MOZ: Discovery of a new mechanism of adisease process or mechanism by which a therapeutic works are not sufficient toprovide patentability. In order for an invention to be patentable, the use of atherapeutic (or class of therapeutics) in the context of a specific indicationmust be new and inventive. In the present case, the question is thereforewhether there is any prior disclosure (even if speculative) of the effect ofPPS on osteoarthritis.
I assume BellPotter and the other instos in the CR did a thorough DD and know the latestabout the rejected patent that was the subject of PAR’s sparring with their nemesis,Morgan’s, but I can’t find any update. In the early days, this patent wasdescribed as very important protection from competition, but PR’s rebuttal toMorgans indicated that all 34 rejected claims would be challenged, and, in anyevent, he said the patent was no longer material. I believe PR indicated thatthe examiner had 3 months to reply and from memory that would have been June orJuly. The rejected patent as well as the 3 granted patents all relate to BME,not osteoarthritis. If we are to invest in the CR, it is only fair that we haveall of the info the instos have.It seems to me this is important IP deserving of an update now. If this is no longer an issue with the instos, we should be given the same info they have. Below are extracts of Morgans position and PAR’s rebuttal. Can anyone enlighten me on what has happened?
By Ian Wilkie,Morgan’s Analyst
Core OA patentrejected in the US
PAR’s major patentapplication titled “Treatment of Bone Marrow Pathologies with PolysulfatedPolysaccharides” (US application number 16/636,545) has received its finalrejection by the USTPO late last week (4 March 2022).
The patentapplication covered the major aspects for treatment of underlying pathologiesand treatment of knee osteoarthritis including functional improvements usinginjectable PPS. The letter claims the submission lacked the definitivedescription requirements but also states the claims describe functionalimprovements in knee function which is a latent property of previouslypublished literature. PAR’s claims of gaps in prior literature regarding thelink between pain and knee function were dismissed under “obviousness” and thatit would be reasonably recognised that one condition to another (i.e. bonemarrow lesions / osteoarthritis) is causally linked, and methods of treatmentfail to show an inventive step.
PAR’s Rebutal – ASX 9thMarch 2022
The recent research note by Morganscontains an error and a flawed assumption about apendingpatentapplication from the USPatentandTrademarkOffice(USPTO) regarding the rejection of the patent application “Treatment of Bone Marrow Pathologies withPolysulfatedPolysaccharides”(USapplicationnumber16/636,545).Thenote incorrectly assumesa"finalrejection" is finalandfailstoreflecttheaccuratepatent process which allows for continued interaction with the USPTO over the coming months.
The Morgan’s report states thatUS application number 16/636,545 is Paradigm’s core patent. This is incorrect.Paradigm’s core patents are three granted patents as per the table below. Thethree foundational patents are ALL GRANTED.As we have previously discussed, athird party seeking to treat osteoarthritis in the presence of BME willinfringe these patents. This is not dependant on this patent application16/636,545 being granted. ”Paradigm’s BME Patents PAT.NO.Title110,610,542Treatment of bone marrow edema (oedema) with polysulfatedpolysaccharides29,861,657Treatment of bone marrow edema (oedema) withpolysulfated polysaccharides39,101,650Treatment of bone marrow edema (oedema)with polysulfated polysaccharides
This dispute begs 3 questionsIMO. Does treatment of OA with PPS infringe any BME patent? And if it does, isit realistically enforceable? And finally, will PAR be successful in gettingthe examiner to reverse the 34 rejected claims?
Could be several years before wefind out.
DYOR
(20min delay)