All Claims Rejected for Diamond Therapeutics Inc. Application 17/427,037 Describing 5HT Receptor Agonists at Sub-Hallucinogenic Levels as Neurological Treatment

MADISON, WI USA (April 20, 2023) Diamond Therapeutics Inc. has today received a final rejection from the United States Patent and Trademark Office (USPTO) for U.S. Pat. App. Ser. No. 18/053,648 entitled “COMPOSITIONS AND METHODS FOR IMPROVING COGNITIVE FUNCTION”. On July 22, 2022, Porta Sophia filed a third-party preissuance submission that challenged the patentability of the application's parent application, U.S. application 17/427,037, entitled “METHODS AND COMPOSITIONS COMPRISING A 5HT RECEPTOR AGONIST FOR THE TREATMENT OF PSYCHOLOGICAL, COGNITIVE, BEHAVORIAL, AND/OR MOOD DISORDERS” on the grounds that its claims lack novelty and are obvious to someone skilled in the art.

Porta Sophia, a non-profit psychedelic prior art library, leverages the experience of legal and interdisciplinary academic scholars to promote an ethical psychedelic patenting landscape that preserves the integrity of the public domain. The organization curates and makes readily available relevant historical documentation for patent examiners, innovators, and the public alike to explore the scope of psychedelic technologies.

Abandoned parent application

The ’037 application was filed on January 29, 2020 and claims priority to a provisional application filed on January 30, 2019. The application’s 49 claims describe the use of 5HT receptor agonists in amounts insufficient to provide a hallucinogenic experience to treat psychological, cognitive, behavioral, and mood disorders. In addition to treatment method; dosage, dose regimen, drug formulation, and drug combinations are also claimed. After Porta Sophia’s third-party preissuance submission, Diamond Therapeutics Inc. abandoned the application on January 4, 2023.

Rejected child application

Filed November 8, 2022, the ‘648 application is a child application of the ’037 application. The 20-claim ‘648 application was a Track One filing, meaning that its examination by the USPTO was expedited. Prior to the ‘648 application’s publication on April 13, 2023, the USPTO issued a non-final rejection against it on March 7, 2023. The action rejected all 20 claims and cited prior art submitted by Porta Sohpia in its third-party preissuance submission made against the parent ’037 application. Despite Diamond Therapeutics Inc. subsequently amending the ‘648 application’s claims and contesting the rejection, the USPTO issued a final rejection on grounds that included that the application failed to meet the standards of patentability of both novelty and non-obviousness. Prior art submitted by Porta Sophia in the third-party preissuance submission against the ’037 application was cited by the USPTO in this notice of final rejection as reason for the rejection of all the ‘648 application’s claims.

Third-party submissions of prior art 

The America Invents Act allows third parties to submit prior art and concise descriptions of their relevance to the USPTO. This ensures that submitted documents will be considered in the examination of associated patent applications. In addition, these submissions have a broad impact because applicants have a duty to disclose the submitted prior art for other relevant patent applications filed by the applicant. 

Porta Sophia tracks and analyzes psychedelic patent applications globally. If an application improperly claims innovation of something known in the public domain and meets the standards of Porta Sophia's third-party intervention evaluation criteria, the team assembles evidence against these invalid claims and contests them directly to the relevant patent office through third-party interventions.