- PPAC Patent Report: Major reform is necessary. [LINK] [About PPAC]
- New Federal Rules of Civil Procedure: On December 1, the newly revised Federal Rules of Civil Procedure (FRCP) became effective. The rule changes are primarily stylistic rather than substantive. At times, however, it appears that the drafters traded off the goal of preserving the existing meaning in favor of clarity. Litigators should take time to parse the changes. [LINK]
- EPO: Norway & Croatia will become EPO members on January 1, 2008. No retroactive designation is allowed. [LINK] [LINK]
- Pro Bono: Patent Hawk reports on the recently dismissed case where an inventor sued his pro bono patent attorney for malpractice. [LINK]
- Patent Reform: Professor Dinh (Georgetown) writes in the American Spectator that we need patent reform: “The reforms proposed by the Patent Reform Act of 2007 are precisely the type of congressional action needed. The Act will remove obstacles to growth and restore balance to the patent system. In particular, the Act will protect inventors’ property rights and encourage innovation by providing a meaningful administrative review process to clarify the scope and validity of patents, and the Act will clarify and modernize the damages rules, thereby eliminating the perverse incentives that foster litigation.” [LINK]
- Patent Troll Tracker: Patent reform is not a ‘boon to Chinese pirates.” [LINK]
We do agree in the general, Lionel, but it will take an evening over beers to tease it out and it will not come in a quick blog discussion. The good thing for both of us is that gene sequences entered (via databaes and patents) the public so quickly in the 90’s that base gene patents are quickly becoming a thing of the past.
I prosecute these things daily, and the office pretty much has disallowed bald gene patents anyway (without a utility, and having actually used to some end) – they reject over 101, enablement, and written description – and even if they are wrong they stick to their guns.
Me,
I am arguing against gene patents as such. Claims to methods and apparatuses (sp?) separating them or replicating them in a lab, genes specifically made by a particular process, altered genes, etc. can be patentable. But any claim to a specific gene sequence, in and of itself, that exists in nature should be invalid. It is irrelevant how much work it took to isolate it.
The incentive to study them and understand their properties exists completely independent of gene patents. There would also be incentives to develop techniques, drugs, therapies, etc., as they all would and should be patentable.
Funny, very funny. I simply note that without knowledge many folks on this string have said things that are wrong, simplistic, misguided, or all three.
I don’t have time to go into the entire history, nor do I know it all, but I was working in the field at the time. I was working with the best stats folks in the world, and working with some of the best molecular genetics folks in the world. You are simply wrong as to how difficult this was at the time. Also, I question your assertion of how many other labs work went into this discovery – few others had the statistical power (via consanguineous lineage in the Mormons) that this group did to overcome the limited marker sets and the developing atatistical tools.
Alot of public money goes into myriad pharma “discoveries.” If pharma didn’t commercialize those discoveries though, noone would.
Your point to monetary reward may be correct (a bit too high – but the billions Pfizer makes on Lipitor makes this pale in comparison), but you seem to want all patents to go away. This discovery would very likely NEVER have matured into a commercial test without enough monetary reward to protect the commercializing entity from the tort lawyers if something went wrong. How do we address this?
Now, to your childish generalizations of this reward and how to control it – for pharma discoveries limit patent term from the date of commercialization (first sale?) not the date of invention. This gives companies rewards for their discovieries and the huge commecialization costs (and risks of failure) but does not give extemely long protection which is what really makes people mad, because it is likely too much (many pharmas have regularly gotten exclusivity 10-15 years after commericalization, that is too long). I recommend 5-7 years.
You gotta meaningful solution or do you just want to shoot from the cheap seats?
Hmmm, that $500 I could have this hour might have gotten me out of my Ford and into a BMW, shucks…
The BRCA1 example is a perfect for this discussion. Very interesting so far.
First, you don’t know 😉 need a Ph.D. to explain or understand the situation. Those that propose or submit they have some special knowledge because of the Ph.D. are merely elitists pushing the status quo.
Second, you ain’t need to be some J.D. handjiving patent law expert to extra-explain or over-stand the situation. This is more like billing 2500 hours for 1000 hours worth of work – this is what attorneys do.
It is clear that a lot of public money went to fund the BRACA discovery. It is clear that Myriad Genetics has made immense amounts of money from reaping the rewards from the patents they obtained. It is clear that the founders of Myriad have reaped incredible rewards from this. These patents helped them start their business and they offer a good test. Probably, the most comprehensive test that any commercial entity offers. But…
Since they can exclude others, there is little motivation for them to make a better test, a cheaper test, a more effective test. Especially if it costs them more money and has risk associated with it. Their goal now is to maximize profit, not improve the test. They serve their shareholders by definition, not public welfare. More to the point, they serve themselves – look at what they make. It is my guess that if they perceive public discontent with their test, they then will alter their test to assuage the discontent, in order to serve their shareholders, themselves, not the public. It has already played out.
This is just plain old fashion capitalism. If you don’t like it, then fight it or move elsewhere.
The fact they have a patent and can charge huge amounts of money for something that, over all, publicly funded for the most part, and was not the risky is a different question. They have avoided FDA regulation and oversight, so this point is moot. They haven’t had to conduct trials. They can make their claims, without having to validate it via a regulatory process. A select few reap huge profits without any regulation.
I do not know the science very well, but I think that if you have a family history of breast cancer, this is probably a better indicator of predisposition to breast cancer, than some expensive test that only points out the most prevalent mutation related to breast cancer and then qualifies the others as having unknown significance. Most people probably don’t need such an expensive over done test. The rest of the world has come to this conclusion.
ME ME ME ME, knows nothing and bases broad generalizations based on incomplete facts, and probably charges 500 bucks an hour for boilerplate. Look at the ppt presentation cited earlier in this thread – there were numerous groups around the world that contributed to identifying BRCA1. It wasn’t that hard.
The questions is whether society benefits from this…
bierbelly,
I’m with you: what SCOTUS says in KSR International about the standard for obviousness under 35 USC 103 is “gobbledy gook” and provides no clue how to implement that standard, especially by a non-legally trained patent examiner. I hope those 24 IP law professors who filed that Amicus brief in support KSR are happy with the result that was spawned by SCOTUS (one is now a Federal Circuit judge). Sadly, Dinh wasn’t one of them.
