Patents in agricultural chemistry play different roles for generics and originators. Our Patent & Research department has experience in both areas, but they should be considered differently.
The classic direction, but an expensive and rare one is patenting of the originators. This do the companies that invested in the development of their product based on either 1) a new chemical compound that showed activity in a particular field, or 2) an old compound that was improved, or 3) a new method for the production of the compound itself, which provides monopoly on the market for the substance (ask us how and we will provide more details), or 4) a new composition, more effective and with enhanced or new properties.
However, most companies in this field are generics. Therefore, this part of agricultural chemistry is the most developed, but also more complex. Before launching a new generic, it is advisible to do an important FTO (freedom to operate) search. Even if you think the substance is very old and you have every right to import and sell it, this is often not completely the truth. The FTO search is a special search conducted according to the standards of the International Intellectual Property Organization WIPO that will give you the opportunity to make a final decision and calculate the risks of launching your product on the market. If FTO search is not conducted, then, at the best, you are highly likely to be stopped at the product registration stage, or, at the worst, the product could be confiscated at customs. Moreover, transit through countries should not violate the rights of TM and patent owners on the transitional territory.
In Intectica practice, there was a case when the product was transported from China through Germany, and the Germans arrested the batch because of the valid patent on their territory.
In this case, to receive the product back the owner needs to go through litigation, which is not a cheap and easy option.
Therefore, one of the key tools in entering the agrochemical market is the FTO search. Additionally, thanks to many years of experience, Intectica experts can advise different approaches to solving your specific case
An Office Action means that examiner analysed your application and believes it does not meet conditions of patentability and cannot be granted a patent. In this situation, the country’s Patent Office assumes that applicant (his representative), within the prescribed time limits, will submit to Office his response in defence of the application, which must contain arguments confirming invention patentability.
Specifics of preparing responses to such requests vary from country to country. It is necessary to consider features of application, aspects of Office Action, individual expert’s approach of considering the application. To some extent, the expert’s actions can and should be expected in advance, so that, even if Office Action is issued, a proper response can be prepared that will lead to a positive decision on this application.
Our specialists, having experience in granting patents all over world, also after negotiations with experts and Office Actions, are ready to help the client in submitting successful response to Office Action considering all factors listed above, while keeping maximum scope of rights for the client, without limitation of claims.
Intectica has considerable experience in working with both luxury cosmetics and mass-market cosmetics.
All cosmetics are usually based on certain active substances. Luxury cosmetics is usually developed around a certain theme, and all the products themselves are based on certain biological or chemical substances of one theme. For example, the basis of the product line may be a snail essence. Therefore, patents for cosmetics have their own features.
First of all, it is not advisable to apply for an individual patent for each cosmetic product, if it is distinguished from others only by auxiliary components. On the one hand, this is great, because the patenting cost is not very high, as in the pharmaceutical industry. On the other hand, the patent itself must be written by a maestro, and in one sentence – independent claim, which contains in the patent claims – he/she must cover and reflect all possible alternatives of the products, even those that do not yet exist, and fully convey the variety and minimality of all features. Such a sentence prevents emergence of the competitors, ensures the patent grant and a real monopoly, taking into account all the features of the laws of the country of interest, while remaining within the patent rules.
Second, to protect cosmetics, it is necessary to register both trademarks and patents for compositions (active mixtures) in as many countries as possible, which may not be of interest now, but are highly likely to become competitors in the future. Based on Intectica experience, the most active competing countries today are Italy, China, Poland and Switzerland
For many years, we have been working with different sectors of the chemical industry, in particular, with pharmaceutical chemistry, and all too often faced with a gap in understanding of patents in these industries.
This publication will consider why the fields need patents and what they might be.
The opportunities that the patents provide to generic manufacturers are following:
Details
After the exclusive patent for the chemical formula of the originator’s active substance (AS) has expired, the market belongs to those who own the patents for the method of AS production and compositions, namely, formulations of the drugs.
With such patents, the generic company is able to enter the market on equal terms with the originator.
According to the norms of the international law, the patent for the method of the substance/product production gives the owner the right to the product itself. Thus, the market is controlled not by one owner, but a group of the owners of the rights to the AS and/or drug.
Important!
Before developing a new method, a search needs to be conducted, and the methods that have been already covered by patents need to be identified, so as not to be sued by the owners of such patents. Since scientific and patent searches are fundamentally different, a new method can be developed from the scientific side, but not from the patent one.
– a list of the substances that cannot be used in a preparation with particular AS;
– a list of the methods that have been already covered by the patents (in order to develop a new method of the production);
– recommended formulation, indications, use of the drug.
– a patent for a chemical formula;
– a patent for a method of the production;
– the patents for the particular compositions.
To be the first on the newly opened market, the generics enter the patent field after the patent for the chemical formula (substance) has expired, or 5 years before the expiration.
The generics generally bear an innovative component including:
– a new composition of the drug (excipients or their quantity have been changed);
– a new method of the substance production;
– a new method of the drug production;
– a new dosage form.
Today, still novel options have emerged, for example:
– crystalline forms;
– pharmaceutically acceptable salts, hydrates, etc.;
– amorphous form.
It is this innovative component that allows the generics to enter the patent market and secure their monopoly on the methods and compositions.
OUR OPPORTUNITIES
We have been working with generic products for over 20 years on the former USSR countries and Bulgaria markets. Our own Research Department was created to work with the pharmaceutical and agricultural industries. We develop strategies for our clients to enter the markets, as well as approaches for conducting the patent searches and preparing patent applications, and prosecuting them in all countries of our clients’ interest. Since only the central office prepares responses to the office actions (requests) and makes amendments to the application materials, the safety of the materials and information is fully ensured. Our applications have received patents in the EU, USA and more than 30 countries around the world, not least due to support by Research groups from the USA, China, Canada, Iran and Ukraine.
Our highly qualified specialists will be happy to assist you in the implementation of your patent strategy and contribute to your prosperity on the world markets
