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Patents and IP

Patents and Prophecy

Like many industrial scientists, I’ve been dealing with the patent literature for so long that I’m used to its (many) idiosyncrasies. There are large sections of any patent that I just page through as rapidly as possible because they are utterly not worth reading. The parts where the various dosage forms and potential dosing combinations are recited, for example, is the densest boilerplate – you wonder when the last time was that this stuff wasn’t just copy-and-pasted from another application before being lightly edited to fit the current one. The figures are most certainly worth study, the claims, of course, to see what’s actually being claimed, and then I work my way back on any specific parts of those to see how well those claims are actually exemplified. That’s especially important in dealing with a patent application, and most of the time I’m looking at applications (since I’m keeping up with the latest news available from 18 months ago). You can put all kinds of stuff into your application; what comes out the other end as a granted patent is often another matter entirely (or should be!)

This article in Science points out something important to keep in mind while you’re doing that, though. It’s about “prophetic examples”, which are especially common in US applications and patents (and in filings in other jurisdictions that originated with a US application’s text). It’s the author’s impression, and mine as well, that many people don’t catch on to these. A prophetic example is an experiment that has not been carried out yet. It’ll probably do what it says (that’s why it’s in there, to show that the inventors have anticipated that this might be another use of the invention), but it hasn’t been actually accomplished yet. That goes for procedures, actual chemical compounds, whatever.

How do you know that you’re reading a prophetic example and not a real experiment with real data? The first key is the verb tense. Things that have actually been done are in the past tense. This was added, this was isolated. If it’s in the present tense (“is added”) or future tense (“will be added”), you are not reading about something specific that has actually been performed yet. Now, you’ll see those tenses used (along with the conditional) when describing various aspects of the invention or general procedures (“Compounds of the present invention may be prepared by condensation of an appropriate aldehyde XVI. . .“), but when you see them applied to something specific, it’s prophetic. Even if it’s an apparent procedure with amounts of reagents, etc.

The second tip-off is the lack of real data. For chemical compounds, that should be pretty obvious: there’s no such thing as a prophetic NMR or melting point. What you will see, though, are compound tables full of structures (sometimes page after page of them), but the numbers attached to the compounds are only things you can calculate, like molecular weight or cLogP. If there are no “hard” numbers associated with such compounds anywhere in the patent (but only stuff like that) you’re dealing with a bunch of “Yeah, we thought of these too” prophetic examples, not things that have actually been made. If they had had actual physical data, they’d have put the numbers in there to make the application stronger.

Could you have a successful patent application with only prophetic examples? Interestingly, the answer is yes (see 2164.02 of the Manual of Patent Examining Procedure). But it had better be good. A 1987 court decision stated that “The mere fact that something has not previously been done clearly is not, in itself, a sufficient basis for rejecting all applications purporting to disclose how to do it“, and if the application discloses things well enough that (patent language) someone “skilled in the art” would be able to carry out the invention without “undue experimentation”, then fine. But if you’re claiming chemical matter (as in a drug patent), you’d be well advised to have actually made some compounds before filing that application.

A problem with this system, as the article notes, is that there are people who don’t understand it and who have cited such prophetic examples as if they were real results. I like the proposed solution: keep prophetic examples, sure, but label them forthrightly as “Predicted Results” or “Hypothetical Compounds”. The USPTO already requires that such things be labeled by avoiding the past tense, so this would just be a clearer label and not some totally new requirement. The only benefit (let’s put that in quotes) that I can see of the present labeling system is that it causes confusion about what’s real and what’s hypothetical, which can occasionally be of advantage to those filing the patents. That, we can lose.

13 comments on “Patents and Prophecy”

  1. Isidore says:

    How come it’s not an issue when boilerplate stuff is copied and pasted from other patent applications, but if you do the same in a paper (e.g. when describing the procedure for a synthesis step or for lysing cells to IP a protein), by copying the text from your own previous paper, all hell breaks loose.

    1. Some idiot says:

      That one, at least, is fairly straightforward. Most patent attorneys I know have their own favourite lists of/descriptions of (eg) excipients, alkyl groups, aromatic and heteroaromatic groups, and similar standard texts for standard operations. If they have found them to be successful in the past, then they are more likely to just boilerplate them in instead of writing something new and possibly making a mistake.

      And anyway, there is no copyright as such on patent applications, as there is on journal articles…

      1. Isidore says:

        Many scientists also have their favorite language for describing methods and procedures routinely followed in their labs. And the issue of reusing such text in an article is usually not one of copyright violation but of plagiarism, even if it is one’s own words that one is plagiarizing. In any case, the copyright issue could be addressed by asking permission from the journal to use the text, the same way one would go about using a published figure in a review article. I guess plagiarism is not a concern in the legal profession.

        1. x says:

          There is a difference in both intent and effect between copying someone else’s writing in a way that makes it appear that you were the first to have an idea, or an expert in the subject (when you are not), or the one who did the work to perform experiments or analyze data, and copying someone else’s writing because they phrased something accurately and succinctly and reinventing that wheel would be a pointless waste of time. The difference can be subtle, and it is definitely contextual, but it is also definitely there.

          Not being able to perceive that difference even when the context makes it blatantly obvious puts you at risk of looking like an officious nincompoop rather than a principled defender of professional ethics.

          1. loupgarous says:

            Unfortunately, Isidore’s right and professional journals have actually accused authors of “auto-plagiarism” for re-using text and or graphics from prior articles they, themselves, have written.