Lionel-
Gene patents were much more difficult than simply discovering an animal in the wild when most of them were filed (10-20 years ago). As these patents expire almost all genetic information will be freely available in the next 10 years, just as the patent system intended.
QTL mapping and determining the causative mutation (e.g. BRCA1) is still very difficult, and was darn near impossible when Myriad did it.
This is part of the problem, in these difficult tech areas you need to be an science expert and legal expert to draw all the correlations and understand that BRCA1 is not a “gene” patent in the way ESTs are “gene” patents.
Software should be copyright protected and not patent protected.
“On the other hand, software engineers generated new methods and algorithms to solve problems during software development. No different from someone constructing a new machine.”
Oh please. How many different ways can you branch into or out of a “do” loop?
Me,
On the other hand, your comment regarding the lifespan of software is stronger.
Me,
There is no invention and no more discovery involved in gene patenting than there is in finding a new animal in the wild. Should you be able to patent those as well. Oh that’s right you isolated it! Come on, gene patents are the biggest scam in the patent system. Gene patents should never have been allowed under 101.
On the other hand, software engineers generated new methods and algorithms to solve problems during software development. No different from someone constructing a new machine.
“Actually, I’ve read State Street many times. So, what was the patent in State Street – a software patent or a business method patent? Interestingly, the patent at issue was not directed to computer readable media.”
True, because State Street is the seminal biz methods case, not software case.
“The ugliness of the old test was that the certainty was that claims were more likely to be allowed because of the rigidity of the test.”
This has not been my experience. IMO, Examiners misused the TSR test frequently, finding “motivation” in prior art passages which didn’t take into consideration the prior art as a whole, i.e. reading the prior art piecemeal and only selecting from it what supported their positions. Maybe the proposed effects of KSR are really arguments as to how many fairies can fit onto the head of a pin, since in my practice it seems that the Examiners didn’t really feel all that constrainted to correctly apply TSR anyway. I don’t know that “common sense” and “obvious to try” can be all that much worse. Still, I expected much better from the SCOTUS than we got. Is this gobbledy gook what they’re being paid for?
SF,
I guess “beauty” or “ugliness” is in the eyes of the beholder. And I don’t agree that TSM is rigid (again SCOTUS criticized the Federal Circuit for a “rigid” application of TSM, not because TSM is rigid test). Instead, TSM provides an objective basis for evaluating obviousness; by contrast, what SCOTUS says in KSR International (or Graham) is so nebulous that the standard for obviousness moves to the subjective end.
Also, TSM focuses on providing “evidence” to support obviousness, and further focuses on the “why” for combining references. Even SCOTUS in KSR International recognized that you have to have “evidence” to support obviousness (although SCOTUS fails to address in KSR International how to realistically and objectively evaluate the “why” for combining references). In fact, the Federal Circuit in Alza and DyStar said that “common sense” is OK if you can point to objective “evidenc” of it.
I’m also not looking easy allowances of patent application, just a consistent and objective standard for evaluating the obviousness of these applications so applicants can hold the patent examiner’s “feet to fire” when they cite no references (or other verifiable) evidence) to support the alleged combination of references. (And those who naysaid TSM in KSR International also provided no objective evidence to support the position that TSM is a “patent friendly” test, and, in fact, the Federal Circuit case law suggests the opposite.)
What SCOTUS provides in KSR International is, at best, nebulous guidelines that encourage subjectiveness and inconsistency that will only create chaos. Frankly, I rather have a “rigid” application of TSM, rather than the nebulous obviousness standard provided by SCOTUS in KSR International that no one (including SCOTUS) can apply consistently or objectively without a “full blown” evidentiary trial that doesn’t exist in USPTO patent prosecution.
“The beauty of the old test was that it was a real attempt to put certainty into 103.”
The ugliness of the old test was that the certainty was that claims were more likely to be allowed because of the rigidity of the test.
I’m in the camp with those like bierbelly, ME and Night Writer Patent Attorney that SCOTUS in the KSR International case is no more clear on what the standard for obviousness is under 35 USC 103, or more importantly, how to apply that standard than Graham was. (Also, to clarify a frequent misquote, SCOTUS didn’t say that the TSM test was too rigid, just the application of TSM by the Federal Circuit in KSR International, which is at least a fair characterization by SCOTUS.) Under whatever standard SCOTUS has set forth for obviousness under 35 USC 103, it’s completely unclear whether even Edison’s light bulb would have made the grade. (I frankly wish those who argued KSR International at SCOTUS had used this example.) Also, SCOTUS is so far removed from reality on patent law that they don’t even consider how a legally untrained patent examiner will apply this “nebulous” obviousness standard. At least the TSM test provided an objective basis for holding a patent examiner’s “feet to the fire” on some of the nonsensical obviousness rejections we see.
As was also said by others, you’re dreaming if you think SCOTUS is going to clarify what they said in KSR International any sooner than they did in Graham (KSR International came 40 years after Graham). That’s why we’re going to have chaos unless the Federal Circuit steps in (which they will as was mandated by Congress when the Federal Circuit was created in 1982), and make sense of the obviousness standard that SCOTUS has so “nebulously” defined, and which doesn’t completely throw out the TSM test.
What’s even worse is that SCOTUS in KSR International resurrected from the grave the Anderson’s-Black Rock and Sakraida decisions about the impropability of finding patentability in a combination of old elements. The late Chief Judge Markey was right, this is a bunch illogical and rhetorical nonsense. (Even Edison’s light bulb was admittedly a combination of 7 “old” elements.) Frankly, I wish SCOTUS would simply bury these 2 cases forever. They were bad law when they were announced, paying, at most, lip service to the standard set forth in 35 USC 103, and completely ignoring the statutory command otherwise. At least the TSM test of the Federal Circuit pays attention to what 35 USC 103 says, which is more than I can say for SCOTUS in KSR International.
“All that matters is KSR will keep more obvious crap from being patented and that is the point of having an obvious test in the first place.
Thank you and thank the Supremes.”
So true. After all, it’s just a matter of common sense.
I don’t think that the biggest problem facing patents in the US is determining obviousness.
The problem is that the system inherently does not give Examiners time or motivation to find relevant prior art but does give an incentive for giving wrong rejections justified by ignoring or missapplying rules, be they KSR, TSM or whatever.
