Author Archives: Organic Patent

Stereogenic Oxygen!

I have been updating my page on patentability / non-obviousness of chiral compounds. While working on it, I read about a new molecule ─ a chiral triaryloxonium ion ─ in Chemical & Engineering News (C&EN). Astoundingly, the stereocenter is the oxygen, rather than a carbon, the atom most famous for its chiral capabilities. Chemists synthesized the first stable molecule whose chirality is solely attributed to a stereogenic oxygen. They published their work in Nature. See, O. Smith et al., Control of Stereogenic Oxygen in a Helically Chiral Oxonium Ion, Nature, 615, 430–435 (2023). 

Link to C&EN article: This New Molecule Owes its Chirality to Oxygen Alone

Can someone patent a chiral oxonium ion?

We do not know if the chemists filed a patent application claiming the composition. But that didn’t stop me from speculating as to such a possibility. I think that a patent application claiming a chiral oxygen would be robust. Firstly, the inventors reduced the molecule to practice. They physically made it. It surely is not an abstract idea. Secondly, if the molecule is truly the first stable molecule, then novelty should be no problem. Thirdly, I think that such a compound is non-obvious and inventive.

Might a chiral oxygen be obvious?

Let’s focus on non-obviousness. Might a chiral oxonium ion be obvious? I think that, most likely, a chiral oxonium ion would not be obvious. As noted on Organic Patent’s page, Obviousness of Stereoisomers & Purified Compounds, critical support for arguing non-obviousness includes evidence of unexpected properties and difficulties associated with resolving compounds. Other secondary considerations / “Graham” factors are super helpful too, such as long felt but unsolved needs. The articles cited above have an abundance of such evidence.

Below are a few powerful quotes:

  • “Oxygen has been less cooperative.”
  • “Oxonium ions … have the potential to be chiral, but they are notoriously reactive”
  • “The few previous examples of chiral oxonium ions are too unstable to be isolated … so the search for chiral oxonium ions languished in the literature”

Gilead Wins Another Sofosbuvir Challenge: U. Minnesota v. Gilead

Regents of the U. of Minnesota v. Gilead Scis., Inc., 2021-2168, — F.4th — (Fed. Cir. Mar. 6, 2023)

The Court of Appeals for the Federal Circuit (CAFC) analyzed whether the written description found in UMN’s priority applications supported the claims in the resulting patent # US 8,815,830. The CAFC said no.

While the ‘830 patent claims covered sofosbuvir, The CAFC affirmed an IPR’s invalidation of U. Minnesota’s claims because they could not properly claim priority to its provisional application. The reasoning was that the provisional with its nebulous multiple dependent claims, that were themselves dependent on further multiple dependent claims, did not adequately describe the subgenus eventually claimed in the non-provisional application.

See Patently-O’s posts for more:

March 7, 2023 — Laundry Lists of Components are Insufficient Written Description for a Particular Combination | Patently-O (patentlyo.com)

March 9, 2023 — Multiple dependent claims, blaze marks, and ipsis verbis support | Patently-O (patentlyo.com)

SOVALDI® (soh-VAHL-dee) (sofosbuvir)



Said Goodbye to Ribbons – Now Say Goodbye to Paper: USPTO Officially Transitions to Issuing Electronic Patent Grants in 2023

Get ready for Electronic Patent Grants!*   

* And be ready to file continuations or divisionals earlier.

USPTO-Ribbon small

Recently in 2018 [okay perhaps ancient history to some] the USPTO stopped attaching actual ribbons to issued patents. Now the USPTO will stop automatically printing paper copies. This is of course good news for trees. This is also good news for applicants who want applications issued more efficiently. However, applicants need to be ready to file any continuing applications earlier than they have been accustomed because the USPTO will issue patents more quickly after providing applicants with a Notice of Issuance. Meanwhile, applicants still need to file continuing applications before issuance.

Electronic Patent Grants – When:

Effective April 18, 2023, the USPTO Officially Transitions from issuing patent grants on paper to Issuing electronic patent grants (Federal Register).

Transition Period – USPTO will still provide free ceremonial copies

  • The USPTO will provide patentees a ceremonial paper copy of the issued patent during the transition period as a courtesy, free of charge.
  • The ceremonial paper copy resembles the paper patent that the USPTO traditionally provided to patent applicants as the issued patent.
  • The ceremonial paper copy will be bound with a cover sheet with both an embossed seal and the signature of the USPTO Director.
  • Length of Transition Period? TBD – Do not know.

$$ After Transition Period

  • The ceremonial paper copy will be available for purchase for a nominal fee after the transition period, in addition to the presentation copy and certified copy.
  • How much is the “nominal fee” for a “ceremonial” copy? TBD –  Do not know. Though a “presentation copy” is presently $25.

BE READY TO FILE CONTINUING APPLICATIONS!

