navigating the patent maze

Hurrah! The Indian Government has decided not to oppose the European Patent awarded to Monsanto for wheat derived from Nap Hal land race. Advice given to the Indian Government rightly recognized that the patent in no way affected farmers’ right to grow the variety in India.

News taken from The Financial Express, 13 March 2004.

One of the frequent criticisms I hear of the U.S. patent system in particular is the existence of “submarine” patents. This term refers to patents that issue very long after their filing. So a company or organization that has been happily proceeding along a path of commercialization of their product is blind-sided by a patent issuance, the existance of which was secret.

For several reasons, the number of submarine patents is diminishing: the U.S. now has a patent term of 20 years counted from the date of filing, and for the most part, patent applications are published 18 months after filing. Because these changes only took place in 1995 (patent term) and 2000 (publication), a few submarine patents have been lurking stealthily along, grandfathered in under the old rules.

The most prolific user of the old U.S. patent system has to be Jerome Lemelson. Patent applications he filed in the mid-1950s and that were granted between 1978 and 1994 are now being asserted against manufacturers of bar code readers and machine vision systems. While this strategy has netted Lemelson and the Lemelson Foundation as much as $1 billion in royalty payments, the gold mine is being shut down.

A U.S. District Court recently ruled that 14 patents of Lemelson’s are invalid because “Lemelson’s delay in securing the asserted patent claims is unexplained and unreasonable”. While this is good news for the manufacturers, it is not the end of the story as the Lemelson Foundation is expected to appeal the decision. In the opinion of yours truly, Lemelson Foundation is going to be sunk for good on this one. In the last few years, the Federal Circuit Appeals Court has not looked favorably on delays initiated by the patent applicant.

After three-year long trials, the British Government has approved growing of herbicide-tolerant corn. The corn is the product of Bayer CropScience. The permission is heavily labored with conditions however and expires in October 2006.

Only last year, the European Union removed a ban that had been enacted on growing genentically modified crops. The ban was justified based on health concerns but the United States has maintained that the ban (and the new laws on labeling and traceability of GM-ingredients) is an unfair trade barrier.

The Public Patent Foundation filed a request to the US Patent and Trademark Office to institute a re-examination of the most recently issued U.S. “Axel patent”, which is owned by Columbia University. The Axel patents essentially claim co-transformation of eukaryotic cells. Three prior Axel patents earned hundreds of millions of dollars for Columbia University, but expired in the year 2000. The most recent patent, US Patent No. 6,455,275 (the ‘275 patent), was granted in September 2002, and claims co-transformation of CHO cells. CHO cells are often used in production of recombinant medicines, such as EPO. Because the filing date of the ‘275 patent was 7 June 1995, the patent term is 17 years from the date of issuance. This patent will not expire until September 2019. It is no surprise then that this patent is currently the subject of at least 8 separate litigations brought by mostly big pharmaceutical companies, who are trying to get the patent revoked by courts.

The major basis of the litigations and the re-examination request is the same: the USPTO should have rejected the patent claims for “obviousness type double patenting”. This type of double patenting means that the claims of the second patent are obvious in view of the first patent and thus, are not patentable. It is possible for an applicant to overcome such a rejection by “disclaiming” any part of the patent term that extends beyond the first patent and declaring that the two patents are owned by the same person or company. If Columbia University had agreed to file the disclaimer, the newest patent would also have expired in 2000. Instead they were able to successfully argue against the double patenting rejection.

Recourse through either the court system or the Patent Office will take time, so do not expect a quick resolution of this issue.

The Public Patent Foundation is a non-profit organization that “represents the public’s interests against wrongly issued patents and unsound patent policy” according to its web site. A copy of the re-exam request can be viewed here.