Expert: George Zalepa - 8/27/2008

Question
Hello! Is there such a thing as a "compositional patent" and if so, what is it?

Answer
There are claims that are considered "composition" claims.  Composition claims are primarily used in pharmaceutical patents (See, e.g., US Patent 6,121,314, Claim 1) and are used to describe a composition of matter.  This contrasts with method or system claims as a chemical compound can not readily be considered a method or a system.  Compositional claims are generally very specific and occasionally the term "compositional patent" is used to refer to a patent that is so specific there is little or no chance of the patent being invalid.  See the composition claim attached below from US Patent 5,008,289:

1. A composition for treating the symptoms of nasal disorders and headaches, said composition comprising:

a solution or suspension formulated from a pharmaceutically acceptable carrier for instillation into the nose, said solution or suspension containing capsaicin in concentrations from about 0.001% to about 1% weight

and including a pharmaceutically acceptable local anesthetic selected from the group consisting of lidocaine or benzocaine in concentrations from about 0.5% to about 20% by weight.


As you can see, the claims are generally directed towards a combination of chemical ingredients resulting in the final composition.  Thus (as the MPEP states), "[a] chemical composition and its properties are inseparable" (MPEP section 2112.01 citing In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).  This raises one major distinction between other types of claims.  For example, a system claim may have one element that may cover various real world applications.  E.g., a claim stating "a system for moving a vehicle comprising a seat and a propulsion device" may read on an automobile, a boat, a space shuttle, etc.  The propulsion device is left open to interpretation, thus there is a little more room for invalidity assertions.  The above claim does not have this breadth as it explicitly refers to lidocain, capsaicin and benzocaine, wherein those are the only possible elements to fill those limitations.  It should be noted that this claim is also a Markush claim which almost exclusively used in pharmaceuticals.

Pharmaceutical patents are not my strongest point, but this concept is a general framework for you question.  If you have any specific questions regarding filing or interpreting these types of claims, please feel free to follow up.