In reality, an Examiner does not have the time to read a specification. He or she just picks superficially relevant keywords from the claims and mosaics the thus-found art using USPTO-supplied boilerplates.
The first Office Action is often wrong and irrelevant. The Applicant overcomes it by explaining what the claims really mean.
Unfortunately, the Examiner is now in trouble. He or she must perform a new search to find relevant art, but this new search must come at the Examiner’s expense. It is much easier for the Examiner to issue a final rejection forcing an RCE. The RCE give the Examiner points and extra time to do a new, hopefully relevant, search.
If the USPTO management made it clear that the job was to issue good patents, not reject them and Examiners were given more time and one additional OA before a final, everyone’s life would be better.
MM wrote:
>All that matters is KSR will keep more obvious crap from >being patented and that is the point of having an obvious >test in the first place.
>Thank you and thank the Supremes
Use your noggin Mooney. The beauty of the old test was that it was a real attempt to put certainty into 103. To place the burden on the examiner to show that it would have been obvious. Now what we have is voodoo obviousness. KSR makes it so that the examiner is the judge and jury. That is not good law.
Not enforcing 102 is the biggest problem–not 103. But, to enforce 102 you need the PTO to do its job. And Dudas is not someone capable of fixing the problems with the PTO. If just 102 was enforced, what would be so horrible about people getting patents for every tiny little improvement to existing products?
In any case, KSR from my experience is just putting the law into the hands of the examiners, so that there is now much greater uncertainty as to what can be pateneted and what can’t. And my guess is that we are just going to have a higher variance and not better patents. I suppose the top people will just squeeze the corp and say 50, 40, 30, 20, then finally 10 percent of applications as patents. But, still, it is going to be the examiners that determine whether something is obvious now, and not the prior art. So, even if only 10 percent become patents, those 10 percent will have a higher vairance with respect to 103 then the issued patents do now.
Consider when you have a big client with an important patent, and they are willing to pay anything to get a patent for it. What a mess it is now after KSR. Before, if they had something that was a good invention and enough money, then a good attorney would with almost certainty get a patent. Now, with KSR, I don’t think that is true.
>Why, theres nothing at all complex about judging >obviousness respective this in view of that. One merly >finds the man that is of average skill in the art and ask >him if “A” is obvious in view of “B” and he will enlighten >you.
The problem is that it is “at the time of the invention.” In hindsight almost everything we can understand as people seems obvious. It really is sad that few people care about intellectually understanding this concept.
Anyone that has actually been part of product development and an inventor knows that what appears obvious after you understand it–just wasn’t at the time.
It really is hard to take the anti-intellectual destruction of our patent system. What is so hard to take as well, is that the payoff for the anti-intellectuals is high. We see appointments as professors at Georgetown (the author of the tripe mentioned above), and the appointment to the CAFC to Judge Moore. Those who care about our society and not short term payoffs to shills (Moore is a very good example of a person that has benefited greatly from being a shill, and her payoff guarantees that many others will follow in her footsteps and suck up to the big corporate interests).
This is really where the rubber meets the road. Bush is in the pocket of the big corporations. The shill academics get the rewards from Bush. The universities (Georgetown) in this case appoint the shill academics because the shill has the government connections and previous experience–the resume.
So, what does a shill care about hindsight? Nothing unless it pleases his master. And in this case the master is not pleased with the hindsight problem, so it doesn’t exist. I can imaging Judge Moore up on the bench saying what proof is there of a hindsight problem? And placing the burden of proving that there is a hindsight problem on counsel. Her little mind forever wanting to please her masters for the great reward of the appointment to the CAFC.
Beam me up Scotty.
“All that matters is KSR will keep more obvious crap from being patented and that is the point of having an obvious test in the first place.
Perhaps I can be persuaded to embrace Mr. Mooney’s characterization of why he feels KSR was needed for “inventions” just as soon as a counterpart test is crafted for “original works of authorship”; to wit, a royalty bearing “work” from the Getty collection:
link to gettyimages.com|1&axs=0|57275071%2c2743459%2c53278676%2c50601365%2c57275068%2c56043779%2c78217137%2c53460245%2c51236074%2c52758733%2c50601364%2c77417157%2c72415106%2c72415103%2c72415102%2c72415099%2c72415098%2c72415097%2c72415096%2c72415093%2c72415090%2c72415089%2c56556612%2c50601363%2c3254895%2c52070173%2c50601362%2c51265973%2c76606770%2c56580852%2c50601361%2c56553033%2c50601360%2c2932931%2c50601359%2c76606758%2c51265903%2c73122818%2c50601358%2c56224715%2c50601357%2c76117360%2c73246213%2c72414534%2c78016284%2c77247448%2c56920514%2c74168327%2c73769867%2c74217077%2c74007297%2c57124396%2c56224660%2c55854360%2c53186041%2c51733369%2c51733366%2c51696922%2c2357057%2c56224641|0&id=72414534
Glad to see that the promotion of “science” is alive and well. It seems only the “useful arts” are on shaky ground.
All that matters is KSR will keep more obvious crap from being patented and that is the point of having an obvious test in the first place.
Thank you and thank the Supremes.
Since obviousness is one of the most difficult concepts in patent law to actually apply, the certainty was neded.
$$$$$$$$$$$$$$$$$$$$
Why, theres nothing at all complex about judging obviousness respective this in view of that. One merly finds the man that is of average skill in the art and ask him if “A” is obvious in view of “B” and he will enlighten you.
The SCOTUS didn’t like the test the Fed Cir created in order to bring some certainty to obviousness. Since obviousness is one of the most difficult concepts in patent law to actually apply, the certainty was neded. Time will tell how badly the SCOTUS has screwed up this time.
SCOTUS laid out a “test” for obviousness in Graham v John Deere in 1966. All of the PTO, the CCPA and the CAFC struggled for years to flesh out that “test”. If what was developed was so inimicable to SCOTUS precedent, why did they wait so long to discard it? I would suggest that there really was/is no SCOTUS precedent. It’s gobbledy gook, just as Justice Scalia suggested the CAFC test was. How long will SCOTUS wait to clarify what the KSR decision really means? Another 25 years? Their problem, much as is discussed above, is that they have absolutely no idea of the problems and issues that arise in the patent law. Perhaps they should have appointed a Special Master?
