Anthony Almada05.01.09
Weighty Disclosure
What if there was a clone of this world of nutraceuticals, an identical twin of the nutraceuticals industry, that existed in a different time/space dimension, where practices, choices and decisions could be played out differently than they are on this planet? What could a nutraceuticals business exec learn and extract, to infuse their brand with a proprietary, competitive edge?
By Anthony Almada
Inset: The integrity of an issued patent is at risk if disclosure of any claimed aspects of the invention transpires before the patent application is filed.
Setting: Evening Multiverse News broadcast, IP Scan, Digital frequency 55.15.12, 12 May 2009.
Alina Ip: “Good evening ladies and gentlemen, I’m your host Alina Ip and welcome to IP Scan, where we provide you news and perspective on intellectual property happenings across the nutraceuticals multiverse. In tonight’s segment, we offer a first: a profile of a recently decided court case that happened on Earth, in the USA.
“Our Earthling brethren have an obsession with body weight and fat loss, manifesting in a multibillion-dollar industry across many parts of the planet. Perhaps most focused upon slimness is the United States of America, where weight loss products and services abound on television, radio, a digital communication vehicle they call the ‘Internet,’ in magazines, and on large signs posted along commuter vehicle travel paths, called ‘billboards.’
“A large number of consumer weight/fat loss products that are swallowed use extracts or concentrates of aerobic plants. One such combination involves a USA patent issued in August 1999 (5945107), describing a composition comprised of three aerobic plants (yerba maté, guarana and damiana; also referred to as ‘YGD’). This composition is the subject of at least two published clinical studies, and is assigned to a company based in the country of Denmark.
“In October 2005, a Danish competitor company requested a re-examination of the patent, challenging its validity. Almost 10 years earlier, the Danish inventors of the patent had filed a request (with a Danish regulatory agency) for approval to perform a clinical study. Notably, the date of this request preceded the priority filing date of the patent application by more than one year. Patent law in the USA states that any ‘printed publication’ that adequately describes an invention, appearing more than one year before the priority filing date of a patent application for the invention, constitutes ‘prior art’ and can render the patent invalid.
“The competitor’s excavation of this clinical study approval request—due to it being open to public inspection—served as the pivotal finding in the re-exam case. The request described a composition comprised of YGD. The re-exam invalidated the claim for the YGD composition, one of only three claims, and perhaps the most vital claim in the patent. The decision was upheld by a USA Federal court, and was decided on 12 March 2009.
“It will be interesting to see whether other weight loss consumer ingestible product companies will harness the results of this invalidation and create products that contain YGD while tactfully circumventing the remaining two claims in the patent. The burden of proof to demonstrate infringement on the patent, having lost a notable portion of its ‘weight,’ will likely be far more challenging for the owners of the patent. Here at IP Scan we’ll keep you informed.”