Patently-O Bits and Bytes by Juvan Bonni

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7 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 2

    Me thinks that David’s strongly-backed and well-supported letter to the PTO points the way forward to another lawsuit should the agency get fee setting / adjusting wrong.

    1. 2.1

      Yes David’s and the other 36’s letter to the PTO is really good.

      This is definitely worth a read.

    2. 2.2

      David’s letters to the USPTO are typically excellent.

      That channel is definitely one of his strengths.

  2. 1

    The Lietzan paper grabbed my attention, but suffers (a bit) from the very problem that it identifies.

    To wit, the Abstract of the article sets the table with: “ Scholars use the term when describing certain actions taken by the innovative companies that develop and introduce new medicines to market. But they are inconsistent in their descriptions of the circumstances to which the term applies.

    The clear implication is that current dialogue (and current policy deriving from that dialogue) is erroneous because people are talking about different things with the same word.

    This implication is then repeated with:
    The literature is similarly in disarray about what has been “evergreened” — an invention, a product, a price, a patent, or something else entirely.

    For this implicated problem, the author states that they have an answer:
    this Article offers an answer and, more importantly, identifies the implicit normative claim. In simple terms the normative claim in the literature is something like this: “an innovator should not enjoy an exclusive market and supra-competitive pricing for innovations that stem in some fashion from a separate innovation for which it already enjoyed a 20-year patent term. Or at least, a drug innovator should not.” This Article does not defend, or reject, this normative claim. Instead, it makes a different claim: that policymaking should be based on descriptive scholarship that is careful and precise about the relevant law and facts, normative work that is clear and candid about its claim and thorough in its reasoning, and empirical studies that document the actual problem the normative proposals and policymaking proposals are meant to address.

    I don’t have a problem with either of the author’s view of the stated implications, or of the author providing their version of an answer.

    I do have a problem with the attempted deflection of “This Article does not defend, or reject, this normative claim. Instead, it makes a different claim:

    Sorry but no. The fact of the matter is that in making the different claim, the author IS rejecting the normative claim BECAUSE the author has implicated that normative claim as being erroneous.

    Is this a PC artifact? Must an author state that they are not challenging some “Virtue Signaling position” (patents are bad), even when that is exactly what they are doing? There is a fundamental inconsistency in this “too soft” approach. This is an instance that being direct is what is needed because the current problem stems from too much ‘soft spin’ already.

    1. 1.1

      I was not aware of such alleged confusions of the meaning of the IPL-legislatively-debated [where it counts] term “evergreening” before such assertions in this article: “The ‘Evergreening’ Metaphor in Intellectual Property Scholarship.” It may well be confused by some academics, especially if not patent or FDA experts, and by confusing the two. But in what I have seen of its relevant IPL legislative debates context “evergreening” seems to have been quite consistently used to mean extending the effective patent term of a drug beyond the 20 year from filing date term of any one patent? Such as by obtaining later-filed [thus later expiration date] patents on different formulations or different delivery systems for that same drug – special encapsulation, time release, combinations with other drugs to reduce side effects, etc? [Which seems to me to be more of a PTO 103 enforcement problem?]
      I would be interested in comments from those with more interest in this subject, because U.S. drug prices are such a huge issue that it seems likely to inspire more draft legislation and real or hobbyist inspired patent law confusion.

      1. 1.1.2

        On a quick glance, Paul, I think that what you identify as the possible 103 issue is what has been often ‘misspoken’ in the literature.

        There is a heavy drum beat of ‘anti-patent,’ and the niceties of an examiner actually having evaluated applications under the law — including 103 — just do not hinder accusations of ‘extension of same product’ wherein NO such ‘same’ (legally) product is in play.

        Quite in fact, your own write-up here plays to a “same but different” connotation (not sure if you were even aware of that).

        If there be differences, then there be no same.

        It is entirely a different question if those differences pass the legal tests so as to any second application having an appropriate different term ending (as opposed to the misnomer of extending term.

        That is true of all art units.

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