“In KSR the SCOTUS discarded 25 years of CAFC precedent, upon which we had all come to rely.”
Someone please note that the 25 years of CAFC precedent was 100% contrary to 100 years of SCOTUS precedent (or at least 25 years of SCOTUS precedent even just counting from the 1952 Act). To parapharse a favorite of the pro-patent-troll crowd, one who elects to build a business in reliance on the CAFC’s willful (or at least grossly negligent) disregard of SCOTUS precedent has no right to complain when said CAFC precedent is overruled.
“OK, bierbelly – I’m game. What would that amendment look like?”
Good question. I don’t know, but isn’t it better to have Congress actually say what they mean (re: 103 at least), than to have the courts continue to muck it up? In KSR the SCOTUS discarded 25 years of CAFC precedent, upon which we had all come to rely. For what? Nothing but more “gobbledy gook”. No test, just rhetoric, in spite of the fact that so many amicus briefs were filed from knowledgeable sources. And SCOTUS’ decisions are answerable to no one, except Congress. Congress needs to address these issues, and stop trying to put patches on the current system, wrt apportionment of damages (clearly already within the purview of the courts) and the like.
Can you say one world patent coming.
One further patent news tidbit:
Senate advice and consent to the ratification of the Patent Law Treaty (Treaty No. 109-12; harmonizing application formalities in 53 countries) reported out of the Foreign Relations Committee (Ex. Rpt. 110-6) favorably, subject to one reservation to Art. 6(1) (relating to unity of invention in PCT cases), and has been placed on the Executive Calendar for full Senate consideration.
I believe that one should understand the Vietnam War, the people whom the U.S. supported in Vietnam and the consequences of our actions in bringing these people to the United States of Amercia once we lost the Vietnam War. It is this ideological background that informs Mr. Dinh’s theories. In short, the people we backed in the Vietnam War were neither liberal nor democratic. They merely went to the same Universities as the ruling elite of the United States. I believe the revealing factor is ascertaining the underlhying ideology of the good professor would require an understanding that he has been attributed as the chief architect of the US Patriot Act. Now do you people understand what we are against at the USPTO and why the attacks upon the patent system are so vociferous.
If anyone has seen Roger and Me once gets a pretty good idea of what the ruling elite has in store for the masses of this country. Thank God for the Second Amendment. Wait I believe that the SCOTUS is about ready to deny weapons to the citizenry very soon.
We live in very dangerous times and the attack upon the patent system is more anecdotal evidence of the extent of the attack upon any individual liberties by the ruling elite.
The gene patents actually involve invention and discovery through science, which is the point of the patent system – not protecting the workmanlike product of a software engineer.
In order to move forward in genomics and human health through pharmaco-genomics the investments will be huge, and they will not be undertaken withput patent protection – which also differes from software where once the patent is issued, the technology has largely moved beyond it anyway.
I would eliminate gene patents before I would eliminate software patents. The software patents actually involve the creation of something.
Mr. ME:
“The IP is funded by the gov, owned by the researcher and the university, licensed for cash to VC to fund the startup, which is later bought by big pharma. That is the model gents!”
I think it would be more accurate to say that this is but one of the models, though each does proceed along somewhat similar lines…and the models cut across the entire spectrum of technology. One twist I do add whenever it makes business sense is to provide the licensing entity with a right of first refusal to undertake additional research that the licensee may need performed if the new entitiy is not yet sufficiently staffed to perform such research internally. In several instances this has proven to be a lucrative source of research funds without the need to go hat in hand to the USG begging for a new grant.
Personally, I am a strong supporter of the tech transfer process, be it from research performed at a federal lab, a university, or even a private company that markets products to the public. In each case programs can be established that promote the interests of the research entity without taking away from it mission or profits. All it takes is a little thinking out of the box to quickly realize the benefits that can be achieved will all “upside” and no “downside”.
“I still don’t know how you would define a “software patent” in a meaningful way. IF there is a problem with software patents and business method patents, it’s a problem with Section 103, not Section 101.”
Well, I too have advocated getting rid of software and business method patents (much like an unskilled doctor who might amputate a leg to get rid of an annoying infection, since I don’t work in those fields), but you raise a good point regarding the difficulty of classifying software patents.
Your 103 perspective for the software/business methods fix is intriguing to me. It reminds me of the problem the patent system faced early on with the patenting of every-day food recipes (i.e. grandma’s better chocolate chip cookie with a little more cream of tartar). Food recipes were not made non-statutory per se, but (if I recall correctly) case law evolved which indicated that all recipes (compositions/processes) that merely used standard items which were available in a home kitchen (flour, eggs, blender, oven) were “obvious”.
Anyway, I bet Microsoft would like to call all inventions that are invented in home garages with standard computer/internet equipment “obvious”, even while they work on the same things in their labs…. So solving any problem via the 103 route isn’t quite intuitive to me either.
“There are many proposed 101 changes out there that would handle this”
Then it should be relatively easy for bierbelly to provide one.
“Guess you never read the State Street Bank case? A change of law is not needed, the courts just need to overturn State Street. … In order to make [software patents] patentable here we have to use the tortured logic of ‘computer readable media’ that makes little logical sense.”
Actually, I’ve read State Street many times. So, what was the patent in State Street – a software patent or a business method patent? Interestingly, the patent at issue was not directed to computer readable media.
I maintain my challenge that “software patents” can’t be defined in any meaningful sense. If you’d like to make “computer readable media” claims unpatentable per se, then fine. I don’t need them to cover my clients’ software-based inventions.
I have also practiced patent law for many years, and worked on all type and manner of inventions.
There are many proposed 101 changes out there that would handle this – and the problem is 101. Guess you never read the State Street Bank case? A change of law is not needed, the courts just need to overturn State Street.
As to software, Europe lives without software patents, and does just fine. In order to make them patentable here we have to use the tortured logic of “computer readable media” that makes little logical sense.
OK, bierbelly – I’m game. What would that amendment look like?
“IF there is a problem with software patents and business method patents, it’s a problem with Section 103, not Section 101.”
This may be true, but an amendment to 101 would fix them both.
So now the PhD in population genetics suggests that we eliminate business method patents and patents on computer algorithms? Is someone speaking out of school again?
