Article from Krishna Kumar Chavali
Novelty killing publications!!!
Prior art is one of the most important aspect for patents. Any thing
which is disclosed prior to our patent application becomes a prior art
though it is not claimed in the prior patent applications1. Sometimes it
happens that our idea of interest may come under the scope of a prior
patent publication in a very broad sense though the prior art application
doesn’t belong to our area of work.
Particularly in pharmaceutical sector, we frequently come across
many prior art publications which are not relevant to our area of interest
but the general formula disclosed in the application generically covers
our molecule of interest. Added to this sometimes the molecules
mentioned in the prior art does not even belong to our area of
therapeutic segment.
Just to mention as example, sometimes we come across some
patent publications where the general formula disclosed may be as
follows:
X
A
A-B-C-Z
N
A
z
or
or
B
z
Y
The variables A, B, C & Z given above will be defined in the patent
applications selecting from the whole bunch of functional groups
including atoms and groups such as hydrogen, cyano, halo, alkyl, alkenyl,
alkoxy, cycloalkyl, heterocyclyl, heteroaryl, aryl, arylalkyl etc.,. Again
these groups mentioned above may in turn be optionally substituted
wherein the substitutions are mentioned in the description of the patent
application. Surprisingly if we look into the examples disclosed in the
1
In this article, only prior patents or patent publications are considered as prior art. In realtiy any thing which
is disclosed prior to our application becomes a prior art. The prior art can be a patent, patent publication,
journal review article, etc. or anything known to the public before.
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Article from Krishna Kumar Chavali
application, we find hardly one or two heteroaryls or heterocycles or
cycloalkyls be disclosed.
Particularly PCT patent publications have become novelty killing
applications for many of the molecules. These applications get published
as they are filed without any restrictions. Though the molecule of our
interest is not particularly covered or claimed in the prior art publication,
it comes within the scope in a more generic way with respect to the
general formula, description and definitions given in the prior art
application. Secondly, it is quite surprising that we don’t find any
similarity to the molecule of our interest when we compare the examples
disclosed in the publication. This is really painful for the inventors.
Again with respect to pharmaceutical patent applications, normally
most of the definitions of the terms are copied from the earlier
publications and a bunch of substitutents will be added to the groups.
Some applications even include substitutions on substitutions. This
makes the applications very broad. To my surprise I came across many of
such applications which are of about 300 to 500 pages volume. If I am
not wrong, by different permutations and combinations of the disclosed
information, we can make thousands of molecules which may be difficult
to make. This looks to be meaningless. I feel that the PCT publications be
published after the ISR is published and if possible there needs to a
barrier by which we can restrict the scope of the PCT applications
confining them to the examples disclosed. The application may be broad
to some extent but should be restricted to the extent it can be reduced to
practice rather than covering many of the things which may or may not
come under the scope of the invention.
Another important point which we may consider is that the in case
if we apply for a PCT application knowing that the molecule of our
interest is generically and very broadly covered in one of the prior art
applications/patents, the ISR report may or may not mention the prior art
applications we come across in our search and analysis. This may be
because the search strategy may be different. But this kind of novelty
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Article from Krishna Kumar Chavali
killing applications may cause a problem at the time of out-licensing the
molecule.
Conclusion:

As a patent lexicographer, I personally feel that there needs to be a
restriction to be imposed on all the applications particularly PCT
applications that the information included in the application should
be narrow and confine to the invention. It is also good if a rule is
imposed
that
an
example
needs
to
be
added
for
the
groups/definitions included in the applications and they should be
relevant to the area of invention.

Also it would be interesting if the search strategy used by both the
inventors as well as the ISR authorities is included in the ISR as this
can bring some kind of clarity to the applicants about the novelty
of their molecules. It is equally good if the same strategy is
imposed to all the countries.

This way I think we can save the novel inventions and at same time
save money by restricting the applications to less number of pages.
Abstract:
Now a days, we come across many publications which are novelty killing
for many of our ideas. Particularly in pharmaceutical sector, Though the
molecule of our interest is not directly covered in the prior art, rather it
comes within the scope of the prior art when we consider the definitions
and substitutions mentioned in the description. This is really a concern
for the inventors. This article is about the facts of such applications and
suggests some solution for the same.
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