Apparently Not Everything Can Be Patented

April 8th, 2009

Posted by: admin

A recent federal appeals court ruling (H/T Science Insider) determined that DNA obtained from a known protein cannot be patented.  Contrary to my first impulse, the U.S. Patent and Trademark Office (USPTO) had denied the patent and the petitioners appealed.  While I am hoping this slows down a trend of patenting everything under the sun, primarily as a defensive measure, reading the opinion suggests that USPTO just plain dropped the ball here.  However, this does mean that some researchers are inclined to just apply for patents, and hope that things stick.  Given the perpetual backload of the USPTO, some stuff will slip through the cracks that probably shouldn’t.

In the area of research, patenting items, whether they are gene sequences, research instruments, or life forms, is a double-edged sword.  While it makes sense to allow the limited property right of a patent to help recover some of the expense involved in developing the innovation, a patent barrier can chill research in various areas.  When looking at lab equipment, it’s unclear to me whether or not strictly enforcing the intellectual property on a new device pushes forward the leading edge of research.  Labs have plenty of associated costs as it is, and aggressive patent enforcement runs the risk of putting labs out of business.  Yes, research is expensive, but not all of the expenses are necessarily justified.

7 Responses to “Apparently Not Everything Can Be Patented”

  1. Maurice Garoutte Says:

    There is a feedback loop to control the negative effects of strictly enforcing intellectual property rights. A good rule of thumb is that it costs one million dollars per year to pursue a patent infringement suit.

    Just holding a patent protects the right to keep using the invention. Publication of the patent allows others free access to the technology. However, stopping others from using the technology requires a serious commitment of funds and personal energy.

    Keeping innovations secret is free, at least until someone else patents the idea. What to do, what to do?

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  3. David Bruggeman Says:

    I think a point worth adding is that the threat of a lawsuit is much cheaper than the actual lawsuit. And while initiating an infringement suit isn’t cheap, defending against it isn’t either.

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  5. jking Says:

    Here are two great op/eds by the late Michael Crichton that are on point with this patenting absurdity. The dates of each piece show his unusual prescience:

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  7. CurtFischer Says:

    “What is patentable” and reform of the patent system is a real challenge. The problem is that different industries have such different norms and practices. In the drug industry, for example, patents are rarely “defensive”; rather, the protected invention is either sold commercially or licensed to companies that hope to sell commercially. In the software industry, though, I understand that most patents are “blocking” patents, and very complex cross-licensing agreements between multiple parties are needed to circumvent IP issues.

    My instinct is that “blocking” patents circumvent the intent of the patent system and are, in the net, unhelpful for society at large. But how to make reforms which help stop “blocking” patents without eroding the rights of the “offensive” patent holders who want to move to market with their inventions?

    More on point to David’s post, I think another problem is the way the USPTO sets standards for patentability. They like to have uniform rules and policies, I guess, and uniformity probably leads rules that are easier to enforce and that probably help minimize complaining. But a policy like “novel, non-naturally occuring protein sequences are patentable, as are the means to recover the protein sequence from natural genes” might have made sense in the 1980s or earlier, but science advances. New methods become standardized. In the vast majority of cases now, how to obtain protein or gene sequences relevant to a particular topic is painfully obvious to “one skilled in the art”, but the USPTO seems slow to update their policy. As this case illustrates, though, maybe they just need time.

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  9. Maurice Garoutte Says:

    David – 2:
    While it’s true that a letter from a patent attorney threatening to sue is cheap it can also be an invitation for a counter suit. A threat of a patent infringement suit that is not followed up as threatened is a good example of tortuous interference. Better to draft a nice friendly letter noting the existence and scope of the patent and leave the threat implied.

    If you are an under funded start up company (cough, cough) a threatening letter to a large corporation could bring a fatally expensive law suit.

    The China factor:
    China treats patents as sources of information, not limitations. Adding China to the list of covered countries in a patent application is pretty much a waste of money.

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  11. David Bruggeman Says:

    You’re right, the way I described the letter opens one up to plenty of possible trouble.

    Here’s a Business Week article on patents, getting into a bit more detail of the expenses and challenges of litigation, which suggests that even the big companies can find them a hassle.

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  13. Maurice Garoutte Says:

    Good reference. I think I’ve got, the science is NOT settled.

    The part about going back over and over is true and is a good example of the patent attorney full employment program. All patent applications first claim to be the first invention to use the scientific method and when that is rejected (go figure?) the attorney backs down slowly to get the most general claims possible. The process takes time and money and chocks the system.

    If this process could be improved it would lower the cost of patent protection without changing the concept of what the protection means.