I’ve been reading and writing these things for a while (and I have a couple of degrees in the electrical arts) – I still don’t know how you would define a “software patent” in a meaningful way. IF there is a problem with software patents and business method patents, it’s a problem with Section 103, not Section 101.
Bierbelly-
Couldn’t agree more on 101, the rest is not as easy to define, but you are on the right track, methinks.
You guys know nothing of population structure and the ability to have the statistical power to find a gene – I do and you are all wrong on BRCA1. Call me after you get a Ph.D. in gene mapping. The likelihood they would have gotten the right group of families to map this at a different time is low, but hey, live in your fantasy world that this is easy – this ain’t Mendelian gentics fellas.
As for NIH funding of some the basic research -true – but NIH pushes their research to be used for applied research and to leverage private funding. They know they are very poor at getting things to market and have proven it over and over again. Ever had an NIH or NSF grant? I have and know how program directors work (the folks who fund this stuff) so you are using a simplitic model that doen’t apply to research funding – congrats! You guys are as bad as the academics commenting on patent practice – clueless on the ground! If memory serves the final discoveries, even of the gene, were funded by Myriad and private equity but I am not going to go do a publication research at 3 AM.
How about the federally funded research that got Monsanto to give the U of CA 100 million a few years ago? Your federal research dollar enriches alot folks and enables lots of tech in the private sector – and it is never leveraged by the government. If you don’t like that you need to make some fundamental changes in the research infrastructure.
The IP is funded by the gov, owned by the researcher and the university, licensed for cash to VC to fund the startup, which is later bought by big pharma. That is the model gents!
Mooney is correct that the BRAC1 gene probably would have been identified by someone else had the people at Utah not found it first, but “me” is right on point about a test being developed and brought to market in the absence of a patent (or some other mechanism for market exclusivity): it wouldn’t have happened. The amount of $$ required to get the product through the FDA is too great to justify the investment unless the investor is assured of a decent return. No exclusivity for a limited time = no test for the gene (unless you think the government can efficiently develop a test and bring it to market…LOL). So I can live with Myriad having a period of exclusivity for the test, even if this means their lab is the only one that performs the test. I’m against compulsory licensing for drugs, as this de-incentivizes new drug development, and I don’t see how this is different. In the long run we all benefit.
(This is also why I have a problem with the PTO’s current position that makes it difficult to get biotech patents b/c, to paraphrase the PTO, everything nowadays is routine labwork and the gene would have been discovered anyway so it’s obvious. True, there will eventually be someone at some university that discovers the gene – maybe – but without some sort of exclusivity, you’re a lot less likely to see that discovery transformed into something in the marketplace.)
MMAKADC wrote:
“This sort of strawman argument smells a lot like the arguments advanced in some quarters for dismantling public schools. Since any positive change will require $$$,”
Yes! Dismantle the holocaust that is known as “the public schools.” Or, as I prefer to call them, the “1d1ot factories.”
As for the “any positive change will require $$$.”
Really? I think that’s a diabolically silly comment.
Why will any positive change require $?
How about if they cancel all the BS public get together crap the PTO has and stop siphoning money off to the General Fund as a starting point?
Net gain in money, but no $$$ required.
So many ideas, so little care (time).
“I say never be complete, I say stop being perfect, I say let’s evolve, and let the chips fall where they may”
More importantly, I say – introduce more nonsense to the system to make me ever more wealthy and secure in my job.
If Congress really wanted to enact meaningful patent reform, they could do the following three things:
1. Amend 35 USC 101 to exclude business methods and computer algorithms. I know this would mean a loss in clients for may of you outside counsel, but IMHO, these are the areas causing most of the problems in patent law: the whining about “trolls”, the complaining about “frivilous patents” and the huge PTO backlog.
2. Amend 35 USC 103 to define what is meant by “obvious”. Isn’t it about time?
3. Amend 35 USC to delete the Doctrine of Equivalents.
I agree that “academics” ought to stick to their specialties, and perhaps be reminded that there are only two “specialties” in law, and that opining on patent law should be reserved for the specialists.
Professor Dinh (Georgetown) writes in the American Spectator <<< I won't say more....
Professor Dinh (Georgetown) writes in the American Spectator <<< I won't say more....
Coming from the other side, I agree with you all that the professor does not know what he is talking about. The one line I do agree with is “The under-funded and over-extended United States Patent and Trademark Office does not have the resources to adequately evaluate the burgeoning number of applications”. Other than that, a lot of academic BS.
He acts like “patent trolls” are something that just started in the last decade or so. There have been such “trolls” for many times that period. We used to call them “submariners” (among other things 🙂 ). Guys like Lemelson & Hyatt have perfected it decades ago.
One pair of patents that I know of were filed back in 1952. They did not issue for 20 years (1972)! Because of the applicant repeatedly trying to copy claims (I think around 40-50 proposed interferences; about half granted) among other delaying tactics a basic idea did not issue for a couple of decades. By that point, his broad, basic idea was in use in all types of devices and he was able to collect royalties from many top-name companies. Even after a couple of re-exams, most of his claims were found valid (at least from a prior art point of view; 112, 1, may have be debatable).
His invention? An exclusive-OR (XOR – called an “AND-OR-NOT” in the patents) for comparing two patterns. You want to guess how many XOR circuits were in use by the mid-70’s?
Bottom-line, unless you have worked in the field, you don’t know what really goes into the process. Us examiners do not know all of what you lawyers have to take into consideration when filing or responding, since you have concerns that are not ours. Similarly, you lawyers (unless you have worked in the office (preferably recently) do not really know what goes on from the examiner’s end. Both sides have ideas, but do not know the full picture. And, once you are away from it a little while, it is different in many ways (so, if you worked at the office 10-15+ years ago, much of what you knew no longer is accurate or, possibly, relevant.
thanks,
LL
Mr. FPW:
For whatever assurances it may provide, I do not view the law as the province of lawyers, be they in academia, private practice, etc. All citizens have an important stake. My views are limited solely to that select group who give the impression they are “scholars”, but their work product does not stand up to even modest scrutiny. I might note that in other contexts my views apply with equal force to those of my legal bretheren who undertake legal representation on matters of law for which they have virtualy no substantive experience, and yet exhibit not the slightest reluctance to express a opinion to a client that in many instances is exactly backwards from what the law actually says. By way of trivial example that has arisen more times than I can count, a client walks in and asks an in-house general practitioner what can be done to help protect subject matter conceived or first actually reduced to practice under a contract. grant, or cooperative agreement subject to the Bayh-Dole Act. Would it surprise you to learn that in each of these instances the client was initially advised that no protection was available since the work was done with government funds and, hence, the government retains all right, title and interest to the work? Based upon this advice business decisions were made that were, shall I say, a bit less than optimal.