            This isn’t the “reprint” issue, I can actually see the logic in a publication not wishing to have graphics, text layout and fonts they own rights to reused without their permission or a reprint fee negotiated as a condition of article publication. Having been Editor of my college chapter of the Society for Technical Communications, I can vouch for how hard it was in the 1980 (even with “word processors” creating camera-ready copy without a compositing typewriter) to lay a magazine or journal out for publication.

            No, I’m talking about accusing anyone of plagiarizing their own work. Never mind that in college we were taught it’s only in rare cases that you don’t have an irrevocable copyright to your own work. Apparently scientific publication is one of those cases, because I’ve been corrected forcefully several times on that score.

            I suppose the issue is not just that of the journal owning copyright to not just the text and graphics in the article, but that there are few articles in the scientific press with merely one author. Co-authorship means every author listed for a report on scientific work, by appearing as an author, affirms that he shares responsibility with the other authors for all statements made in the paper.
            But let’s say three researchers worked together on (x), successfully publish on (x), then wish to publish a paper on new aspects of their work on (x), the same three and no more, and no fewer than that same three. They can’t boilerplate their own collective prose from the old paper for the new paper, either. That’s counter-intuitive to me.

            It’s why Fleischmann and Pons were shackled together in scientific purgatory after publishing their cold fusion paper, despite many people thinking they weren’t equally responsible for the dog’s breakfast that occurred when their results couldn’t be widely reproduced and readers reviewed the paper for the deficiencies which made that paper an exemplar of bad science.

            Forcing scientific authors to significantly restate (not just paraphrase) what they’ve said about their previous work is for each new paper on the same general topic (but on new research dealing with the subject of an old paper) makes the authors revisit their reasoning and assumptions, and may help them uncover new truths.

          2. Isidore says:

            I was referring specifically to the accusations leveled by journal editors at authors for “self-plagiarizing” because they reused boilerplate language from one of their previous publications to describe details of an experimental setup or the way an instrument was used to generate data. There is a limited number of ways one can describe an immunoprecipitation or culturing specific cells or acquiring LC-MS data without having to reuse stock phrases and standard terms. Evidently, self-plagiarizing is not an issue in the legal profession.

  2. Mad Chemist says:

    I never take prophetic stuff in patents that seriously. The list of reactions I have run that “should” work, but never actually do work is quite long. Even reaction that have been run should be taken with a grain of salt most times.

  3. steve says:

    To be considered a valid patent it must be enabling. You could draw a perpetual motion machine but that won’t give you a patent; you need to show that one can be made and describe it in sufficient detail that others can do it as well. Similarly, just drawing a structure doesn’t give you a patent position, you must describe it’s synthesis in sufficient detail that others can make it.

  4. Anonymous says:

    You’re cracking me up! I was at a company that had made the (easy) ortho-X and para-X compounds and the modelers told us that we need to make the meta-X because they were predicting good things for it. All the chemists agreed that it would not be easy given our starting materials, routes, and experience. I proposed some lit based de novo routes that would still be risky and said “6 months and it might not work anyway.” I continued to follow the lit and patent lit because the modelers and biologists wanted the meta. Some time later, I found a published patent app on our exact same compound! With a detailed experimental and a very good yield! … The inventors turned out to be our boss and one co-worker only. The entire patent, with lots of Rs and Zs, was prophetic.

    The patent incorporated a lot of core chemistry that was invented by me and other co-workers. When they saw the patent, there were a lot of miffed colleagues who had been left off and had been previously told that their work would not be patented.

    Many years ago, wasn’t there a blog In The Pipeline about a Merck combichem (issued) patent that had enough Rs, Xs, Zs, and Qs to outnumber the number of hydrogen atoms in the universe? Or maybe it was in C&EN?

    Also: I thought that if a compound was not actually prepared (lab notebook or other evidence) that someone else can still patent and claim that compound if they do succeed in making it (even though the publication of the prophetic patent would appear to render the structure obvious and non-patentable). Composition of matter vs utility?

    Lastly: I’m an organicker, so I cut some slack for salts, many of which are obvious but you just might not be able to make and test all of them. If someone takes my neat molecule and makes the carboranyl or other weird salt and gets similar activity, I’d like to get SOME credit. (Although, the recent In The Pipeline on “Catalyst Sues the FDA” (June 13, 2019) concerns diaminopyridine DAP and diaminopyridine phosphate DAPP.)

    1. Barry says:

      If people who had made substantial contributions to the work claimed are not named as authors on the patent, the USPTO would violate the law to issue the patent and it won’t be defensible if it is litigated

  5. Lambchops says:

    I remember well the sigh that would emanate when searching the literature (using your favourite database) for precedent of a tricky transformation and unexpectedly getting some hits . . . only for these to be all from one or two sources and tagged with the descriptor “prophetic in patents.”

    Pretty much a by-word for “might as well not bother” even though sometimes we did bother just to show that we’d tried. Can’t say I miss wasting my time on such long shots!

  6. MoBio says:

    Frequently in patent dispute cases (e.g. when a generic is trying to invalidate a patent) they will cite this sort of stuff as predicting the obvious (when untold trillions of compounds may have been ‘predicted’). As you might guess this doesn’t gain much traction in court.

  7. Anonymous says:

    Isn’t there some defensive value in prophetic examples, i.e. if you’ve named a compound it is exemplified as if it had been made. This could potentially prevent a competitor from obtaining a selection patent, which could be granted for a compound that is only within the generic but not specifically exemplified.

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