Recent Headlines in the IP World:
- Ian Lopez: Drug Patent Database Revamp Falls Short of Tackling High Costs (Source: Bloomberg Law)
- Atty. Nancy Pei: 2020 Highlights in Canadian Life Sciences IP and Regulatory Law (Source: JD Supra)
- Bob Yedid: Motus GI Expands Intellectual Property Portfolio with U.S. Patent for the Pure-Vu® System’s Universal Method to Mount on the End of Most Commercial Colonoscopes (Source: Yahoo Finance)
- David Phelan: Apple TV Could Have Brilliantly Different Remote Control, Patent Reveals (Source: Forbes)
Commentary and Journal Articles:
- Doni Bloomfield and Prof. Aaron S. Kesselheim: Biden Can Lower Drug Prices Without Congress Doing Anything (Source: The Washington Post)
- Ian Lopez: Are Patent Judges Unconstitutional? The Arthrex Case Explained (Source: Bloomberg Law)
- Prof. Karen Sandrik: A Uniform Grace Period: Promoting International Research and Development Collaboration (Source: SSRN)
New Job Postings on Patently-O:
The Sandrik Paper on harmonising the Grace Period is founded upon a misconception, that:
“Many scholars and policymakers have argued that the first-to-invent priority rule is the fairest approach to resolving priority
disputes among competing claimants.” As expressed by Senator
James E. Risch, “The person who created the invention gets the
benefits of that creation, not the person with the fastest tennis shoes.”27
It isn’t “the fairest”. What’s fairest is to award a scope of protection that is commensurate with the disclosed and enabled contribution to the art. To give the patent to the one who was first to conceive, even if thereafter diligent, misunderstands the purpose of the patent system, to make inventive contributions available to the public at the earliest date, that of the WO or A publication 18 months after the earliest PTO filing date. It’s the enabling disclosure that is the Quid pro Quo for the patent grant, not the mere conception of a bright idea.
Harmonising on a common Grace Period will do more harm to innovation than good, because it will encourage early publication by inventors of non-enabling disclosures which will, in turn, weaken rather than strengthen the resulting patent grants.
You rely far too heavily on that publish date.
Mere conception gets you nothing and is NOT the point AT point.
The point about the ‘fastest tennis shoes’ is actually a nod to the reality that patent systems MAY (and the US Sovereign HAS) choose to reflect that solo inventors and those outside of large monied interests should be encouraged, and that it is merely reality that there is a span of time between conception and diligent reduction to practice, and that the Sovereign has chosen — AS THE MOST FAIREST (and best) way to promote engagement with innovation.
The misconception is your own, and arises because you only see what you are already familiar with, and lack a broader understanding of how innovation works and what OUR Sovereign wants in the way of those being involved.
Your “what is published” is a myopic view and one that does not reflect that there are indeed TWO parties involved with an exchange.
Weakening may occur – but not for the rationale the you go to.
The Bloomfield and Kesselheim piece has a lot of useful insights. The next director should raise application and search fees and plow the revenues into hiring more examiners so that the PTO can give more examiner-hours to each application.
I think, however, that if such a policy were enacted, they are going to be disappointed about little effect that this actually has on drug prices. The obstacles to free market competition in pharmaceuticals has much more to do with FDA law and much less to do with patent law than many want to admit.
The very example that Profs. B & K give—insulin prices—is a perfect example of this point. Porcine insulin is a more-than-century old technology for treating diabetes, so it is long since “off patent,” even with regard to the sorts of follow-on patents about which the professors complain. The obstacle for competition in insulin that could drive down prices comes not from patents, but rather from the FDA’s unwillingness to approve any insulin for sale other than the latest generation of insulin glargine. Given that these latest generation insulins are actually new technologies covered by first-instance patents, tinkering with patent law will not much affect prices in this market. If you really want to achieve price competition in insulin, you need the FDA to continue to allow the sale of older insulin technologies even once new insulin derivatives come on the market. This is a matter for FDA law changes, not patent law changes.
“The next director should raise application and search fees and plow the revenues into hiring more examiners so that the PTO can give more examiner-hours to each application.”
Would not improve “patent quality” one bit.
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