WIPO’s Patent services for external users

Lutz Mailänder

Head, Patent Information Section

Global IP Infrastructure SectorGeneva18 June 2013

Overview

Search reports for developing countries (WPIS)

Search and examination reports for patent offices in developing countries (complementing the PCT; ICE)

Capacity building for examiners in using examination results for members of the patent family

Patent landscapes

Platform for national patent registers

Background information

Links

„I have a PCT application – how can I find out what the status is in country X ?“

Open Innovation platforms: WIPO Green, WIPO Re:Search

WIPO's patent landscape project

Dedicated website

Links to published reports

Links to groups/institutions active in the field

General background/information

Sample of individual report website

Three standard components:

Report body (.PDF)

Database (.xls)

Interactive visualization (Intellixir)

Phase 1 work and collaborations

UNITAID/Medicines Patent Pool (MPP):

Ritonavir (Landon IP)

Atazanavir (Thomson)

WHO: Vaccine manufacturing (FIST)

DNDI: Patents related to 5 neglected diseases

FAO:

Adaptation technologies for improving plant salinity tolerance (PIIPA)

IRENA, GIWEH:

Desalination technologies, and use of renewable energies for desalination (CambridgeIP)

Water purification (CambridgeIP)

(no partner):

Solar cooling (IP Search); Solar cooking (Scope)

Collaborations

Collaboration partners contribute expertise in technical field

WIPO contributes expertise in coordination PLRs and funding

Each collaboration serves as vehicle for partners to familiarize themselves with patent information, analytics, patent system

Collaboration in drafting TOR, delivery phase, evaluation of PLR

WIPO Patent Landscape project

Evaluation after Phase I

Phase II (2012-13)

Budget for 6 further PLRs

Capacity building

Manual for best practices

Regional Workshop for exchange of best practices

Refining standardized tools/procedures of Phase I and developing into future standard service

Ritonavir patent landscape report

Objectives of report:

Identify all patents claiming an invention related to the active ingredient (synthesis, combinations, applications,..)

Analysis of patenting activity

Identify sample innovation tracks, subsequent generations of patents claiming subsequent improvements, new inventions (“evergreening”)

Detailed description of search methodology for pharmaceuticals; suitable as training example

Ritonavir patent landscape report

823 patent families claiming Ritonavir related inventions according to claim language

Many more potentially relevant IP rights in comparison to Orange book of US FDA

To be taken into account in case of technology transfer, local production, procurement through generics: licensing key patent is not enough

Average 13.4 patents per INPADOC family

Largest patenting activity in combination therapies (400 families)

4 sample innovation tracks (liquid and solid dosage forms, synthesis, structural aspects and polymorphs)

1 additional innovation track

Backward citation analysis only revealed patents claiming analogs

Interactive Visualization

Database of Ritonavir related patents

Publication number linked to Espacenet; sortable

Technology categories; sortable

Innovation tracks

Sometimes key inventions take place,

e.g. pharmaceutical substances

Trigger series of further developments

e.g. combinations/formulations, synthesis,....

Starting point of subsequent generations of related patents protecting the further innovation

Such later patents perpetuate protection beyond the 20 years after the filing of the initial patent

I.e. certain technologies using the initial invention may still be protected though protection of first invention may have expired

Orange book: US patents on Ritonavir

Indentification of innovation tracks

Categorizing of patents during retrieval stage

Indentifying most active assignees in particular category

Reviewing documents citing the key patent

Citation map analysis to identify "citation tracks" by exploring backward and forward citations

Claim (granted) analysis to identify

overlap of claim, e.g. confirm similar scope of protection

New aspects of later generation (additional file inspection (via US PAIR))

Key patent:

Markush formula

2nd generation

1st liquid dosage

no 3rd generation

2nd generation

Combination

Potentially liquid3rd generation

Liquid dosage3d generation

Potentially liquid

4th generation

Liquid dosage

5th generation

Capsule for lq. Dos.

5th generation

More specific liquid dosage

Innovation tracks explored

Innovation tracks were selected with a view to relevance for generic production in DCs

In initial report:

Liquid oral dosage forms

Synthesis of Ritonavir and key intermediates

Structural considerations and polymorphs

Solid dosage forms

Following later request from DNDI:

Prodrugs of Ritonavir

Search methodology

Report includes extensive description of name search strategies

Names of pharmaceuticals change over phases of drug development

E.g. "Atazanavir", the non proprietary generic name, was assigned at later clinical stage by WHO in 2001 (priority year of founder patent 1995)

Various pre-clinical names

Various chemical naming conventions

CAS registry code CAS-198904313-31-3

Alternatively to Orange Book, founder family can be found by searching for SPCs in INPADOC using Atazanavir since SPC are granted at later stage when generic name is known

3rd alternative to identify founder patent is backward citation analyis.

Naming history

Clinical names (usually language independent):

Manufacturer name:

CGP-73547, CGP-73355, CGP-75136, BM-75136

Generic name (USAN naming protocol), International Nonproprietary Name (INN):

Atazanavir

Also used for bioequivalents

Brand name (product):

Rayataz

Clinical names in AB,TI,CL + descriptionAbsence of red in neighborhood of yellow indicates potential noise

Clinical names in AB,TI,CL,DEcleaned collection

Additional DE are not shown as dots;

TI/AB/CL are more evenly spread

Atazanavir filing activity per dvlpm stage

Commercial versus public sector filings

Atazanavir – categories of technologies

Individual documents may be placed in multiple categories

Created by automated clustering using natural language processing

Collaboration between Novartis and BMS

Atazanavir – citation map

Atazanavir – citation map

Atazanavir – citation map

PLR on vaccines

Two parts of PLR

Part 1: Vaccine related patents in general

Part 2: Vaccines for selected diseases (Pneumonia)

Special focus on Brazil, India, China

Vaccines: total filings

Vaccines: origin of PCT applications

Vaccines:OFF

Vaccines: China

Vaccines: China top applicants

Vaccines: top applicants

Thank you

lutz.mailander@wipo.int