There are a great many people inside the patent industry that are working hard to convince themselves that the Supreme Court decision in Association of Molecular Pathology v. Myriad Genetics is not so bad. The argument goes that the Supreme Court explicitly stated that cDNA is patent eligible and that Chakrabarty remains good law. The trouble with both rationales is that they are incorrect.
It seems to me that anyone who tries to convince themselves that Myriad is anything other than a disaster is just fooling themselves. It does no good to put our heads in the sand and ignore what the Supreme Court said as if by doing so it will make a difference. Anyone who is honest with themselves knows how the district courts will interpret Myriad, and it will not be in a patentee friendly manner.
But before going to far, let me conclusively demonstrate with the Supreme Court’s own explicit language why those who are trying to convince themselves, and others, that the decision is workable are wrong.
On May 31, 2013, I spoke with Glen Duff, a client of mine who is the inventor of an exceptionally easy to use wake board. In part 1 of our interview, which kicked off our Fun in the Sun Summer 2013 series, we discussed how the patented Zup™ Boardis the best selling product that Overton’s has ever seen in their 37 year history, as well as the importance of an inventor’s perseverance, bringing on industry experts to advise and engaging in a project you are passionate about.
In part 2, which is the final segment, Glen talks about how the patented Zup™ wake board is being made in America, which at a time when so many larger operations are moving offshore and outsourcing jobs is really quite refreshing. While there is a certain allure to selling products made in America, Glen explains that there is also a very real business reason as well. It is quite difficult to reliably enforce high quality standards when manufacturing is overseas.
We also discuss how Glen views himself as his competition as he continues to engage in research and development for improvements and future products, and how great it is to be able to put on a pair of shorts and jump on a boat as part of R&D efforts. I also ask him if he could go back in time to give himself advise based on what he knows now, what advise would he give? This leads us into an interesting discussion relating to the relative merits of licensing versus manufacturing and distributing yourself.
The Zup™ is perhaps the most cool and innovative wake board you have ever seen. There are a number of other patent applications pending, trademark applications pending and ongoing research and development for future products. The Zup™ is special because literally anyone can ride the board and participate in the fun. I knew that Glen was onto something when he showed me a video of an early prototype in use years ago. There was a giant fellow — 6’8″ and easily 290 pounds — who managed to get up on the board with ease. I thought to myself, “that shouldn’t happen!” Being a big guy myself I understand how difficult, if not nearly impossible, it is to get up on a traditional wake board. In that same video I also saw an elderly grandmother get up on the board. Neither size nor upper body strength mattered. It was then I knew Glen had something special.
Glen will easily be one of my most successful clients ever when all is said and done and we are telling our stories at our retirement parties. An inventor on several patents prior to his entry into the wake board market, Glen has simply done everything right along the way. He has listened to advice and has surrounded himself with an all-star advisory group of industry insiders who are very optimistic about the likely future success. Thus, this is a story of growing success, but also one of perseverance and commitment. It illustrates the importance of moving forward with a patent position to secure rights that can be build upon, and how critical it is to surround yourself with people knowledgeable about the industry. As Glen explains below in our interview he managed to connect with several key industry leaders who helped open doors for the Zup™ and who are on his advisory board.
Rachael Lamkin is a patent litigator who recently became Associate General Counsel at Blue Ocean Enterprises, Inc. I have known Rachael virtually for several years, communicating with her both via e-mail and via Twitter (she is @Rachael_IP on Twitter).
Occasionally I have tried to convince her to go on the record with me so we could have a more in depth conversation for publication. After an exchange about six weeks ago relating to patent trolls and the definition of a patent troll I proposed the idea of an on the record conversation about patent trolls, which Rachael accepted. On May 10, 2013, we had the following conversation.
During our conversation we discussed our various definitions for a patent troll, the difficulty of coordinating a joint defense in a patent infringement case, potential solutions and a program that she is involved with called Troll Bono, which is a pro-bono effort to assist companies and individuals who are facing troll lawsuits.
UPDATED June 13, 8:24pm ET (see comment #15 & #19)
Earlier this morning the United States Supreme Court issued its much anticipated ruling in Association of Molecular Pathology v. Myriad Genetics. Justice Thomas wrote for a a nearly unanimous Court, only Justice Scalia wrote separately and he concurred in part and concurred in the judgment. The decision is not long, and approximately half of the decision is background, yet at the end of the day much damage has been done to the biotechnology industry, the medical industry and the patent system. Indeed, the assault on patents continues.
According to Todd Dickinson, Executive Director of the American Intellectual Property Law Association, the outcome was fairly predictable given the oral argument, although 9-0 was a bit surprising. Dickinson told me via telephone earlier today the the decision itself is disappointing because it “keeps framing an anti-patent narrative.” He went on: “Patents are terribly useful to incent innovation and necessary to provide funding. If we undermine the patent system further I think we will be shooting ourselves in the foot.” I couldn’t agree more!
There is no doubt that the Obama position will be loved by Google and other Silicon Valley technology giants that despise the patent system. Given the revolving door between the Obama Administration and Google, the long-term close relationship between President Obama and Google (see here, here and here), and the fact that patent issues don’t resonate with John Q. Public, it seems likely that the President stepping in now to allow him to tout that he is engaged with issues of importance in the minds of tech giants who will be asked for large checks later this week.
But what executive action could the President really take that would make a difference?
Frequently inventors will ask me if it is a good idea for them to prepare and file their own patent applications. Whenever I am asked such a question I suspect the person doing the asking already knows the answer, but is hoping against hope that they might find someone who will tell them what they really want to hear.
You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix. You won’t die if you screw a patent application, which is virtually inevitable, but you will not likely be pleased with the outcome. If you do achieve rights they will be far more narrow than necessary and you will have created an unnavigable prosecution history that will almost certainly make the claims you do have rather useless.
Having said this, it is not at all uncommon for inventors to want to attempt to draft and file patent applications on their own. The cost of hiring an attorney to draft a patent application can price some inventors out of the market, so they are left with the choice of doing nothing to pursue their invention and dreams or trying to do something on their own. Inventors who are going to attempt to draft their own patent applications need to go into the process with their eyes wide open, realize that the resulting patent application will be better if a patent attorney is involved in the drafting, and most importantly understand that there are a good number of things that you can and likely will do that will lead to a resulting right that is compromised or completely worthless.
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