determining Inventorship for US Patent Applications - Oregon State University
- Patent Claims and Patent Scope - SSRN
- US9687474B2 - Patch - Google Patents
- Patents | The Maryland People's Law Library - People's Law Library
