To respond to your specific point about the onsale bar of a compound in a library. If a compound is in a library that is commercially available, I don't think an inventor will be able to claim it as a novel compound (I don't why the bar would not apply), but an inventor may discover an unexpected utility and claim the utility.
Andy Berks
Wyeth Ayerst
>>> "Clay Matthews" <cmatthews@novaclaim.com> 4/20/99 9:04:40 PM >>>
Andy,
I think it is correct to view chemical libraries as a physical manifestation
of Markush groups. However, I do believe that library claims add a new
flavor of composition of matter claim that will have an impact on patent
law.
It's hard to predict if courts will treat library claims differently from
Markush claims, but I suspect that compounds which were once patentable even
though claimed in a prior art Markush group will no longer be patentable if
found in library claims. For example, in the case of In re Baird 29 USPQ2d
1550 (Fed. Cir. 1994)an applicant's compound was excused from an Examiner's
103 obviousness rejection even though the compound was clearly encompassed
by a prior art Markush group. The court dismissed the Examiner's rejection
holding
"[T]he generic diphenol formula disclosed in Knapp contains a large number
of variables, and we estimate that it encompasses more than 100 million
different diphenols, only one of which is bisphenol A. While the Knapp
formula unquestionably encompasses bisphenol A when specific variables are
chosen, there is nothing in the disclosure of Knapp suggesting that one
should select such variables."
In this case the court was looking for a way to grant the applicant's patent
because the applicant had so narrowly defined the scope of his claim to
include only a few compounds. It appears the court thought it unjust to
deny a patent simply because the compounds of interest fell inside the
blackhole of the prior art Markush claim.
My point, finally, is this, had the Markush claim been a library claim the
court would not have been able to make the argument that Markush-library
compounds were not 'suggested.' The fact that library claims are physical
manifestations of Markush groups would block such an argument.
I am in agreement with others that chemical libraries are useful and should
be patentable. However, I think that patenting directed, (and possibly
non-directed), libraries for screening may raise patentability issues that
are unique to combinatorial chemistry claims.
Damian makes some excellent points regarding patentability of chemical
libraries. In terms of the on-sale bar; do you think that the sale of a
chemical library should bar the patenting of one of the compounds within the
library by a third party?
I didn't get this line however,
"In my opinion, descriptions of nucleotide or amino acid sequences, or
chemical structures should only be
included in patent applications if they are UNIQUELY claimed for USE in an
invention."
Since library claims uniquely claim all the compounds of a chemical library
does this mean that you are proposing to provide chemical structures for all
the compounds within the library?
-----Original Message-----
From: Andy Berks [mailto:BERKSA@war.wyeth.com]
Sent: Tuesday, April 20, 1999 4:53 PM
To: piug-l@derwent.tecc.co.uk; cmatthews@novaclaim.com
Subject: Re: Combinatorial chemistry libraries & patentability
This is an interesting message. I just committed to giving a talk on combi
patents at the ACS meeting in New Orleans, so any comments related to this
would be of interest.
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