Intellectual Property Directions

The key sentence in this article is

“Medical imaging company Hologic Inc. has settled patent disputes with a subsidiary of Johnson & Johnson Co. in a deal that will see Bedford-based Hologic pay out $12.5 million for one product [and pay ongoing royalties] and get ongoing royalties coming in from another.”

That is, Hologic reached into its patent portfolio [a year and a half] after it was sued by J&J in order to find a bargaining chip. Would J&J have let Hologic keep selling the product in suit if it did not have its own product in patent problems?

Hologic settles J&J subsidiary patent dispute - Mass High Tech Business News

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While admittedly a very special case, funded on both sides by very deep pockets, 1.7 BILLION dollars isn’t chump change to anyone. See http://www.bizjournals.com/boston/stories/2010/02/01/daily1.html.

One thing this settlement reinforces is the advice I always give clients: you only know you have a valuable patent when someone wants to copy your invention - either by licensing or infringing your patent. So the key to getting “the right patents, at the right time, for the right cost” is to ask yourself the question “If so, so what?” In other words, if you do get a patent issued on your invention (3 or 4 years from now), will anyone care?

• Will your competitors simply find another way to build a competing product, having seen your patent application 18 months from now?
• Will the cost of their R&D make your solution look attractive?
• Will they already have a competing, non-infringing product on the market by the time your patent issues?
• Will your approach represent a big cost savings?
• Will the state of the art already passed by this technology?
• Will you have the resources to defend your patent rights (or at least find an attorney to take your case on contingency)

Think carefully about these questions before investing in a patent. Remember that your patent can only stop someone from making, using, selling, etc starting on the day your patent issues. All of the sales the competition has made during your patent’s pendancy are not considered infringement.

Before committing to filing a patent application you should evaluate (with professional help) how broad your patent is likely to be, in light of the prior art and what your competitors are likely to do if they are blocked by your patent.

Like a vampire rising again from the grave, “business method” patents don’t want to go away without a fight.  It was just a year ago that the Court of Appeals [CAFC] ruled that Bilski’s “business method” for hedging commodities was not patentable subject matter. As much as I wished that the matter was dead, there are too many business method zombies, sucking the blood out of the patent system with their “inventions”, to let it go.

Last week the Supreme Court heard arguments in the matter of “Bilski” and it seemed to observers of the Court that Bilski may finally be dead but that the contorted CAFC reasoning may be thrown out as well. As I wrote last November (IP Directions 11/2/08), the very basis of the US patent system is the Constitutional phrase: “Congress shall have power … to promote the progress of science and useful arts…” Frankly, I doubt the founders would consider hedging risk in commodity trading part of science and the useful arts.

But the CAFC didn’t want to use such a subjective criterion in their decisions, so what is the test of process patentability? According to the Bilski decision, there is a two-part “machine-or-transformation test” for eligibility of process claims. First, eligibility may be demonstrated if a claim “is tied to a particular machine or apparatus.” Second, and alternatively, eligibility may be shown if a claim “transforms a particular article into a different state or thing.” Also note that the “tie” to a machine or apparatus must be a meaningful limitation in the claim.

I would have preferred to see methods of performing business/financial operations per se be declared unpatentable as not being part of science or the “useful arts” and damn the subjectivity torpedoes. As with “obviousness”, the courts will never produce a objective definition of an inherently subjective issue, so why try. If a patent applicant feels the patent office has inappropriately reject his or her application over a subjective issue, well, that’s why we pay the justices the big bucks - to apply their “wisdom”.

How about you - any blood-sucking business methods in your patent plans?

We’ve all hear the expression that a lawyer who acts as his own counsel has a fool for a client; well apparently that applies to doctors as well. Dr. Richard Lister, a psychologist, “invented” a new method of playing golf and filed for a copyright on a manuscript describing the method (essentially allowing golfers to use a tee for all shots from the fairways or rough) on July 4, 1994 under the misapprehension that the copyrighted document would protect his invention. That was foolish mistake number 1. Since he used an attorney to file for the copyright I’m assuming he did not explain clearly why he wanted the copyright.

More than 2 years later (8/96), after getting clued in that a patent, not a copyright, is needed to protect an invention, he filed a patent application on this method of playing golf. This was foolish mistake number 2, since it was unlikely that the patent would ever issue and perhaps even more importantly it was unlikely that any organization would start running Tee Golf Tournaments, leaving him to enforce his patent by chasing individual golf foursomes around the course to see if they use tees on the fairways.

Unsurprisingly, Dr. Lister has been unsuccessful these past 13 years in getting a patent issued; nevertheless he continues to spend money pursuing his dream. By my count, foolish mistake number 3. There have been several rounds of rejections and two appeals to the Board of Patent Appeals. He has just won a Pyrrhic victory in the Court of Appeals for the Federal Circuit (CAFC) wherein the Court vacated the PTO’s latest (2003) rejection, issued on January 31, 2003, in which “the examiner rejected the only independent as anticipated by his own, copyrighted manuscript. In the examiner’s view, the manuscript was sufficiently publicly accessible to be a printed publication because an interested researcher would have been able to find it by searching the Copyright Office’s catalog by title.” Since the CAFC ruled in his favor on very narrow grounds, Dr Lister will now probably continue his windmill-tilting pursuit of his patent.

The decision teaches us some important lessons about prior publication of our inventions and the use of the provisional application process to avoid the pitfall Dr. Lister has apparently just avoided. The key logic behind the “prior publication” bar to getting a patent is “… that once an invention is in the public domain, it is no longer patentable by anyone.”, even the inventor. However, in order to qualify as a printed publication a reference “must have been sufficiently accessible to the public interested in the art.” A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

Since “sufficiently”, “reasonable” and “interested” are subjective terms, each case must be considered individually and in context. In this case, Dr Lister’s manuscript was available to read in Washington but the Copyright office’s catalog is only searchable by author and firstfirst word of the title, so the CAFC ruled that one could not find this method of playing golf by searching on “advanced”, the first word of the manuscript’s title.

So what are some other examples?

• A thesis in a library, not yet cataloged or shelved is NOT accessible.
• A thesis in a library cataloged by student’s name and shelved is NOT accessible in a meaningful way.
• A document available at a single, perhaps distant location (viz., the copyright office)  IS accessible.
• A document (e.g., in a collection) available for perusal but not copying is available if the subject is easily understood.
• A document in a private, controlled collection is NOT accessible.
• A poster presentation at a conference is a prior publication if the conference has “interested” persons attending and the content of the poster is easily understood and remembered by viewers.
• A document is a prior publication even if it can be proven that no one actually looked at it.
• A purely oral presentation is almost certainly NOT a prior publication.
• Slides presented along with an oral presentation are a toss up (particularly with the ready availability of digital cameras).

The bottom line, of course, is that any material you are going to let out of your direct control may, as the Miranda warning goes, be used against you in a (patent) court. To avoid any question of prior publication, I advise people to file their documents or slides as a provisional application, understanding of course, that the ONLY “protection” this gives you is protection against a rejection based on prior public disclosure of whatever is in the document. Also, this meager protection is lost unless a regular application is filed within the year.