navigating the patent maze

The U.S. Supreme Court has agreed to hear KSR v Teleflex, which will address the appropriate standard to apply in order to find an invention obvious.  According to the current standard, multiple prior art references,each of which disclose an element of the claimed invention, can be combined to show the whole invention - but only if the references contain some "motivation, suggestion, or teaching" to do so.  Many critics of the patent system often consider this standard to be too lax, leading to patents protecting "trivial inventions", in their view.  On the other hand, most inventions are new combinations of old elements, and in the extreme, a strict standard would lead to very few patents being granted at all.  Hopefully, the Supreme Court will come down somewhere in between these two highly divergent viewpoints. 

For more information, see Patently-O. 

In a previous post, the issue at stake in the U.S. Supreme Court case, Lab Corp v. Metabolite, was discussed.  This morning, the Supreme Court dismissed the case on a procedural basis thus not needing to reach a decision on the merits.  A dissent, written by J. Breyer and joined by J. Stevens and J. Souter, however provides insight into what might have been a "majority opinion" of the merits.  The dissent emphatically believed that the claim, directed to assaying homocysteine levels and correlating an elevated level with a vitamin deficiency, was a claim for a "natural phenomenon".  Natural phenomena are not patentable under U.S. law. 

Until such time as the Federal Circuit or Supreme Court in the U.S. revisit issues of patent eligibility, the claim - and claims like it - are valid. 

Reluctance or resistance to having a patent lawyer review articles for publication before submission is sometimes due to a lack of understanding about the purpose of the review.   The typical review is to identify material not contained in a patent application.   For this, time is needed to decide whether or not to submit the material in an application.  In this case, delaying submission of the article for a period of time is pretty much unavoidable.  A second reason, which is at least as important, is to ensure that the discussion is consistant with patent and business strategy.  The editing changes required for this are generally minimal and don’t invoke much of a delay. 

Pretty much all patent lawyers have at least one horror story about an inventor who wrote (or said) something inappropriate, which became a stumbling point.  While live presentations are harder for a patent lawyer to monitor, the written word at least offers an opportunity to avoid future problems.  In my experience, most of the issues in a paper for submission to a scientific journal are found in the background / introduction and the discussion sections.    For example:  in the background section of a  paper containing all the experiments and ideas that had been submitted in a patent application, the authors’ own work was described as the "obvious next step".  Wrong choice of words.  Even though "obvious" in this context was not meant as patent-legal "obviousness", a patent office would likely interpret the statement as an admission that the invention was obvious. 

In the extreme, a paper published after filing of a patent application and that was inconsistent with the invention has led to invalidation of the patent.  In Research Corporation Technologies v. Microsoft (Dist. Ct. Az. 2006), the patent was directed to a "blue noise mask" used in procedures to halftone digital images.  The stated advantages of the mask procedure - "visually pleasing" and lacking "low frequency graininess at every level of gray" - were disputed in the journal article, written by the inventors.  In the article, the inventors found the procedure led to "visually annoying clumps".  Worse still, this publication was not disclosed to the U.S. Patent Office as required by the patent rules.  The result?  The patent was invalidated and Microsoft also won $8 million in attorney fees because of RCT’s egregious behavior. 

So, as a researcher who wants your work published, please realize that the patent lawyer is just trying to ensure smooth sailing for you and your invention. 
   

The May 2006 issue of the Bulletin of the World Health Organization (WHO) contains many articles on health, treatments and intellectual property.  Link

Volume 84, Number 5, May 2006, 337-424

IN THIS MONTH’S BULLETIN

WHO’s Commission on Intellectual Property Rights, Innovation and Public
Health; Open access and copyright as alternatives to patents; Access to
medicines as a human right; Should genes be patented?; Access to
life-saving medicines stumbles on trade rules; Rich and poor countries
divided on patent treaty; Meeting the need for treatment: the
initiatives; Bulletin interview: do patents work for public health?