U.S. Patent Office cancels some of the claims in the Viagra patent

February 17, 2010


An appeals board of the U.S. Patent and Trademark Office (USPTO) has partially rejected a patent on Pfizer Inc’s impotence drug Viagra because it works in a way similar to the Chinese herb Yin Yang Huo, otherwise known as Horny Goat Weed. See http://en.wikipedia.org/wiki/Epimedium for details of this plant.

This February 12 decision upheld an earlier finding that an element of the Viagra patent did not represent a new invention.

Interestingly the claims were cancelled following the patentee, Pfizer, filing a patent infringement lawsuit against rival pharmaceutical company Eli Lilly and Co, which makes the competing drug Cialis.

The board of patent appeals ruled that a chemical ingredient of Yin Yang Huo, which is used to treat impotence and sometimes sold as an alleged aphrodisiac, is similar to the enzyme inhibitor found in Viagra.

The Pfizer patent which is not due to expire until 2019, enables Pfizer to maintain a monopoly on sildenafil (Viagra) which is apparently used to treat erectile dysfunction. Last years sales of the drug in the US exceeded $2 billion.

There are apparently a lot of horny old goats out there…


Electronic filing; PCT, US and Israel

January 19, 2010

The PCT has announced that its Online Document Upload Facility became fully operational on Monday, 18 January, 2010. This facility permits PCT applicants and/or their agents to submit documents relating to international applications in PDF format, via the WIPO website.

One advantage claimed for this development is that post-filing electronic documents can be submitted quickly and efficiently to the IB, thus avoiding the costs and delays relating to paper mailing whilst overcoming image quality problems that can result from fax transmissions or paper scanning.

However, the service is not to be used for the initial filing of PCT international applications online to WIPO Geneva as a Receiving Office, only for subsequent submission of later-filed documents that are normally addressed to WIPO in its capacity as International Bureau only. Furthermore, the process only works if the International Bureau has already received the Record Copy from the receiving Office and started processing the application.

The long list of documents that may be uploaded includes amendments to the claims under PCT Article 19,requests for recording change of person, name, address, etc., notices of withdrawal, requests for Supplementary International Search (SIS), and where applicable, translations of international applications and sequence listings under PCT Rule 13ter for SIS purposes, informal comments on the written opinion of the International Searching Authority and general correspondence for the attention of the IB. Further guidelines are to be found at http://www.wipo.int/pctdb/en/

 Comment

All the submissions listed are text based submissions that I routinely fax and in addition to the fax receipt generated by my system, I get an acknowledgement from WIPO by return. I’ve never had a problem with the faxed document being considered unclear. Thus I am not sure that this development is in any way significant, except for the possible eventual reduction in paper usage.

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 On 14 January 2010 President Barack Obama told technology executives at the Forum on Modernizing Government:

 ”Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system…This is one of the reasons why the average processing time for a patent is roughly three years.”

It’s a great quote. So what if Barak is apparently wrong and the USPTO stopped doing that back in 2006???

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Another great quote: Dr. Michael Bart, the Head of the PCT Receiving Office in Israel told me that a colleague at the EPO stated that “A paperless patent office is like a paperless toilet. “

Incidentally, the Israel Patent Office is also gearing up for electronic filing.

What of the ecological issues? Well the following story is absolutely true: whilst working at the UK National Physics Laboratory, NPL, in the early Nineties, I used to receive the internal newspaper of the Department of Trade & Industry. Then secretary of State for Trade & Industry Michael Hesseltine requested ideas for minimizing the paper-chase to be submitted on the requisite form in triplicate.

And finally, the ultimate all-in-one machine – one of my inventions, that I considered filing - the combined fax, printer, photocopier with shredder and bin. Does the whole process without human intervention.


Embezzler of USPTO client accounts Receives 18 months in Jail and Ordered to Restore Fees

November 22, 2009

It is sometimes possible to get a refund from the USPTO where it collects fees for services that are eventually not required or not performed. Unfortunately this does not seem to include refunds of International Search fees for PCT applications.

Anyway, a Ms Karen L. Parish succeeded in diverting these refunds into her personal bank accounts in a way that the USPTO thought they were refunded to customers.

She apparently succeeded in pocketing over half a million dollars over a 15 year period before getting caught.

For more details see: http://www2.insidenova.com/isn/news/local/article/woman_sentenced_for_embezzlement/47485/


New kid on the blog

November 12, 2009

In an interesting development, the Director of the USPTO, Mr. David Kappos, has launched an IP blog! See http://www.uspto.gov/blog/director/entry/director_s_forum_david_kappos

I don’t think that it will become a resource on Israel IP developments and thus doubt that it will adversely affect my ratings, but I suspect it will attract a large number of blog hits.

We wish him luck.

 


USPTO Issues Guidelines About Patentable Subject Matter.

August 27, 2009

Preempting the US Supreme Court’s review of patentable inventions (re Bilski), the USPTO deputy commissioner has issued some nifty guidelines and rather inane flow-charts demonstrating to those requiring  intellectual examination what a machine is or what a transformation is.  See Dennis Crouch’s Patently-O:

http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html

From my reading of the guidelines, I would say that business methods and gene sequences are out in the interim. Note, this is interpretation only.  There are no clear statements to that effect. It does seem that anything new under the sun, is no longer patentable; merely new materials, new devices and systems and new methods of transforming matter.

I am not sure what the Supreme Court will do, but I assume that they are hearing the case as they intend to do something. It is, however, not clear why the USPTO has decided to publish interim guidelines.   

For a great piece of satire on the topic by Professor Jeremy Phillips, see the IPKAT: 

http://ipkitten.blogspot.com/2009/08/another-new-uspto-test.html


Business and Software Patents, a last word? – US Supreme Court to Hear Bilski

June 2, 2009

In Bilski et al. vs. Doll, the Federal Circuit Court of Appeals rejected pure software and business method patents and moved closer to the European standard of what is patentable, allowing software tied to a physical machine, but not software per se.

The Supreme Court has granted certiorari and agreed on Monday to review the Bilski case and to consider writing a new, modern definition of the kinds of inventions that are eligible for patent rights.

It is important to clarify when, if ever, an invention that involves a method of doing business can be patented in the US. At present, it is impossible to advise clients as to the patentability of such material.

The decision will come in the next Term, so nothing will happen until October.

For a good overview of issues, see Patently-O http://www.patentlyo.com/patent/2009/06/bilski.html

The FCAC overturned the Supreme Court decision not to limit patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”


Gettting UPS Browned Off

March 28, 2008

In the latest strange trademark infringement case, a Mr. Samuel Z. Brown, of The Law Offices of Samuel Z. Brown, has been accused of infringing trademarks owned by UPS – the parcel Read the rest of this entry »


So it was Grey and not Bell who invented the telephone

December 30, 2007

Seth Shulman claims there is “little doubt” that Bell stole his initial telephone  Read the rest of this entry »


GSK Gets 90th Minute Reprieve Against USPTO Reform

October 31, 2007

GlaxoSmithKline has succeeded in obtaining a preliminary injunction from a Virginian court that will prevent the USPTO from implementing the new rules Read the rest of this entry »


Status of Dependent Claims

October 20, 2007

Greg Aharonson, in the popular PatNews news letter asks the following:

    A QUESTION ON DEPENDENT CLAIMS’ (NON)OBVIOUSNESS

It is commonly said that the obviousness of dependent claims rise Read the rest of this entry »


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