navigating the patent maze

Under United States patent law, if you are found to be a ‘willful infringer’(infringing a patent while knowing that you are infringing), liability can include up to triple damages and in exceptional cases, payment of the prevailing party’s attorney fees. The severity of the penalty spurs many companies to obtain a legal opinion about whether or not the company is infringing because a well-done opinion that concludes non-infringement will protect the company from a finding of willful infringement. In a recently-decided critical case, Knorr-Bremse, the Federal Circuit examined several issues about willful infringement. (See … recent post discussing one of the holdings in this case.) One of the issues decided was about the legal obligation to respect valid patent rights.
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A reader of this site has alerted me to his website www.asitri.com where you can get text or PDFs of U.S. patent publications. When a patent number is typed into the search box, the abstract of the document is returned along with all the U.S. patent documents that are referenced on the front page. Links are provided to the text at the U.S. PTO site, PDFs of the document, as well as other U.S. patents that have referenced the one of interest.

The advantages of this site are the PDF documents, it is no charge, and ready linkage to other U.S. patents that are referenced by and reference to the one of interest.

What is lacking on this site is the ability to obtain U.S. patent applications that are published. My own very small whinge is that (like many other sites) asitri does not work properly in Firefox 1.0, which is my preferred web browser these days.

NOTE: to use this site, you first need to know the patent number of the document you want.

The answer to this question can be had by flipping a coin - heads for dictionaries and tails for the patent text. I exaggerate a bit, but not much! In the United States, gone are any clear-cut guidelines for determining the meaning of a term in claims. The Federal Circuit (the court that hears all cases that are appealed from the trial court) has been doing “flip-flops” on this important piece of law.

One line of cases indicates that evidence intrinsic to the patent, e.g., the text of the patent, is the primary source for determining claim meaning. Extrinsic evidence, e.g., dictionaries, is only resorted to when necessary. This procedure is how I learned claim interpretation. (The analysis of the Junk DNA patents relied on this procedure.) Given that the “patentee can be his/her own lexicographer”, it makes sense. If the patent text isn’t used, then why do I write all those definitions?

The other line of cases looks to the intrinsic evidence only after establishing the “ordinary and customary meaning” of the claims as viewed from a person of skill in the art. Basically, a dictionary is first consulted. Of course, because all dictionaries don’t give the same definitions, figuring out which dictionary is appropriate (usually some sort of technical dictionary) and then which definition of those given for the term is the subject of much debate.

Hopefully, we will be put out of our misery soon. The Federal Circuit has agreed to decide on which approach is proper. The briefs are now being submitted. Maybe they will even get to the ‘right’ decision.

Benefit sharing of rewards from inventions based on genetic materials (e.g., plants, insects) collected in developing countries is not only much-talked about but is also mandated by the Convention of Biological Diversity (CBD). The CBD is an international Agreement (although not signed by the United States) that has three main goals: the conservation of biological diversity, the sustainable use of its components, and the fair and equitable sharing of the benefits from the use of genetic resources (See Article 15).

On an individual bases, in 1996, the University of California at Davis, initiated a benefit sharing program with Mali stemming from a patented invention for a disease-resistance gene isolated from African rice. The idea was to license the technology to agricultural biotechnology companies, such as Monsanto and use the income to improve the lives of the world’s poor people.

Over the last 8 years, I have heard many references to this program as a model and ideal moral stance. Yet, as revealed in a lengthy article in the Sacramento Bee , nothing has been resulted in the way of benefit sharing. Sadly, it is a philanthropic failure. In well-researched detail, the article shows just how difficult it is to craft licenses and illustrates many licensing pitfalls. Hopefully, institutions and scientists who want to give back help to the developing world can learn from this well-meant attempt and fashion a workable and successful form of benefit sharing.

Even though China’s patent law is only 20 years old, the system appears to be catching on in a big way. In 2003, over 300,000 patent applications were lodged (in comparison, in the U.S. there were ~355,000 applications filed in 2003). Lest you think that it is mainly foreigners taking advantage of the system, only ~55,000 of the 300,000 were filed by foreigners. Except that in China there are two classes of patents, “utility model” (more akin to innovation patents in Australia, petty patents elsewhere, and without equivalent in the U.S.) and ‘invention” patents (akin to utility patents in the U.S.). In the category of invention patents, foreigners dominate.

For more information, view a PowerPoint presentation on China’s patent laws and enforcement.

CREATE - the Cooperative Research and Technology Enhancement Act - was a bill in Congress that would amend the patent law on the non-obviousness requirement to create a safe harbor for inventions resulting from collaborations or research team efforts where team members are in different institutions.

The bill was passed by both the Senate and the House of Representatives, but must be cross-approved before being sent to the President for signing into law. Now that the Congress has adjourned for the political season, the bill will languish and is unlikely to get passed by this Congress.

The CREATE Act is a response to a Federal Circuit decision (Oddzon Products v Just Toys) in which the Court held that sharing of confidential information could be a reason to find an invention obvious when the inventors weren’t under an obligation to assign their rights to the same entity. Even Congress recognized the unfairness of this situation and its possible chilling of collaborative work.

For detailed information on this important bill, go to the horse’s mouth and read the Congressional Report on CREATE.

A hefty tome on claim construction, written by Harold Wegner, has recently been released on-line. The paper, “Claim Construction: Toward a Simplified and Predictable Body of Patent Law“, was prepared for a Foley & Lardner Intellectual Property Roundtable in Detroit, September 14, 2004. This paper is not light reading. I only wish that claim construction was simple and predictable. Lately, it has become very confusing and convuluted, as Hal Wegner explains. Moreover, it appears as if there is a different standard for biotechnolgoy inventions, especially those involving nucleotide and amino acid sequences.

Stay tuned as the Federal Circuit continues to confuse us all.