Patent Prosecution Best-Practice Note:  File Continuing applications (CON/DIV) as early as possible. Applicants will not have as much time between receiving an Issue Notification and seeing the patent office issue the granted patent.

Warning from the USPTO:

“The USPTO will issue the patent shortly after the payment of the issue fee. As a result, applicants will have less time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue. Therefore, the best practice would be for applicants to file these submissions as early as possible. Preferably, continuing applications should be filed before the payment of the issue fee. See Manual of Patent Examining Procedure (9th ed. Rev. 10.2019) (MPEP) sec. 211.01(b)(I).” (Federal Register/Vol. 88, No. 39/Tuesday, February 28, 2023/Rules and Regulations; Page 12561)

Updated USPTO Form PTOL-85B (Issue Fee Transmittal) includes a reminder to file any continuing application prior to issue-fee payment so as not to jeopardize co-pendency. The newly modified form can be found here. The form no longer allows for advance orders of patent copies, because patents may be printed directly from Patent Center when issued. Advance orders for copies of patents issuing on or after April 18 will not be processed.

More information from other insightful publications:

Ready, Set, Go: Implications of USPTO’s Shift to Electronic Patent Grants (foxrothschild.com)

eGrants and Quick Issuances | Patently-O (patentlyo.com)

USPTO ushers in new era with introduction of electronic patent grants | USPTO

USPTO Transitions to eGrants from Paper Patents | JDSupra

USPTO To Transition To Electronically Granted Patents In April 2023 | Blogs | PharmaPatents | Foley & Lardner LLP

Supreme Court Sizes Up the Genus – Enablement

The Supreme Court of the United States (SCOTUS) is set to hear arguments on Monday, March 27, 2023 for Amgen v. Sanofi.

ACS’s Chemistry and the Law (CHAL) Division weighs in

The American Chemical Society’s Chemistry and the Law (CHAL) division filed an Amicus brief supporting Amgen’s petition and reversing the Federal Circuit’s decision. Indeed, the resolute CHAL even petitioned the court to get 5 minutes to participate in arguments.

Stay Tuned!

Amgen Inc. v. Sanofi – SCOTUSblog

Amgen’s X-Ray crystallography studies of antibodies 21B12 & 31H4 bound to PCSK9

Idenix v. Gilead: Split CAFC Panel at Least Agrees – Valid or Not, Either Way it’s Idenix Loss – Claims Too Broad

Idenix Pharmaceuticals LLC v. Gilead Sciences Inc. (Fed. Cir. 2019); 941 F.3d 1149 (2018 WL 922125) CAFC Panel: Chief Judge Prost and Circuit Judges Newman and Wallach
Opinion by Chief Judge Prost; dissenting opinion by Circuit Judge Newman

Idenix claims invalid / not enabled

Chemical structure of sofobuvir
sofosbuvir

Background: Idenix’s sued Gilead claiming Gilead’s sofosbuvir (Solvadi®) HCV treatment would infringe U.S. Patent No. 7,608,597, directed to methods for treating hepatitis C virus (HCV). Gilead argued that they should not be liable for infringement because the ‘597 patent was not valid since the patent’s specification did not enable the claims. At first, a jury at the district court level said that the claims of the ‘597 patent were enabled and therefore valid. However, the district court judge disagreed and granted Gilead’s Motion for a Judgment as of Matter of Law (JMOL), overruling the jury. When Idenix appealed, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s decision, agreeing that the ‘597 patent was invalid and therefore Gilead was not liable for infringement. In the end, the U.S. Supreme Court refused to hear the case [cert. denied, 141 S. Ct. 1234 (2021)].

CAFC Panel Split: In the Opinion, Chief Judge Prost and Circuit Judges Wallach agreed that Idenix’s ‘597 patent claims were not enabled. Circuit Judge Newman dissented, arguing that the ‘597 patent, although having overly broad claims, was still valid. However, while still valid, the claims should be interpreted narrowly, allowing Gilead to avoid liability anyway.

Common Ground: Let’s focus upon where all three judges agreed – Idenix should loose. While much attention has been given to how the panel was split as to whether the ‘597 patent was valid or not, we should remind ourselves that all three at least agreed that Gilead should not be liable for infringement. All three judges appeared to agree that Idenix’s claims were too broad. They diverged on how to get Gilead off the hook.

Loss either way:

(1) Majority – Rule that the claims are invalid by lack of enablement.

(2) Dissent – Rule that the claims are valid but not enforceable.

Forward to Amgen vs. Sanofi:

Circuit Judge Lourie’s Opinion in AMGEN INC. v. SANOFI, No. 20-1074 (Fed. Cir. 2021) referenced Idenix in concluding that Amgen’s claims were invalid as non-enabled.

The Supreme Court of the United States is set to hear arguments in Amgen on March 27, 2023. Stay tuned!