Selling intangible assets

In re Montgomery – Prosecution Lessons  June 1, 2011 – 07:59 am
Case No. 2011-1376 (Lourie, Dyk, Prost)

Anticipation by inherency is a difficult doctrine in patent law. It has some thorny procedural requirements when used in a rejection or invalidity defense, and inherency can gum up decisions on whether to proceed with a patent on a seemingly new invention. In re Montgomery shows these problems are only compounded when the seemingly new aspect is a functional property or a characteristic of an existing structure or method.

Montgomery filed US Patent Application 11/118, 824, directed to renin-angiotensin system (RAS) inhibitors – compounds that stop the formation of angiotensin, a blood pressure-elevating hormone in humans. Several such inhibitors were known in the art at the time of the ‘824 application filing for use in lowering blood pressure, including ramipril, a specific type of RAS inhibitor. Where the ‘824 appeared to put a new twist on RAS inhibitors, however, was in its administration to specifically reduce stroke risk, as shown in the following example claim:

42. A method for the treatment or prevention of stroke or its recurrence, wherein said method comprises administering, to a patient diagnosed as in need of such treatment or prevention

Source: Ryan Alley Intellectual Property Law

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Often its stock options for a private company or intangible assets like technology or customer base for a company doing an acquisition. Other times they want someone to value the entire company or a division for some reason, like if they're selling the company or spinning off a division or selling some sort of restricted stock.

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