Merely FYI, anytime an invention arises that is subject to the provisions of Bayh-Dole, it is useful to be familiar with the terms contained in Section 203 to Title 35.
“You might want to add private non-investing citizens also paying for the research through taxes (they forgot to include, bottom left corner of slide 9).”
Yes, and don’t forget the patent license without which (or its equivalent) the whole cycle would not be a closed-loop and self-sustaining. [I realize some R&D would take place without patents, but it would be minimal, and the cost of university-research without licensing might in many cases become prohibitive.] Just think of all the APPLIED *and* new research (with its attending beneficial results) which the royalties from Myriad bring to the world, if you don’t think Myriad is behaving nobly on its own. (And you may be right about that, but the free-market system tolerates such behavior very well – economically speaking – for limited times at least.)
By the way, Universities will be one of the hardest hit by “patent reform” as it’s currently embodied, and by the new (enjoined) rules. That won’t be good for basic research.
P.S. I’m actually glad my tax dollars go to NIH, DARPA, etc.
Yes, thanks Anon, I was present for that very informative presentation given by their marketing director.
I believe the information that the committee gleaned from that presentation was that Myriad is in the business of educating doctors and health care insurers the importance of using Myriad to screen for breast cancer. Noble indeed.
My memory is also refreshed from looking at some of the slides. It seems to me that VC provided funding for possibly APPLIED research and development, not the basic research that lead to the discovery of the gene.
You might want to add private non-investing citizens also paying for the research through taxes (they forgot to include, bottom left corner of slide 9).
“…wasn’t BRCA1 a discovery of the University of Utah? Didn’t NIH fund the research? I didn’t realize VCs were doing much in funding basic science in universities. I am aware that some companies do so. Doesn’t Utah own the patent and exclusively license it to Myriad (co-founder is also discoverer).”
And how do you think Myriad got the money to license and commercialize the discovery? I believe you can find the answer on page 9 of this PowerPoint presentation:
link to www7.nationalacademies.org
“(very likely without Myriad the test still wouldn’t exist)”
If you believe that, you have been seriously misinformed.
Words mean what words mean. It is not the absolute definition that is tested. Rather, it is the consistency of the meaning of the words. It is very easily measured. In fact the probability that the same teachings can be used to reject claims of different technologies will go far in distinguishing legitimate interpretations for result-oriented interpretations.
Dear Me:
Congratulations on your Ph.D. in genetics and your JD. Re: your comment “it was a gigantic risk for the VC guys who invested”, wasn’t BRCA1 a discovery of the University of Utah? Didn’t NIH fund the research? I didn’t realize VCs were doing much in funding basic science in universities. I am aware that some companies do so. Doesn’t Utah own the patent and exclusively license it to Myriad (co-founder is also discoverer).
My point wasn’t that it was a wonderful finding by a University and didn’t have a great back story regarding the rush to discovery (if I recall there was a Berkeley scientist doing similar work) and we cannot forget the NIH funding that made much of this discovery possible, and how important and chancy that discovery was…I digress.
My point is not that Myriad isn’t making money on the test, that their lab is the only place you can go to get the test done. That might be good for business and reward innovation, but that doesn’t assure me that their lab is 100% reliable. Sometimes I’d like a second opinion, and not from the same doctor, not from the same lab, and certainly not from the same Ph.D.
MOMMA-
In you test most steps are abitrary, so we can get any result we want. I also note to really do your test you need a law and science expert in each area for every test – a rare instance.
What of uncited art? What if it was most relevant? That makes a good patent?
How do we determine a common teaching? Under the MPEP the Examiner should only cite the best art, thus hopefully there isn’t alot of common teaching, and if there is it likely isn;t what is inventive in any reference.
Can’t different Examiners use different combinations from the same art to invalidate different inventions?
Your test sucks…
Simply ask yourself this – would you rather not have a BRCA1 test (very likely without Myriad the test still wouldn’t exist) or a test owned by Myriad for a period of time? Seems a simple choice, and the reason that patents exist in the first place.
I propose the following test by which to measure the patent quality of the United States Patent and Trademark Office.
1. Identify prior art references applied to the claims recited in a predetermined number of of different patent applications, e.g., at least two.
2. Identify common teaches of the references identified in item 1 that have been asserted in support of a rejection of any claim.
3. Ascertain the interpretation provided by the examiner for the teachings identified in item 2.
4. Identify the instances in item 3 in which different and/or conflicting interprations were identified.
5. Take item 4 divide by item 3 multiply by 100 and obtain a percentage.
0-59% F- fire managment
60-69% D-don’t pay management
70-79% C-status quo
80-89% B-Bonuses for management
90-99% A-Bonuses for everyone.
Policy wanker-
You aren’t an attorney, nor do you know much genetics. I have both a Ph.D. in Genetics and a J.D., so, here goes:
BRCA1 was one of the first genes underying a complex trait ever mapped, it was huge success. It was game changing – and it was a gigantic risk for the VC guys who invested. Myriad deserves their patent on every count. If you don’t reward Myriad, then the VC guys simply won’t fund the next company with a risky idea, but a large possible reward. Go jump in the proverbial lake, please.
As to academics-
They can be fine, but too many either never practiced or practiced little. Their ideas speak of this naivete and lack of knowledge. What is more stunning is the lack of real patent experience on the Fed. Cir. Come on, we can do better, and Dennis has at least practiced and should be a better screen.
Very well put Mr. Slonecker. It appears that you may support the proposition that many of the academics a shrills for certain interest groups.
