Serendipity and Patentability

In 1966, the DC circuit court wrote about how “serendipity is consistent with patentability” and how patent law leaves room to reward luck. California Research Corp. v. Ladd, 356 F.2d 813 (1966).

In some ways, serendipitous inventions are easier to defend as patentable because defendants are less able to point to “ordinary research steps” as the cause of the invention. This may be especially true post-KSR. Dissenting in Pharmastem, Judge Newman argued that this love of luck had gone too far – arguing the majority’s denial of patentability was akin to “limiting the patent system to the serendipitous and the unexpected.” Pharmastem Therapeutics, Inc. v. Viacell, Inc., 491 F.3d 1342 (2007).

27 thoughts on “Serendipity and Patentability

  1. Lionel: That is true. It is also true that you can get sued for drafting broad claims that are later invalidated, or for drafting broad claims that are not allowed.

    Both are unlikely, but possible and not entirely without merit.

  2. Lowly,

    If you draft overly narrow claims that do not end up being valuable against competitors, you may be sued by the client. Unlikely, but possible and not entirely without merit.

    I am not talking about about amendments necessary to overcome cited art. There would not be a case there. I am talking about original claims or amendments that are way more narrowing than necessary to overcome the Examiner’s rejections.

  3. Jenna,

    I agree completely that this is the current situation.

    However I do think everyone is well-intended, it is just Serendipity that caused the result to come out this way.

  4. Dear Garibaldi,

    Yes, but it would jeopardize to some limited extent the mystique of a patent lawyer’s purview. Easy for me to say, I’m just an ordinary inventor’s pet.

  5. And why are patent claims required to only be one sentence fragment? If he goal is to particularly point out and distinctly claim the subject matter which the applicant regards as his invention, why not let good English usage and grammar be used? If you could use several sentences to say what is and what is not included, wouldn’t that be clearer?

  6. The Mouse is correct on all counts. The only issue on appeal was a 102 rejection. I’m curious what others might think of it because my gut reaction re the format, brevity and language of the claims is that there must be something seriously wrong with them, 101- or 112-wise, never mind 102/3, but I can’t put my finger on it.

  7. See definition of “Serendipity” on Wikipedia, which is very instructive and points out that serendipity is not all luck, but also the open-mindedness to recognise the lucky break that has occurred.

    link to en.wikipedia.org

    In my view, there is no way of “working” an invention. If there was, then by definition, it would not be inventive, since anyone could do presumably do it. Good invention needs inspiration and frankly, where that comes from is anyone’s guess. As a famous golfer once said, “the more I practice, the luckier I get”. But he never denied that sinking putts did not ultimately involve some luck, however good he was.

    Granted, some inventions must be flukes in every sense of the word, but no one ever suggests depriving a sportsman or woman of a point, merely because he or she got an outrageously lucky break.

  8. –2. The quality of work does not vary from a large firm (GP or boutique) to a smaller firm because SADLY – the quality of work 3rd year associates is the exact same as a seventh year.–

    I disagree that the quality of the work varies. Rather, I would say that you’ll probably get the same quality of work from the 3rd year and the 7th year, but the 7th year took a lot less time to do it. I recently spoke to a small inventor who wanted only a partner with at least 10 years experience in a certain field to draft the patent application. After being told what such a partner would charge, the requested qualifications were lowered significantly. Sometimes I think it’s better for a person with less experience to be able to spend more time on an application too.

  9. Euro, not sure what your specific question is, but as written these are probably non-statutory subject matter in the US.

  10. Not exaclty on topic, but I’m curious to hear what any of m’learned Pat-O friends make of these claims:

    What is claimed is:

    1. Software from at least one computer-readable medium automatically rearranging at least one tool based upon relative usage frequency of tools within a toolbar group.

    2. Software according to claim 1 preventing at least one tool from being rearranged.

    3. Software from at least one computer-readable medium automatically rearranging at least one group of a tools on a toolbar based upon aggregate usage frequency of tools within a tool group compared to another group.

    4. Software according to claim 3 preventing at least one group from being rearranged.

  11. “To the contrary, I think Jenna is suggesting that some attorneys want to patent everything because, while you can get sued for the failure to obtain patent protection, you can’t/won’t get sued for obtaining invalid claims and all that remains is missed dates.”

    How can I be sued for failing to obtain protection? If I do everything I can, make all the arguments I can, and the appeal board just doesn’t agree with me, how is that my fault?

  12. correction: I think Jenna means that you can’t/won’t get sued for patenting everything and, in the process, obtaining some invalid claims in the mix.

  13. “Many partners mark up their associates work for no real reason other than to take their ‘tax’ on the bill to the client.”

    That’s cynical. All mark-ups I’ve seen result from either partners’ genuine concern for the substance of the work and, to a much lesser extent, the partner’s idiosyncratic rules of style. Of course, the attorneys I’ve worked with were good lawyers and, as a result, have no shortage of work and thus don’t need to manufacture reasons to “tax.” I suppose there may be tax-ers out there, but I haven’t seen any.

  14. Jenna, sounds like you have had a bad work experience. Sorry. I hope that you are able to find a better work environment.

  15. “you can get sued for the failure to obtain patent protection, you can’t/won’t get sued for obtaining invalid claims”

    Don’t bet on it. A patent without a continuation on file that has only a broad claim without a range of narrower dependents will release a suspicious odor when it starts to rot.

    What you can be sure of, however, is that nobody other than the patentee and/or licensees will give a hoot one way or the other. Certainly the PTO could care less that it slapped a gold seal on a pile of garbage.

  16. Jenna: “Claim construction is completely unpredictable and more likely random”

    Horsehockey.

  17. “Are you suggesting that any time a patent is invalidated, it should be malpractice?”

    To the contrary, I think Jenna is suggesting that some attorneys want to patent everything because, while you can get sued for the failure to obtain patent protection, you can’t/won’t get sued for obtaining invalid claims and all that remains is missed dates.

  18. “Some clients strategy is to simply patent as much as possible because they know some patents will be invalidated because patent MALPRACTICE does not exist short of missing a filing date, etc.”

    Are you suggesting that any time a patent is invalidated, it should be malpractice? Are you serious? The USPRO does the search and decides patentability. All I can do is disclose all relevant references I know of and argue for the patentability of the invention against the references the examiner finds. If there was some dead on 102 reference written and published solely in Dutch that the examiner didn’t find, how the heck is that my fault?

  19. “So, yes patents are often well poised and synonymous with serendipity.”

    Does this mean anything at all?

  20. Serendipity? there are so many things left to chance in patent law its not even funny…

    Claim construction is completely unpredictable and more likely random … but law firms do not want to tell clients that…

    102 rejection? Whether one snippet of a mildly related piece of prior art discloses one claim element…

    103 rejection? Examiner interview? its all the same extremely subjective hyper technical “gobbledygook” as justice Scalia once said of the obviousness test – and not much has changed since..

    Things that law firms will not admit to general counsel for which they prep and pos apps:
    1. The writing of the specification is completely subjective and can with no certainty predict protection of an idea.
    2. The quality of work does not vary from a large firm (GP or boutique) to a smaller firm because SADLY – the quality of work 3rd year associates is the exact same as a seventh year.
    3. The reasons for choosing to argue a particular claim feature are never truly discussed in a response/amendment because “its not taught” is the argument that is the safest.
    4. Many partners mark up their associates work for no real reason other than to take their “tax” on the bill to the client.
    5. Some clients strategy is to simply patent as much as possible because they know some patents will be invalidated because patent MALPRACTICE does not exist short of missing a filing date, etc.

    So, yes patents are often well poised and synonymous with serendipity.

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