Intellectual Property Directions

For academics, it’s “publish or perish”. For inventors, I’m hoping that the recent “Bilski” fiasco will start a mantra of “process or perish”, where I mean that inventors will realize that there is a difference between a patentable process and a (questionably) patentable “method”. If the PTO and the courts continue along the current path, I’ll be celebrating the “death” of so-called methods patents and method claims tacked on to apparatus patents.

It has become fashionable these days to file patent applications with “method” claims, either added to apparatus claims or standing alone. The patent law allows patents for “any new and useful process, machine, manufacture [manufactured article], or composition of matter” where I think processes should actually accomplish some result. “Methods” fall under the rubric of a process but have really become a bastardization of what a process should mean. In the extreme, an entirely new class of patent, the business method patent, developed but as the Supreme Court has just ruled, pure business methods are unlikely to comprise patentable subject matter.

But you are probably not involved in business method patents; instead you deal with apparatus or software patents. While software patents are often lumped with business method patents because they both deal with the intangible, software by definition is the series of steps needed to accomplish a result and are proper processes. It is the “method” claim that is overused.
Most apparatus patents these days have separate independent method claims tacked on. If your apparatus invention is, say, a spectrometer, then your patent attorney is sure to want to add a claim starting off with: “A method of measuring the spectral distribution of a light source comprising the steps of….” where what follows is a list of steps.

The list of steps usually reads something like:

Step1 –          Providing [the N key elements of the apparatus described in the patent].
Step N

Step N+1      Causing light from a light source to enter [the apparatus]

Step N+2      Recording the response of [the apparatus]

Although currently allowed as a “process”, I do not believe these “methods” are indeed processes as intended.
A patentable process is a unique recipe for doing something, independent of the patentability of the apparatus used in the process. Thus, in the field of optical coatings for glass, you might develop a unique time-temperature profile for depositing standard coating materials, in standard coating chambers, and reasonably say you have a patentable process.

There is not, generally, a “unique process” in operating a patentable apparatus in accordance with its normal operational procedures. Hence a majority of methods claims that are tacked onto apparatus patents are bogus. Such claims, if held enforceable when the infringer IS using the patented apparatus, are superfluous at best; the use of the patented apparatus for doing anything is an infringement. On the other hand, if the infringer is NOT using the patented apparatus, these claims are giving patent status to a concept [the concept being the use of an unpatented apparatus, in its normal operational mode, to achieve some result].
Of course, some methods claims in apparatus patents are appropriate – if you have developed a new class of apparatus, method claims describing the operational principles behind your device will help to protect your market from clever infringers who may try to work around your apparatus claims.

So I believe there is a method to the PTO’s madness and that method claims that cover how to operate an apparatus should be considered unpatentable subject matter, along with “business method” claims. Reserve you method claims for processes that really produce something or to cover a new class of apparatus.

We all know the saying that if something looks, walks and quacks like a duck, then it is a duck. In the detail land of patents, that sort of circumstantial evidence is not enough; we need to see the DNA. The “enabling description” of an invention - what elements it has and how to use it - must be supplemented by a written description - what the invention “is”.

This latter description is the first thing I ask an inventor for: “In one or two sentences, tell me what your invention is”.  I expect an answer along the lines of: “My invention is an oil filter that uses coconut husks to remove organic impurities from motor oil”. What I don’t want is a summary of the enabling description: “My invention is a metal shell packed with woven coconut fibers wrapped in a double helix around a plastic core. You pump oil through it at pressures above 10 PSI.”

Why do I care? In what to some seems a paradox, the Court of Appeals for the Federal Circuit (CAFC) affirmed an earlier ruling that a patent must include a written description of the invention that goes beyond explaining to someone of skill in the art how to make and use the invention. To an inventor, the distinction between a description of what the invention is and a description of how to make and use that invention will be subtle indeed; to an infringer, finding that subtle difference can be worth a lot of money.

