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WIPO’s Patent services for external users

WIPO’s Patent services for external users. Lutz Mailänder Head, Patent Information Section Global IP Infrastructure Sector. Geneva 18 June 2013. Overview. Search reports for developing countries (WPIS)

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WIPO’s Patent services for external users

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  1. WIPO’s Patent services for external users Lutz Mailänder Head, Patent Information Section Global IP Infrastructure Sector Geneva 18 June 2013

  2. 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

  3. WIPO's patent landscape project • Dedicated website • Links to published reports • Links to groups/institutions active in the field • General background/information

  4. Sample of individual report website Three standard components: Report body (.PDF) Database (.xls) Interactive visualization (Intellixir)

  5. 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)

  6. 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

  7. 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

  8. 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

  9. 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

  10. Database of Ritonavir related patents Technology categories; sortable Publication number linked to Espacenet; sortable

  11. 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

  12. Orange book: US patents on Ritonavir

  13. 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))

  14. 2nd generation 1st liquid dosage no 3rd generation Key patent: Markush formula 2nd generation Combination Potentially liquid 3rd generation Liquid dosage 3d generation Potentially liquid 5th generation More specific liquid dosage 4th generation Liquid dosage 5th generation Capsule for lq. Dos.

  15. 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

  16. 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.

  17. 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

  18. Clinical names in AB,TI,CL + description Absence of red in neighborhood of yellow indicates potential noise

  19. Clinical names in AB,TI,CL,DEcleaned collection Additional DE are not shown as dots; TI/AB/CL are more evenly spread

  20. Atazanavir filing activity per dvlpm stage

  21. Commercial versus public sector filings

  22. Atazanavir – categories of technologies Created by automated clustering using natural language processing Individual documents may be placed in multiple categories

  23. Collaboration between Novartis and BMS

  24. Atazanavir – citation map

  25. Atazanavir – citation map

  26. Atazanavir – citation map

  27. 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

  28. Vaccines: total filings

  29. Vaccines: origin of PCT applications

  30. Vaccines:OFF

  31. Vaccines: China

  32. Vaccines: China top applicants

  33. Vaccines: top applicants

  34. Thank youlutz.mailander@wipo.int

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