How Novelty Search Lets You File Pharma Patents Intelligently
How Novelty Search Lets You File Pharma Patents Intelligently: Every now and then we hear about patents being filed in the pharmaceutical industry and the associated novelty search. But before we explore the importance of novelty search in filing pharma patents, let’s understand the concepts of patents and novelty search.
A patent is an exclusive right granted for an invention which may be a novel product/ process. To obtain a patent, information about the invention must be publicly disclosed in a patent application. A novelty search on the other hand is used to identify prior art including both patents and non-patent literature which might affect the patentability of an invention. It is advised to conduct this search before writing and filing the patent specification.
The Power of Novelty Search
Ideally, a novelty search should be the first step for inventors in the patent application process. Reason being that this search determines whether it’s worth moving forward with a patent application. It’s basically a checkpoint for filing patent application.
Since the patent process is extremely expensive, you don’t want to either spend frivolously or invest time preparing and filing an application, when there is a prior art that will most likely prevent the issuance of a patent. Similarly, high quality patent searches offer a fair idea about the possible scope of any patent claim that you might anticipate. If you anticipate an extremely narrow claim it might not be a good idea to invest in the patent application. You can then consider your invention in the pipeline for patent issuance.
Pharma Inventions and Novelty Search
In the pharma industry, the soaring cost of research, the gap between discovery and approval of new drug needs attention to ensure that research & development is carried in the right direction and is not just replica of someone else’s work. Effective novelty search before filing of the patent ensures a more relevant claim compared to the prior art.
Novelty search and Markush Structures
The Markush structure search – for a group of related chemical structures is challenging – that’s the only way to describe it. Current computational methods for performing this search invariably pull in more patent filings than you really need, owing to the vague claim language out there. Hence, you must dig through them manually at that point. However, there’s an easy way to sort through these bulk results. For instance, you know you would first want to find out if any of those patents are going after the same sort of target/ disease/ activity that you are. This is mainly because those are evidently the ones that you should be most worried about.
How Novelty search involving Markush structures helps you
When you start drafting a patent application for a compound portfolio and its therapeutic applications, various databases are available to check for prior art that challenge the novelty of your invention and for defining your patent claims. But how do you really nail down the novelty-destroying prior art quickly when checking over 1000 demonstrated compounds in your application draft? Further, how do you ensure that the Markush claim you are going to apply for doesn’t collide with existing compounds?
If these 1000 potential compounds have a common core structure, one might start with a substructure search on a relevant database such as STN, SciFinder etc. Further, a manual search of the patent art is also useful. Manual search may work if the compounds are similar. However, another possible challenge might be hypothetical compounds covered by Markush groups described in published patents. A search for Markush structures in the prior art should also be carried out on related databases. Furthermore, a review of Markush structures found during a manual search should be done to check if they cover the compound at issue.
How the search increases the chances of Patent Grants
Novelty search gives a fair idea if the concept/invention is unique and whether the claims can be drafted. It can also help determine the probability of a grant increase.
Novelty searches are great learning tools as they offer you an opportunity to discover which aspects of your invention will most likely contribute to patentability, thus allowing the description in any filed patent application to focus on aspects that are anticipated to contribute to patentability. Without a Novelty search you would be portraying all the aspects of your invention as if they are equally important.
Writing a patent application can be a much smoother process if you focus on the amount of details that you put in. This ultimately leads to a detailed written description of the invention. Given there are minimum hurdles, novelty search can and will generally lead to a strong first patent application. But why is the first application so important? The first application filed is critical because all aspects of your invention must be disclosed here. With a detailed search, the initial disclosure can be written precisely to cautiously define and expand upon what is most likely the patentable feature.
Novelty is the way to go
Novelty search helps in optimizing time, effort and expense for both individual inventors and organizations. Also, it is common knowledge in the IP industry that an idea that is not new cannot legally belong to you. In case someone else owns the rights to an idea, you are not entitled for the legal right until there is a novelty and an inventive step in the proposed solution or the invention. Hence, most importantly novelty search saves you from being embroiled in series of Office Actions and Oppositions and therefore saving the huge expenses involved.
-The Life Sciences and Editorial Team