by Dennis Crouch
A couple of weeks ago, the USPTO issued U.S. Patent No. 8,712,797 to the drug-price-shopping company named GoodRX. The patent appears to be a typical business-method type invention based on the idea that automated internet communications can help solve consumer information problems. Here, the basics are to obtain a price list from two different pharmacy benefit managers and then display “at least a portion” of those prices through a user interface.
What is unusual is that the patent issued only 98 days after its filing date. The notice-of-allowance was mailed 44 days after filing. (Note – this is not a continuation or divisional but it does claim priority to a provisional application.) The application included a track-one request ($2,000 for small entity) filed by Knobbe. This is an incredibly short timeline for issuing a broad business-method patent that is very likely invalid.
Claim 1 is listed as follows:
1. A method of displaying prices for drugs … comprising:
providing a user interface using a computer processor;
receiving from the user interface information identifying a first drug;
obtaining a first set of prices for the first drug that is associated with a first pharmacy benefit manager (PBM), wherein a pharmacy benefit manager processes a claim relating to a drug and has an agreement with a pharmacy relating to a price of one or more drugs, the first set of prices comprising at least one price for the first drug and each price in the first set of prices being determined by an agreement between the first PBM and a pharmacy;
obtaining a second set of prices for the first drug that is associated with a second pharmacy benefit manager, the second set of prices comprising at least one price for the first drug and each price in the second set of prices being determined by an agreement between the second PBM and a pharmacy; and
displaying in the user interface at least a portion of the first set of prices and the second set of prices.
As mentioned above, the patent claims priority to a provisional filing. One interesting aspect of this case is that the provisional was filed pre-AIA and the application was filed post-AIA. For these transitional applications, the USPTO asks applicants to declare whether new matter was added to the non-provisional application and the applicant here indicated that answer was no. The problem is that the provisional application is actually quite sparse and – at least to my eye – there are a number of claims that were not described by that document. Of course, we would need to ask whether there is any remedy for failing to accurately answer the AIA-Transition question.
To the extent you are concerned about GoodRX patent viability, the company does have two additional applications pending that claim priority to the same provisional application.