I don't see why combi patents would be fundamentally different than any other patent. As a technology touched by the hand of man, I don't see why combi inventions aren't normally patentable. My bias at the moment is that I don't think the PTO needs any new policies regarding combi claims. I think of them as physical embodiments to the known phantom Markush structures.
It is already well established that Markush chemical structures in patents are prior art against others, even in when the Markush structures encompass phantom structures that have not actually been prepared by the inventors. There are also well established search engines containing Markush data (MARPAT and Markush DARC).
I think these facts address the questions brought up in this message. Given the well known use of Markush structures, why should the PTO force patentees to submit a possibly huge list of 2D structures? A big difference between organic chem patents and biosequence patents is that sequence patents are in one dimension (sequences are linear), but chemistry is in three dimensions, although it is often simplified and drawn in 2D. Therefore an analogy between sequence patents and chemistry patents is difficult. In sequences, the search engines are much more capable of fuzzy searches (molecular biologists call them homology searches) because of the one-dimensionality of the search. Homology searching essentially solves the problem of Markush type searching in biosequence patents. Homology searching in chemistry gets much trickier. It is computationally much more difficult, and if you start substituting functional groups, it becomes important to specify the types of substitutions allowed and
topologically where they are allowed.
I will download the '443 patent to see what it says. I don't think this subject needs to be made more complex than most other areas of patenting, but I am open to discussion.
Andy Berks
Wyeth Ayerst Research
>>> "Clay Matthews" <cmatthews@novaclaim.com> 4/20/99 2:56:55 PM >>>
Is anyone aware of caselaw, comments by the PTO, or reviews discussing the
patentability issues regarding combinatorial chemistry?
I would also like to know if any list subscribers have any thoughts on the
use of chemical libraries as a 35 U.S.C. section 102 statutory bar to
patentability. i.e. on-sale bar, public use, etc.?
Are patent searchers concerned that the PTO is allowing 'library claims'
as in US 5,874,443? Should the PTO adopt a policy which would force
patentees to submit 2-D structures of all compounds claimed in a library
format so that the PTO could create an independent sub-structure
searchable database? I could imagine a similar system as that created for
the submission of aa and nucleotide sequences. Do any of the commercial
databases catalog the individual compounds that are given patented status
in library claims?
It would seem that combinatorial techniques are here to stay. How does
the patent office and the courts deal with these combinatorial product
claims? It would seem that the law created to address Markush groups
(imaginary chemical libraries) would almost certainly be interpreted
differently than law directed to 'real-life' compounds created through
combinatorial chemistry. That is, combinatorial library claims will carry
more weight than Markush claims, and render broad sections of the chemical
landscape off limits.
Clay Matthews, Ph.D.
cmatthews@fplc.edu