Mr. Bloom,
Please note I do parse words in attempting as best I can to be accurate. Not all in academia are “tarnished”, but the majority of scholarly articles I have read over many years are anything but scholarly. It is one thing to provide a historical perspective on the development of law. The same can be said for “honest broker” scholarship calling attention to areas where case law is inconsistent, ambiguous, etc. It is, however, an entirely different matter when open advocacy from someone with virtually no experience in the full gamut of intellectual property law is passed off as “scholarship”.
One does not need, nor have I ever suggested, that membership within the USPTO bar is a condition precedent to speaking authoritatively (though I do find it interesting that all current senior members of USPTO management are not eligible to practice before the office on any patent matters). What one does need to do, however, is take the time to thoroughly understand all aspects of the “system” before prancing over to Congress and declaring that the system is badly in need of repair, and then promoting/advocating “reforms” bearing virtually no meaningful relationship to the problems at hand. Merely by way of example, academic advocacy for FTF versus FTI to promote international harmonization (what I call “We need to do it because everyone else is doing it.”). There are numerous issues associated with such a cardinal change that have never even been noted in the “scholarship” of many academics. Were these “experts” ever to leave their law school offices and saunter over to the research units of their universities, they would quickly come to the realization that things are not so clear cut. This is an issue that deserves thoughtful consideration and analysis, few “scholarly” articles of which I have ever read that suggest the author is cognizant of the pros and cons.
While there are obviously exceptions (many of whom seem to reside in positions of in-house counsel), most practitioners who have been at it a while are keenly aware that the advocacy of a particular position that benefits Client X may have disastrous consequences for Client Y. As a consequence, I have noted an unerring tendency on most of such practitioners to approach changes in a much more cautious manner, placing their focus primarily on proposals they believe are directed to the orderly and impartial progression of the law.
Academics play an important role, as is manifestly obvious from the works of persons such as Professor Nimmer and others of similar stature. In my view, however, far too many of the current crop seem more intent on expanding their CVs by publishing ill-conceived and poorly reasoned journal articles that obfuscate important issues.
Maybe “throwing money” is a bit charged but I used it as a catch-all for hiring more examiners, paying examiners more, providing more and better resources to examiners in the examination process, etc. It’s commonly suggested and doesn’t seem to work if it has ever been implemented though I don’t think the motivation behind the reform legislation is to decrease backlog and increase patent quality. Mostly it seems to me it is to decrease to cost to one industry sector playing the patent “game.”
The concerns of most “academics” as I read them is that cost of obtaining and protecting intellectual property is rising with no end in sight and that is of questionable value. Also the system has been perverted. In computing it may be preventing entry of valuable innovation because a small portfolio doesn’t stack up well against a bigger portfolio. The social benefit of disclosure isn’t working as patents aren’t being read in order to avoid accusations of wilfull infringement. In biotechnology some might argue that patents are granted on discoveries that are too far upstream that they could be getting in the way of some basic science or that some patent arrangements bring to bear serious health policy issues (Need breast cancer screening? Get Myriad’s BRCA1 test processed by Myriad’s lab. Want a second opinion? Get Myriad’s BRCA1 test processed by Myriad’s lab). These issues might not be pervasive, but they happen.
I do take issue with Mr. Slonecker’s view that since I am not a patent prosecutor (or even a lawyer for that matter) that I am not somehow a stakeholder in the patent system. We all are, whether or not we realize it to be so.
The focus of the academics is wrong. If there is a litigation problem that is across all fields of law, not just patent law. Thus, the focus should be on litigation reform in general.
Additionally, we must use patent law to advance competition . . . not profits. Competition is what this country is about. A company with too much market control should be precluded from owning patents and not shielded from smaller companies without market share attempting to advance innovation.
I also wasn’t suggesting that merely throwing more money at the examination process problem would be the solution. But it wouldn’t have hurt for the PTO to have had more of those dollars diverted by Congress (and then Executive) since 1990.
In my view, the current Patent Law Reform legislation is like trying to proscribe additonal drugs to someone who is really suffering from a “drug reaction” problem. What Patent Reform does is respond to the “symptoms” of the problem, not the problem itself. What is needed to reform the examination process is not more laws, but better management (and simplification) of the existing examination process. Better management of the examination process isn’t glamorous or glitzy (and it won’t happen overnight either which is unfortunately what Congress always seems to look for), but it’s the only way (after years of neglect as to “real problems” and especially letting “amateurs” head, control and develop ill-advised policy for PTO) to get patent examination back on track.
“No disrespect to Mr. Crouch, but I for one find the continuing stream of academic opinions a bit tedious and arrogant.”
As opposed to the continuing stream of self-serving rants and the repeated (unsupported) claim that only a registered patent attorney is qualified to opine on patent law?
In my (albeit limited) experience, 90+% of patent practice is procedural and has very little to do with law. Part of this is because of the very real problems at the PTO. Many of the office actions I receive are completely bogus, very often loosely based on a ridiculuous mischaracterization of the technical contents of the application and/or the references. As a result, I spend less time than I would like working on legal issues.
I suspect this is true through much of the profession. I don’t know if this is the reason, but I’ve met very few practitioners who are even interested in the “big picture.” Perhaps Mr. Slonecker is one of the exceptions. But painting all academics with such a broad brush is hardly the way to advance serious discussion on patent reform.
That said, Professor Dinh’s article seems more than a bit short on substance. But, this is an article in the popular press, not the academic press. And, judging from Mr. Dinh’s listing at Georgetown, he appears to be speaking a little out of school:
“Scholarly Interests: constitutional law; corporate law; Southeast Asian comparative law.” Why is he writing an article on a topic in which he doesn’t even have a scholarly interest?
I believe that the current patent system is indeed in need of reform. It appears that the number of patents that an entity can file must be judged based upon its market control. It seems to me that the basis for the Intellectual Property Clause is to foster innovation. Facilitating aggrandizement of monopoly power through the patent process by an entity that already weild tremendous market power is counter-intuitive. In short, the patent system is designed to spur innovation through competition. If one idea is patented it is left to a party to compete with the idea by coming up with something novel in order to avoid infringement.
The entire direction of the present discussion is wrong. Only by offsetting market power with the use of patent monopoly will the true intention of the founders be advanced. Thus, is a company weilds a threshold amount of market power the entity should be forced to surrender patent rights or be outright prohibition from owning additional patents and/or employing individuals who would create property that would aggrandize the monopoly of an entity already in control of a market.
