navigating the patent maze

Almost as often as I encounter the misperception that having a patent means "guaranteed" income, I encounter the misperception that a patent application has no value - can’t be licensed - and, to add insult to injury, when it is published the whole world knows what you are doing.  Moreover, you have no recourse to stop the wanton use of your invention. 

While I have explained that applications do indeed have value, I have acknowledged that very little, if any, recourse is available against the "infringer" and even then, royalties are not available until and unless the patent is granted with claims substantially similar to those published and the infringer has actual notice of the publication.  (See USC 35 154(d).)  Until now.  Just yesterday, the Federal Circuit appeals court in the U.S. has approved of sending a warning letter before a patent issues, warning of possible infringement of claims in a pending, published patent application. 

Stephens v Tech Intern (04-1215)

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One form of legal protection for biotechnology inventions, which is not often used, is trade secrecy. This right, in contrast to patents and copyrights, is not registered and is of unlimited duration, as long as the holder of the trade secret makes reasonable efforts to maintain secrecy. With regard to keeping parental lines of hybrid seed as a trade secret, for example, identification by private code of fields of inbred parent lines of corn has been deemed, in the 1994 Iowa case Pioneer Hi-Bred v. Holden Foundation Seeds, sufficient to constitute a reasonable effort to maintain secrecy, even though the corn was grown outdoors and subject to misappropriation by informed “flashlight breeders.”  Furthermore, acquisition of the viable parent seeds that occasionally appear in bags of hybrid seeds is not antithetical to trade secrecy. But what if the parental lines are protected by Plant Variety Certificates (akin to plant breeder’s rights)?  One might think that the disclosure requirement to register a plant variety would destroy the secrecy necessary for maintaining the lines as trade secrets. 

The short answer from the District Court of the Western District of Wisconsin is NO, registration does not extinguish trade secrecy. 

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In a previous post, "The Public Patent Foundation Requests a Re-exam of the Latest Axel Patent", I reported that Columbia University had acquired and was enforcing a new patent (US Patent 6,455,275) claiming co-transformation of CHO (Chinese Hamster Ovary) cells.  CHO cells are frequently used in the production of human proteins. 

The litigation involving a handful of companies that balked at paying more royalties has taken an interesting turn; Columbia U has agreed to not enforce the patent against the companies (covenant not to sue).  The patent has not been invalidated however, and the re-examination of the patent continues at the US Patent and Trademark Office. 

The CREATE Act, which sets a new standard for obviousness, is about to be signed into law.  Under this Act, certain "secret" prior art that is the work of researchers from different research organizations will be disqualified as prior art as long as certain conditions are met. 

Specifically, there must be a pre-existing agreement for the research collaboration and:

1. the agreement covers the inventive activites;
2. the patent application includes an express statement disclosing the names of the parties;
3. the agreement is written;
4. the filed of the claimed invention is within the scope of the agreement; and
5. a terminal disclaimer is filed (if needed).

The Act will apply retro-actively — meaning that reissuing patents or pending applications can benefit from this law.  It is important that if you may be affected that you seek advice on writing or amending a research agreement appropriately. 

Intellectual Property Watch reports on the interests and
‘behind the scenes’ dynamics which influence the design and implementation of
intellectual property policies. A non-profit initiative, Intellectual Property
Watch aims to increase transparency, accountability and fairness in global
intellectual property policymaking.

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