| Chemical and pharmaceutical companies protect | | | | contain the language that applicant wants to use |
| their investment in research and development and | | | | for amending the application. To avoid such an |
| the future of the companies by securing patents | | | | unfavorable result, the patent application must |
| on their inventions. Success or failure of the | | | | have been prepared in such a way that the |
| company often depends on the strength of the | | | | Examiner cannot refuse the amendment. |
| patent or in its ability to resist competition. | | | | To illustrate this, consider the following situation |
| Recently, the United States Patent and | | | | where the applicant describes his invention which |
| Trademark Office proposed changes to the way | | | | is a drug formulation containing a drug in an |
| patents will be processed with a view to reduce | | | | amount from 1 to 50%. The Examiner rejects |
| patent Examiner's work load. These changes could | | | | the application since a formulation containing 7% |
| drastically limit the company's ability to secure | | | | drug is known. If the patent application had |
| strong patents. Under the current practice, if the | | | | disclosed only 1 to 50% drug, the inventor cannot |
| company is not happy with the Examiner's refusal | | | | amend the application to say 8 to 50% to avoid |
| to grant a patent, the company can file one, two, | | | | the known formulation. On the other hand, if a |
| or more continuation patent applications so that | | | | cascade of fall back positions had been built into |
| additional exchanges can take place between the | | | | the application at the time of patent filing, such as |
| applicant and the Examiner. | | | | 5 to 30%, 10 to 20%, and 12 to 15%, then he |
| If the proposed rule changes are made | | | | can amend the application by defining 10 to 30% |
| permanent, and it is widely expected they will be, | | | | or 10 to 20% drug so as to cover his invention |
| the patent applicant will have opportunity to file | | | | which may contain 11% drug. In the absence of a |
| only one continuation application, which means only | | | | fall back position, the applicant will have to forego |
| a limited number of exchanges are possible. If | | | | the entire patent. |
| such exchanges do not result in patent grant, the | | | | A patent application is a serious legal document |
| applicant may have to narrow the scope of | | | | and should be prepared with great care. This |
| invention by further distancing the invention from | | | | requires knowledge of the industry, for example, |
| a known drug formulation; or in some cases, lose | | | | what has been done before and what the |
| its patent entirely. | | | | competition might try to get around the patent. In |
| When the patent applicant tries to amend or | | | | the wake of the proposed rules, the importance |
| narrow the application, he may face several legal | | | | of writing a good patent application cannot be |
| hurdles. For example, the Examiner may refuse | | | | overemphasized. |
| saying that the originally filed application does not | | | | |