Org Prep Daily

June 29, 2007

Patentz

Filed under: industry life — milkshake @ 11:16 am

sliva3b.jpg Credit: Jiri Sliva

I have gone on a tirade here about how writing your own patents is insidious because one gets encouraged by the demons in his head, the management and the patent lawyers to fudge things a bit and that’s exactly how some medicinal chemists start cheating. I deleted that piece because it wasn’t written well. I may come back to the subject when I calm down – though I should explain now what set me off to ramble about these things: I submitted a bunch of experimental procedures for a patent application in which I was the sole person doing the synthetic work. After the provisional patent was issued I found out that two fictitious experimental procedures were included in the patent submission – our patent lawyers found it expedient to dream them up. When I protested, the lawyers explained to me that they really didn’t have to tell me and I shouldn’t worry about such additions because they are being done by experts. From the lively debate that ensued I learned that I was using incorrect English. What I call a fake experimental procedure is actually a prophetic example. What I call bullshit is a modus operandi. I think it is reasuring to find the lawyer jokes so accurate.

9 Comments »

  1. I for one think the entire patent system is horribly fouled up. Not only can you claim prophetic experimentals, you can actually claims structures that you have not specifically made.

    Comment by milo — June 29, 2007 @ 10:45 pm

  2. I think also the standards are awfully low for “non-obviousness”. If you take a competitor’s compound and make exact replica of it except that the pyridine is replaced with pyrimidine, it is novel and patentable (unless it was claimed already).
    Another problem is that ridiculously wide claims are allowed, the sky-and-moonshine claims that are not supported by experimental examples. This causes enormous collateral damage to unrelated projects. BMS for example patented aminothiazoles extensively, now they practically own anything with aminothiazole in it. No matter that couple of aminothiazoles are in natural substances – the patent lawyers will discourage you to work on any “claimed” piece and potential licencees of your IP may balk at a prospect of litigating against BMS.

    Comment by milkshake — June 29, 2007 @ 11:05 pm

  3. I find some of this very depressing at times.

    In our subject, dishonesty and cheating seems to a hell of a lot more rife than I find comfortable.

    Comment by TWYI — June 30, 2007 @ 5:41 am

  4. Are these prothetic examples the reason why my procedures published in patents claiming 85 +++ % Y only give me 25 % Y?

    Comment by andrew — July 1, 2007 @ 11:06 am

  5. Prophetic examples are perfectly acceptable, especially when you want to claim something obvious (you made an intermediate as a mixture of isomers at a certain carbon – you took one to the final compound and wrote a prophetic example on how to take the other stereoisomer to the final compound). Sometimes there are compounds which are in the plans to be made but not made yet, but the proviousnal need to be filed – remember, in europe it is first to file as opposed to the Us where it is first to invent.

    The drawbacks with prophetic examples is that if you disclose a structure and dont get around to making it and the claim is not granted – it becomes prior art against you. Even if you later find out that it was the best compound ever, no one including yourself can claim it due to it being prior art.

    Comment by PS — July 1, 2007 @ 3:58 pm

  6. Yea but aren’t they supposed to tell me if they decide to fudge stuff, in my experimental procedures? I made these compounds actually so I could have given them the real procedures but they did not bother to ask me.

    Comment by milkshake — July 1, 2007 @ 11:27 pm

  7. One thing to keep in mind– someone can make very broad claims, but these claims can be stricken later on (I believe this is considered patent “prosecution”) if evidence is lacking. Of course this all makes for more work for the lawyers…

    Comment by Canuck Chemist — July 9, 2007 @ 2:20 pm

  8. I’m with you on this one. At the very least, you should have written the prophetics. When I joined big pharma, I was asked to include as little characterization data as possible in my patent examples…low res mass spec was all that was required. I refused and wrote the examples with full supporting information as for publication…after digging my heels in, they eventually published. The thing is, you better be damn well sure what you made is in fact what you claim…which for most med chem is not a great leap. FWIW, you can always spot prophetics as they are written in the present tense…hence no work is claimed to have been completed. Most of the broad claims are stricken during prosecution anyhow…it just another way for the lawyers to be sneaky.

    Comment by synthon — July 11, 2007 @ 4:42 pm

  9. You’re going to love reading the following patent: Synthon BV v. Smithkline Beecham plc [2005] UKHL 59.

    From memory: Synthon obtains patent. SKB looks at patent and tries to recrystallise claimed cpd (paroxetine mesylate). Cpd does not recrystallise from solvent (ethanol) given in patent. But does recrystallise from other bench top solvents. Upon obtaining crystals, it is found that the IR structure in patent does not correlate with that found in SKB labs. (Crystal form / polymorph diversion here but later found to be irrelevant). SKB takes Synthon to court, and looses; appeals and wins; Synthon appeals (this case) and wins. Law Lords say – chemist at Synthon submitted the wrong IR to patent lawyers and hence this found its way into patent: but we forgive the error (just imagine doing that??!!!???). Second point the law Lords made … after Jack Baldwin got Robert Adlington (the best experimental chemist in the world! he is quite good, mind) to make and crystallise paroxetine mesylate using the Synthon route. Oiled out constantly. No crystals formed. Adlington asked if he could crystallise it at all; ‘Oh, yeah. It comes out of toluene OK’ (Or some such). The law lords go on to say … well if those who are skilled in the art can obtain the crystals even though it never crystallises or crystallised from what was specifically claimed in the patent, it doesn’t matter. The patent still stands. Lastly, don’t rely on any of what I’ve written; I’ve galloped through this post from memory: just read the patent. My Lord Bingham is the man with the ratio (imho, and Cornhill is quite nice too if a little sleepy).

    Comment by Zeph — August 23, 2007 @ 9:35 am


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