JOTWELL: Journal of Things we Like (LOTS)

[JOTWELL] Many of us enjoy legal theory of all sorts (even that outside of patent law) but we do not have time to sift through the several thoursand law review articles published each year. 

A new project headed by Professor Michael Froomkin (Miami) focuses attention on legal scholarship that is new and noteworthy — and does so in digestable 1,000 word essays.

[Patent Utility Redux] In a recent JOTWELL essay, Professor John Duffy (GWU) discusses a new article by Professer Michael Risch (soon to be Villanova). Risch’s article is titled Reinvinting Usefulness and is forthcoming in the BYU Law Review (SSRN Draft). Duffy writes:

Michael Risch reexamines patent utility doctrine and advances creative and insightful arguments for requiring that all inventions demonstrate “commercial utility” prior to patenting.  The highest compliment I can pay this article is not that I agree with it—I’m still somewhat doubtful—but that the article has forced me to think hard about an area I foolishly thought to be largely barren.  The article is memorable precisely because its thesis is unsettling; it demands rethinking of utility doctrine and other aspects of the patent law.

The JOTWELL IP section can be followed here: http://ip.jotwell.com/.

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18 thoughts on “JOTWELL: Journal of Things we Like (LOTS)

  1. It’s easy to criticize some of the ideas as overly academic, but academics are often pretty instrumental in shaping the direction of patent law, so I wouldn’t be too quick to dismiss essays like this one. In any case, this blog consistently turns me on to other great new IP blogs, so thanks yet again to Patently-O.

  2. How about the case of Valensi, who invented colour television years before its time. To the original 16 year patent term the English courts added the maximum 20 year extension that was possible under UK national patent law (prior to its harmonisation with mainland Europe). Ten of those 20 years of extension was under the ground of “inadequate remuneration”.

    But I thought it was only trademarks, and not patents, where filing must wait till Applicant has a bona fide intention to use.

    Registered but unused marks are “abandoned vessels in the shipping lanes of trade”. Patent applications filed and published early are not obstacles, but the very opposite of them. Give the inventor an extension on the term, if that is just. Pharma has it already, no?

  3. One of my clients once upon a time was an “advanced research” unit. These folks worked on the fundamentals of science, on materials, on techniques, that were not intended to be implemented in products for at least five years. Now, a strict commercialization requirement would prevent the filing on these inventions for years until they became practicable. Obviously, this would not be in the interest of advancing the progress of the useful arts by that prevented filing and publication of the inventions until actual practicable use had been demonstrated.

    This is another reason why we really do have to rethink how we treat advanced research. We should incent the filing and publication of these inventions, but should hold up patents until their use is real. Additionally, we should have full disclosure of any intervening enablements, best modes, etc.

    So I modify my earlier remarks to the extent that the grace period should be greatly extended, perhaps up to 7 years or more, but be supplemented with a requirement to simultaneously file a preliminary patent application that would be published.

  4. “:If there’s one thing the Founders hated, it was not knowing whose turn it was to go to the bathroom.”

    It was indeed unfortunate that the likes of IBM and AI would take generations to come along.

  5. The Congress shall have power … To promote the progress of science ***and useful arts***,

    If there’s one thing the Founders hated, it was not knowing whose turn it was to go to the bathroom.

  6. Regardless of “useful Art,” the whole point of the grace period is to allow a period of time for commercial public use and final development of the invention. This is entirely consistent with the premise that congress intended that invention have actual practical uses and that they be demonstrated.

    But, while the grace period remains, its purpose is largely lost to history. I agree we need to rethink this, but with a better, more flexible grace period that would include, in my view, a preliminary filing that would provide some stake in the sand as what it is that the inventor is developing and attempting to commercialize. But, and within the grace period, the inventor should be able to add enablement, utility and commercial practicablity disclosure to his specification without losing his priority date. But, unfortunately, that is not the case today with provisional application that require full Section 112, p. 1. support for anything later claimed.

  7. A major gaping hole in the article is its failure to take note of the word “useful” as such appears in the US Constitution.

    That “major gaping hole” is on pages 4-9, with another passing mention on page 22. Try reading it before you self-proclaim yourself to be above this particular article.

  8. I’m not going to waste time and energy thinking long and hard about the “innovative” concepts that the JONKWELL article self-proclaims itself to be delivering through its self-aggrandizing commercials.

    A major gaping hole in the article is its failure to take note of the word “useful” as such appears in the US Constitution.

    Section 8: The Congress shall have power … To promote the progress of science ***and useful arts***, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

    I may waste some time thinking over what psychological trickery and false framings the JONKWELL article “utilizes” to pitch its pitchfork’s bale of BS :-)

    But that is a story for another day.

  9. Also, where once we created a one year grace period to allow experimental public use and or commercialization, we might consider extending it for longer periods, particularly were government permits are required for commercialization.

    Good news. The public use and on sale bars are only triggered once the invention is ready for patenting. If you haven’t sold one on commercial terms yet, or (depending on what “commercial utility” really means) sold enough to recoup the cost of retooling your factory, your grace period hasn’t even begun. Put another way, the grace period is for non-experimental use.

    The ROW is definitely a problem, though. Would your own foreign patent, published before you could even file in the US, be disqualified as prior art for non-enablement if it didn’t establish the then-unknown commercial utility?

  10. So, the practical proposal is to all but require commercial public use prior to filing — and to delay the required date of filing so long as commercialization efforts continue.

    In the abstract, a good concept.

    In practice, completely unworkable given the abandonment of patent rights in the ROW.

    Also, where once we created a one year grace period to allow experimental public use and or commercialization, we might consider extending it for longer periods, particularly were government permits are required for commercialization.

    Now, to make this workable, we need to require a provisional application that describes the invention and its prophetic utility and the ability to claim priority to it after the period of commercialization ends. We also need to amend the Paris Convention accordingly.

  11. The commercial usefulness requirement treats inventions – especially pioneering ones – as incomplete until the threshold is met. Thus, inventors must research and develop inventions to the point that consumers would demand them prior to filing for a patent.

    The “commercial usefulness” requirement that Professor Risch refers to already exits. It’s called “filing fees”.

  12. So, the lesson is read this new layer and find out what your idea looks like after going through the cycle.

  13. A blog telling us what a layer of professors is telling who are telling us what a layer of professors are telling us who are telling us what their graduate assistants are telling them who are reading blogs and developing our ideas.

  14. Are USPTO examiners going to determine whether a claimed invention has “commercial utility”?

    Probably not. We don’t expect them to determine whether a claimed invention was in public use or on sale either.

    Could you imagine if drugs had to have commercial utility? You’d need FDA approval before you could even apply for a patent. And what would become of the patented method of swinging on a swing, or the patented method of exercising a cat?

    I think I prefer utility the way it is. You discover a use for something, you’re entitled to a patent. Someone else reads your patent and discovers a way to make that use profitable, he can get a license.

  15. “utility” is already a requirement.

    I don’t know what “commercial utility” is. Are USPTO examiners going to determine whether a claimed invention has “commercial utility”?

    Another professor with too much time on his hands.

  16. I couldn’t finish the paper because the idea seems stu pid. If he wants to write a good paper, give us a preview of what this “commercial use” he proposes should be necessary actually is, and do it in the abstract.

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