Global Allied Pharmaceuticals Corporation © 2019
- Evaluation of patent validity via a fresh prior art search by a competent patent search professional.
- For the acquisition of a small molecule therapeutics.
- A Marpat search reveals what is covered in a Markush patent claim.
- Other searches should be used to learn about scientific publications and presentations at conferences.
- Additionally, cross check references cited in patent office proceedings.
- Issues concerning the 102(b) on-sale bar are often overlooked when performing diligence on a drug candidate
- Inequitable conduct can render a patent unenforceable and evidence of such conduct may be found in a variety of places.
- Do the statements contradict other disclosures in publications or other patents, especially those made by the same inventors?
- Lack of enablement or best mode can render the patent invalid under 35 U.S.C. 112.
- Scientists should be consulted regarding whether claims are enabled.
- It might happen if an improvement is made while the application is being prepared, and the application gets filed without disclosing the improvement.
- If a patent validity issue or risk is suspected for one of the above reasons, then an evaluation needs to be made as to whether the potential problem can be rectified.
- A new filing such as a continuation application, reissue or re-examination may be needed to mitigate any such risk.
Patent Validity Checklist is performed:
- Anticipation and Obviousness
- Sources of prior art
- Cross-check references (e.g., from file wrappers, oppositions, etc.)
- Target publications and presentations
- Competitor’s patents and publications
- Scientific literature
- Scientific conferences
- Inequitable conduct
- Cross-check related applications
- Review inventor publication files
- Review patent counsel files
- Lack of enablement or written description
- Consult scientist to analyze for each claim
- Best mode
- Confirm best mode known at time of relevant filings
- Review inventor publications and internal memos
- Consider need to file:
- Amended claims
Contact us for more information.