This is the patent reform that is need, not that which destroys competition by keeping new companies from protection innovation.
“I guess my point is that one way you’re never going to fix the patent office is throw increasing amounts of resources at the PTO”
Who has advocated merely “throwing resources” at the PTO as a solution in and of itself?
This sort of strawman argument smells a lot like the arguments advanced in some quarters for dismantling public schools. Since any positive change will require $$$, critics can simply characterize the proposal as “throwing money” at the existing system and point to the failures of the existing system as “evidence” that “throwing money” at it “never” works.
It’s bogus. Assuming that filings at the PTO continue at their present rate, the PTO could surely use more skilled Examiners. That will require paying them competitively. That will require diverting more money to the PTO.
I am not entirely sure that the “back to basics” approach is the right model. While I am not endorsing the 2007 reform package that Congress has come up with either, I don’t think that we should disregard it entirley. One thing I do think is that hiring more examiners at better pay is not going to get the PTO out of the mess that they find themselves in. This seems like the solution of first resort and rarely translates into the kind of fix that moves the system forward in a meaningful way.
I was fortunate enough to have staffed the committee that was responsible for the original NAS report “A Patent System for the 21st Century” where some of the committees recommendations were picked up by Congress and translated into legislation. While researching for the committee I was curious what (if any) recommendations had been made in the past by the NAS regarding patent reform. At the time we thought this was the first ever report authored by NAS making recomendations on patent reform. We were, in fact, the third NAS study recommending patent reform.
The first report recommending patent reform came in 1917. The committee was chaired by Mr. L. H. Baekeland, the inventor of Bakelite. At this time the patent office was broken, staff were overburdened. One of the recommendations was to throw more resources at the PTO. Another was to create a single court of appeals for patent cases (realized in 1982).
The second report recommending patent reform came in 1936 (almost 20 years later). The committee was chaired by Mr. Vannevar Bush. At this time the patent office was broken, staff were overburdened. One of the recommendations was to throw more resources at the PTO. Another was to create a single court of appeals for patent cases (realized in 1982). Another was to publish patents prior to issuance (realized around 2001).
I guess my point is that one way you’re never going to fix the patent office is throw increasing amounts of resources at the PTO (hasn’t worked historically and over long time horizons), change isn’t always bad as long as it is sensible and measured, and in the spirit of the previous thread I’d like to point out that anyone who doesn’t agree with me is like Hitler…or Stalin…or the Taliban.
There seems to be a common thread running throughout the vast majority in academia who are only too willing to jump in feet first and pronounce the critical need for patent reform.
None of them have any familiarity with the substantive law other than what they appear to have read in journal articles from academic colleagues, “creative” reading of judical decisions at the all levels of the federal court system, seem to seriously believe all problems can be solved without soiling their feet in the nitty gritty facts faced by inventors and attorneys alike as they collectively wend their way through the administrative and judicial process, are not registered to practice before the USPTO and, hence, have never had to wade their way through 37 CFR and the MPEP, are only too happy to write “learned” articles and testify before Congress on the needs of a system within which they have never actively participated, likely have never read a patent (utility, design, etc.), likely have never crafted a license, likely have never had any meaningful interaction with the business sector, and, very importantly, appear to act on the assumption that practitioners haven’t a clue what the law is and what changes may be appropriate to improve the “system”. Last, but certainly not least, they really seem to believe what they say is meaningful, accurate, helpful, and insightful. In short, the are only too willing to “get drunk on their own wine”, and then pass along their drunken wisdom to others who have no means readily at hand to determine is they are spouting substance or bovine offal.
Of the above general observation, clearly the one I find the most disgusting is that practitioners are so “client-centric” that they cannot as a group generally see the big picture. Newsflash professors…you do not hold a “patent” on legal scholarship. Moreover, you are not the only ones who view our system of intellectual property and related law with dispassion and impartiality. As difficult as it may be for many in academia to believe, practitioners (many of whom do also teach these subjects to law students) typically see the “system” at all levels and are well versed in all aspects thereof. Perhaps the reason so many practitioners disagree with so many of the academic publications that are offered as “scholarship” is because so many of such publications are simply amateurish in content.
No disrespect to Mr. Crouch, but I for one find the continuing stream of academic opinions a bit tedious and arrogant.
Responding to Dinh’s comments on Patent Reform:
As I’ve said on other blogs, this Patent Reform legislation is, on balance, misguided, ill-timed and doesn’t address the primary problems in the PTO patent examination process. As I’ve also stated (and will stand behind), I frankly would be happy if all this Patent Reform legislation simply sank with no survivors.
I’m not opposed to all patent law reform, but this isn’t the time for it and this current package isn’t balanced or the pancea it’s portrayed by some (including Dinh). It certainly doesn’t address the primary problems in the current patent examination process in the PTO. I realize I’m a “heretic” on this, but frankly we need to a have a moratorium on patent law reform for a couple years, especially any that encourages the PTO to engage in substantial rule making. What the PTO doesn’t need right now is to be encouraged to engage in more rule making (which it will if this package passes). I’m especially opposed to giving the PTO any additional authority beyond what it currently possesses (which as properly alleged in the GSK/Tafas suits is less than what the current PTO hierarchy believes it is).
Other than insuring that there will be no further fee theft by Congress and possibly optional deferred examination, what ails the current PTO examination process could be dealt with without resort to changes in the law or even the rules. Instead, what’s needed (better selection of examiners, better pay, better training, better supervision, etc.) can be dealt with within the current framework, if the right management was in place in the PTO hierarchy (which currently isn’t the case). In short, we (the patent bar and examining corps in partnership) need to go “back to the basics” to restore the examination process to what it should be; that’s the only way for “good” patents to issue and “bad” patents not to issue. “Back to basics” may not be flashy or glamorous (and it won’t be easy or quick), but it’s the way to getting the examination process on keel.
“thereby eliminating the perverse incentives that foster litigation”
should be written: “thereby eliminating all incentives that foster litigation”
“Viet D. Dinh is a Professor of Law at the Georgetown University Law Center and Principal of Bancroft Associates PLLC, a consultant to the Coalition for Patent Fairness. Dinh previously served as U.S. Assistant Attorney General for Legal Policy at the U.S. Department of Justice from 2001 to 2003.”
I won’t say more….
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