This is an update to a post in 2015 about finding patents of interest. Attached is a “How to find patents” in pdf format from my course at Johns Hopkins on “Legal Aspects of Biotechnology”. Just click to download. It walks through the basic search strategies for finding patents and visualizing their global patent families using a great, free patent repository “lens.org”. This site is also a great source for keyword searchable text.
With appreciation to the masters degree program in biotechnology at JHU for providing a forum for online teaching — these topics are among the “core” competencies for managing innovation strategically and effectively! This semester (Spring 2017), my course in “legal aspects” focuses on managing legal (and business) risk in both for-profit and not-for-profit biotechnology enterprises. I’ve been using VoiceThread as a presentation/sharing tool on the Blackboard platform this year, and it’s been popular with students after getting past the interface training. Despite my initial misgivings, this is not just for high school students. It’s truly an effective way for grad students to develop a sense of community because commenting in context on presentations by voice or text is so easy to do and to review!
Often it’s very useful to be able to search and find key words through the text of a patent. I do this to find examples of particular intended uses or formulations, for instance to see if a stem cell patent contemplates cellular therapy or if a chemical formulation might be administered via an implantable device. It’s also a quick way to find the places where dosages are discussed. These findings help determine the potential scope of a patent or sometimes even whether or not it’s likely to be valid or enforceable. These can be important dimensions of a competitive assessment.
However, the pdf versions of the patents and patent applications that you’ll typically find in the databases generated by the US Patent and Trademark Office (US PTO) or the other major world patent offices like, for instance the European Patent Office (EPO), are pdfs of images rather than of text based documents.
While I like to use a pdf to highlight and to read more quickly than a text document, when I find a patent that I need to save for my analysis, I generally also download a text version. For instance, in today’s other post about finding patents for a competitive landscape study, I discussed U.S. Patent No. 7, 736,205, the full text of which is here on lens.org. My usual modus operandi is to cut and paste it into a MS Word document or a text editor, my favorite of the latter being nvALT (by Brett Terpstra) on the Apple platform. If I forget the text download, it’s also usually good enough to OCR the pdf to create a text layer. Typically, I’ll use PDFPenPro for this, again on the Mac ecosystem.
Let’s say you’ve heard about a product or a patent infringement lawsuit and want to know about the relevant patents. Or you’re developing a similar product in an academic research department and want to scope out the competition or potential funders. Here are a couple of efficient ways to go about that.
And this is something that I do several times a week for clients who need to about the competition years before they anticipate their own product approval or who want an independent opinion about their own current patent position. With the right search tools, these kinds of projects are manageable, useful and often fascinating. Moreover, there are some great, no-cost approaches to getting the lay of the competitive landscape!
Here’s one that’s really simple but has limitations, so I often use it first to hit the target — Google Patent Search — and then switch to another tool.
Somewhat arbitrarily, I’ll start with the first new molecular entity (NME) approved by FDA in 2015, a drug called Savaysa that reduces the risk of stroke in patients with atrial fibrillation. That’s its “brand” name as marketed by Daiichi Sankyo, Inc., and the active ingredient’s name is “edoxaban” (or more precisely, edoxaban tosylate monohydrate). I looked for this on the FDA’s list of “New Molecular Entity and New Therapeutic Biological Product Approvals for 2015”.
No hits on Google Patent Search, however, with the name “Savaysa.” We would have better luck searching the product name, finding 322 hits. There’s also a tongue twister of a chemical name that you can find with a link from the product’s website under the tab called “Prescribing Information,” N-(5-Chloropyridin-2-yl)-N’-[(1S,2R,4S)-4- (N,N-dimethylcarbamoyl)-2-(5-methyl-4,5,6,7-tetrahydro[1,3]thiazolo[5,4-c] pyridine-2-carboxamido)cyclohexyl] oxamide mono (4-methylbenzene- sulfonate) monohydrate. And even though Google didn’t search this full name, because it was longer in length than the permitted search query of 32 characters, we still got another 51 hits.
So which of these records is important and how to begin finding them? Either with a double shot of something caffeinated or with a cheat! Sticking to one place where I can add value to your search, look at this FDA webpage — called the “Orange Book,” so named when there was a physical report with an orange cover — and then search by the product name or its active ingredient. Once you find the product, you’ll also see a list of the three approved formulations. Click on the FDA application number for any of the them, which takes you to a page that for each of the formulations has a list with the last entry being “Patent and Exclusivity Info for this product: View”.