Category Archives: FYI

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”

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