Pharmaceutical patents for inventions resulting from combination of previously known active ingredients face higher level of scrutiny from the patent examiner as patent office does not generally allow the patent owners to extend the life of existing patents by filing new patents for substantially same or similar inventions, without any novelty or inventive step (non-obviousness).
Evergreening of Patents
Q. What is evergreening of patents?
Such strategies are commonly followed in pharmaceutical sector for drug patents and hence, patent offices rely on the determination of a new or a non-obvious synergy or a distinct effect. In use, such a novel and non-obvious synergy or the distinct effect has to be covered comprehensively by drafting a strong and focused set of patent claims, which can be further supported by way of accompanying detailed description of the invention including results of clinical (laboratory) and biology test results.
Therefore, while drafting patent applications covering drug patents and pharmaceutical inventions, pharma patent attorneys follow the best practice of writing patent specifications with the required detailed description of the inventions to satisfy the patent eligibility criteria.
Q. What is a patent thicket?
Another term related to evergreening of patents is patent thicket, which implies a dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology, in other words, “an overlapping set of patent rights” which requires innovators to reach licensing deals for multiple patents from multiple sources.
Q. What is product hopping in pharmaceutical sector?
As it is well known, pharmaceutical sector often experiences battle between generic drug makers and multinational pharmaceutical companies, which results in “product-switching” or “product hopping”, whereby brand name pharmaceutical companies make an effort to block generic drug manufacturers, which are their competitors, on a patented drug by making slightly different reformulations that offer little or no therapeutic advantages.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Pharmaceutical Patent Attorney
Law office of Rahul Dev is a niche technology and research based law firm focusing on next generation business and legal issues faced in India and outside India during international business and cross-border technology transactions. We assist our clients in close collaboration with our associates and counsels within India and outside by providing custom engagement models to address our client’s needs.
Practice areas include drafting and filing pharmaceutical and drug patent applications, pharmaceutical and drug patent prior art searches, pharmaceutical and drug patent prosecution, pharmaceutical and drug patent filing in India, pharmaceutical and drug PCT national phase entry in India, pharmaceutical and drug PCT international applications with WIPO, freedom to operate searches for pharmaceutical products and drugs, patentability analysis of pharmaceuticals and drugs and patent strategy to create a valuable patent portfolio comprising of new pharmaceutical and drug.
Pharmaceutical Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).
Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office action responses, patent infringement litigation, patent claim mapping and patent licensing. For international patent filings, we have an established network of global patent attorneys to provide reliable and cost effective services to our clients.