HUBER & SCHÜSSLER
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Composition of Matter

In most countries patents can protect new forms of the composition of matter, such as compounds, chemical substances or the novel combination of chemical substances, e.g by the addition of additives. 

The patent will only be granted if the composition is novel and inventive. If the composition has already been described in the prior art, then it may still be possible to obtain a patent on the use of the composition for a new and novel purpose. In the European Patent Office in order to anticipate a patent on the composition of matter, the teachings in the prior art must have been sufficiently clear that a skilled person could have identified the claimed composition.

Disclosure of the Invention

Both the European Patent Office and the US Patent Offices insist that the description of the invention include detailed steps of the manufacture of the composition and also information about the use or utility of the new composition. The description should include details of the chemical compositon of the new composition and, if known, its structural formula. The description should also include experimental parameters as far as these are known and are necessary for the identification of the composition.

European Patent Law also allows the definition of a new composition by means of the process from which the product is made (a so-called "product-by-process" claim) if it is not possible to disclose the invention in any other manner. 

Scope of Protection

The scope of protection granted by a patent on the composition of matter covers all possible applications of the patented composition. These include not only the uses which are disclosed in the patent description but also all other uses to which the composition may be put. For example, a first inventor (and patent owner) may be the first to identify a pharmaceutical compound which is used for treating a particular illness or disease (termed the "first medical indication"). A second inventor may find out that the same compound can be used to treat another disease (a "second medical indication"). The first inventor can, however, stop the use of the compound for the treatment of the other disease. This restriction applies even if the second inventor obtains a patent on the use of the compound to treat the other disease or obtains a patent on the use of a compound to manufacture a pharmaceutical compound for the treatment of the other disease. 

If the second inventor obtains a patent on the use of the compound to treat the other disease, then the first inventor will not be able to sell his or her product specifically for the treatment of the other disease.

There is currently some debate, particularly in the biotechnology field, about whether it is fair to reward an inventor of a new composition of matter with protection for all possible uses of the invention. See the following links for more information about the scope of protection of patents on the composition of matter:

Biotechnology Inventions
Nanotechnology Inventions
 

 

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