“It’s never good news when your area of the law is on 60 minutes,” says Courtenay Brinckerhoff, partner at Foley & Lardner LLP at the 2013 AIPLA Annual Meeting. It’s no secret that the Association for Molecular Pathology v. Myriad Genetics case had more than its fair share of media buzz. The decision, holding that isolated DNA was not patent eligible, left many of us wondering how to best address the needs of our biotech clients going forward.
The main claims at issue in this case are the isolated DNA claims. Claim one is broad enough to cover naturally occurring DNA, and claim two is specific to synthetic DNA. In 2010, the district court came out with a decision holding that DNA was not patent eligible subject matter, which was a bit of a shock to us. Most of the rationale was focused on the idea that DNA embodies information, and regardless of what the actual molecule looks like, Myriad’s claim is for that defining characteristic. The case went up to the Federal Circuit where former chemist Judge Lourie held that technically the isolated DNA is different than natural DNA, because you have to break the covalent bonds to isolate the methylated gene. There were, of course, also policy reasons to uphold the claim like the reliance of the biotech industry on the USPTO already having granted these sorts of patents for nearly 20 years.
If you’re trying to draft a patent application for a computer-related invention, you’re basically left in a mess of opinions that the Federal Circuit refers to as CLS Bank Int’l v. Alice Corp. The decision, described by Judge Rader as a failure of his institution, left us wanting for just a tad –by a tad I actually mean a ton– more predictability. For now, we can only try to parse out why the opinions differed, take cues from our historical backdrop, and revise our prosecution strategy accordingly.
“A lot of times when we talk about patent eligibility we really need to know what the claims look like, so I thought we could spend four or five hours discussing this claim. Oh not enough time,” says Bruce Sunstein, founder of Sunstein, Kann, Murphy, and Timbers LLP at the 2013 AIPLA Annual Meeting. Fair point, Sunstein. So here’s the gist of CLS Bank. We have a computer readable medium claim in a format we’re accustomed to and that seems to be perfectly acceptable— program code for this program code for that. There are system claims that also would seem completely okay. Finally, there’s a method claim, which notably doesn’t include the word “computer.” Unfortunately for us, seeming completely okay was clearly not the test for patent eligibility. This was an en banc decision. The 10 available votes came out as follows:
Seven judges say method claims are not patent eligible.
Three judges say method claims are patent eligible.
Five judges say systems claims are not patent eligible.
Five judges say systems claims are patent eligible.
Judge Lourie writing with Dyk, Prost, Reyna, and Wallach says none of the claims are patent eligible. They reject the method claims for being too abstract. Then they say the storage and systems claims are just method claims in disguise, and so are also not patent eligible.
It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine, but fooling yourself into believing that you can and will do as good a job as a patent professional is an enormous mistake.
I cringe at times because some inventors will make a reckless choice, or choose to represent themselves because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art. It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, and in that case inventors are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue patent rights, or you have to do something on your own that is within your budget.
If paying a patent attorney is out of the question because of lack of funding you would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future. Rarely in my experience does an inventor have only one idea/invention. Creative people create, which means it can be particularly important to manage your budget wisely. Carelessly pursuing one invention and recklessly spending funds can make it difficult, if not impossible, to move forward when you find the truly great idea/invention.
Recently U.S. Patent No. 8,515,829(the ’829 patent) came to my attention. It is a patent issued to Google, which is titled Tax-free gifting. See Google Patents Tax-Free Gifting. The invention is interesting in its own right, but as I reviewed the patent I noticed an interesting figure — Figure 14 really caught my attention. Before proceeding to discuss the importance of Figure 14, allow me to provide some background information about this particular patent.
Generally speaking, the invention relates to a system and related techniques for gifting, and paying for, digital content, including media, such as audio and video. The core of the invention, as suggested by the title, relates to giving someone something tax-free. While the title may suggest the invention is potentially nefarious, or at least aimed at exploiting some tax loophole, that is not the case. The government is not going to be cheated out of collecting taxes. Instead, the invention relates to a method that allows for the giver of the gift to pay for the tax imposed by the jurisdiction where the gift (i.e., gift card) is redeemed.
Indeed, Claim 1 in the ’829 patent specifically includes a limitation specific to the payment of the tax that would otherwise be imposed when the gift is redeemed. Claim 1 recites (emphasis added):
Previously I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention. This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible. Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.
I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution. Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea. Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there. But it doesn’t have to stop there. Frequently you just need some help collecting thoughts and a little push in the right direction. In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.
One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting. So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product. If you can improve upon something, there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success with that trifecta.
Over the years I have had the opportunity to work with many inventors. In fact, over the years I have worked with or advised literally thousands of inventors, the overwhelming majority of which were first time inventors, or inventors who were for the first time attempting to protect their own invention for their own company. I have found that those who are serious are capable of meaningfully participating in the preparation of their own patent applications. Such inventors are highly motivated, but they just don’t know what to do, or exactly how to do it. Frequently they are afraid to mess things up by trying to do something themselves that is over their head, not because they are not smart enough, but rather because this “patent stuff” is quite complicated.
The patent rules at times seem arbitrary (because they are) and show little evidence of an overall thoughtful consideration. For example, why would you ever set up a regime where there are different time frames for completing various mandatory responses for free, but also having the ability to obtain automatic extensions of time of varying length? For example, you will have 3 months to respond to an Office Action issued by an examiner, but that can be extended for another 3 months. But if you get a Notice of Missing Parts you will get 2 months to respond, but that could be extended up to 5 months. Talk about arbitrary lunacy! How is an independent inventor supposed to navigate such a mindless maze?
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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