Chemistry patents - Let them react!
Webinar recap
This is a summary of the NLO webinar: ‘Chemistry patents - Let them react!’. In this webinar, NLO attorneys looked at some key issues that arise when drafting chemistry patent applications, discussed relevant case law and suggested best practices on topics such as explicit basis, the definition of concentrations, parameters and protocols, and the use of trademarks in claims.
Avoid the use of trademarks if possible
- If a trademark needs to be used, try to describe the product underlying the trademark as much as possible.
- If the composition of such a product is not known, try to elucidate it before filing a patent application.
- Always include the registered trademark symbol.
Specify concentrations
- Always specify the nature of percentages (e.g. wt.%, vol%, mol%).
- When employing ratios of A:B, always specify the nature of the ratio (e.g. w/w, vol/vol).
- Always specify based on what the % or ratio should be calculated.
- Make sure there are at least some fallbacks in which the upper limits sum up to 100% or explicitly mention that the combined amount cannot exceed 100%.
Use comprising and consisting
- Use open language (“comprising”) to add reasonable scope around the core of the invention.
- Use closed language (“is”, “consisting”) to limit.
- Do not let open language obfuscate the definition of parameters, especially concentrations.
- Avoid long or nested chains of open language.
Define parameters
- Always specify the nature of any distribution characteristics used (e.g. number-averaged).
- Make sure to include a description of the preferred technique at least in the description.
- Always ensure you know what is in the industry standards you reference – refer to the year and methodology used (if multiple options are in the standard).
Add explicit basis for combinations
- Describe the most important combinations explicitly, at least in the description. This goes for ingredients, concentrations, process parameters, etc.
- Do not try to hide the invention by not disclosing it explicitly or burying it.
- Extremely long lists of common ingredients may not be useful. “If everything is disclosed, nothing is.”
- Is it basis to be added in the current application or subject-matter for a another application?
Think about claim categories
- Product claims provide the broadest scope and are the easiest ones to enforce.
- Method claims (uses, preparations, etc.) or alternative product claims (kits, compositions, etc.) may provide valuable fall-backs. In practice, they could hamper competitors when absolute product protection is hard to obtain.
- Different claim types could also inspire divisionals.
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