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- Jun 27, 2018
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There are only four kinds of patents out there in the US: device patents, methods patents, state-of-matter patents, and manufacture patents. This one is a methods patent, which as you say it, is a strategy. (A prototypical drug patent is a state-of-matter patent, for comparison).The interesting part is the patent initially filed in 2003 and what patents mean (this I don't know). The patent is for a strategy. It is not regarding a specific formulation or protocol creating the rectal prostate space. Other people figured out what formulation worked for creating the space at relatively low cost. I do not know if there was any remuneration to the Hopkins folks who tried the PEG concept for spacer.
The classic IP strategy if you are first in the space would be to patent the method. This allows you to claim the most "thought territory" because it is hard to work around (unless someone invents a shortcut that skips one of your claimed steps, in which case your patent is bunk). If you patented only the formulation you would be very vulnerable to someone coming up with a better (or simply different) formulation, for example, and working around you.
One compromise is to claim a desired formulation in your methods patent in a dependent claim, which sort of makes it an added ingredient but not the main substance. This is done in your linked patent in Claims 6 to 14, where they try to cram in every plausible formulation they can think of so no one is going to go around them later and claim a better filler material. They list PEG as the material in Claim 11.
Filing a patent in 2003 gives you the potential for a future payout if you invest more deeply in the space and find a winner. However, university patents are on the whole only moderately profitable, and most individual patents will not recoup the filing expenses. Assuming the $16 M payout was for the patent, this one would have been one of the rare winners.