In effect the court said that a pure enabling description was like a bare bones cookbook recipe in which the how to make is included but you are never told what you are making!. Take flour, sugar, shortening, leavening, and water, mix them until smooth, and bake for 1 hour at 325 degrees in a greased cake pan. You can follow the steps but it’s up to you to guess what it is you are serving. Without a written description you almost have to try it to find out if it’s a cake or a giant cookie.

The ruling is directed to an infringement suit between Ariad Pharmaceuticals and Eli Lilly. Ariad was appealing its earlier loss in which its patent was ruled invalid because it lacked a written description (although it did explain how to make and use the invention). Although relating to a pharmaceutical patent, the ruling can be applied equally well to apparatus and process (AKA method) inventions.

Interestingly, both Ariad and Lilly effectively agreed that both types of descriptions are required. The difference between their briefs to the court lay in how they felt the written description requirement could be met.

The bottom line is that the Court ruled that a patent specification must have, and we should therefore include, a clear description of what our invention is, along with the explanation of how to make and use it.

A recent issue of the on-line Harvard Business Review “The Magazine” has an interesting and provocative Q&A with Oded Shenkar, who, they say, exhaustively reviewed research on major business-model innovations and on breakthroughs in eight scientific and academic disciplines, ranging from history to neuroscience. In all cases, he found imitation to be a primary source of progress, even though that progress often went unrecognized by executives and scholars. He also discovered that good imitation is difficult and requires intelligence and imagination.

While I don’t know how valid his research is, I strongly agree with his key business finding; that being the holder of a seminal patent does NOT always position your company in the best competitive position. In fact, he believes the data says that companies that are adept at “imitating” [what I prefer to call "designing around" or "building off of"] other companies’ intellectual property are often the big winners in the marketplace.

It’s important to note that Shenkar is NOT suggesting infringing - in fact he is pointing out that “imitators” are actually doing exactly what the patent system was set up to facilitate:

Good imitators don’t wait [until an idea is successful in the marketplace]; they actively search for ideas worth copying. And they often look far from their industry or home country. They also don’t just copy an idea, they come up with a cheaper or better—increasingly it’s cheaper and better—mousetrap. They disrupt the innovator, whose costs are higher by a third, on average, and who’s still sinking investments into the innovation while the imitators are building an offering based on the market reaction to it. [emphasis added]

The patent system is a contract between inventors and society. We (society) give inventors a limited time of exclusivity on their inventions in exchange for teaching us about this advance in the state of the art - so that someone else can take that information and advance the art even further. If you, as an inventor, didn’t realize that this was the bargain you were making, well, you know it now.

Crank up the music! Turn on the camcorder! And turn your kids loose on the dance floor! YouTube is safe again for you to post those simply adorable videos of your child stumbling his or her way through Purple Rain. Yes, Universal Music, the same company that made you afraid to go in the water with “Jaws” and set out to make YouTube a scary place too, has been given a second dope slap by the Electronic Freedom Foundation and District Court Judge Jeremy Fogel.

The case started a couple of years ago when Universal, trolling the internet, uncovered a significant violation of their copyright in a 29 second video of Stephanie Lenz’s baby “dancing” to a Prince song. Swinging into action immediately to fight this threat, Universal relied on the Digital Millennium Copyright Act to sent a take down order to YouTube.

Luckily the EFF took up Ms Lenz’s case. According to Zusha Elinson on Law.com,

The Electronic Frontier Foundation sued Universal on behalf of Lenz in 2008, arguing that the music company’s lawyers should have taken a moment to consider whether Lenz had a fair-use right to post the clip before firing off a takedown notice to YouTube. YouTube removed the video, but restored it six weeks later when Lenz filed a counternotice.

In the most recent action, Judge Fogel ruled that Ms Lenz can recover some level of damages. Quite reasonably, the EFF asked for damages to make real a deterrent for copyright holders who abuse the takedown process of the DMCA. Universal, of course, argued that Ms Lenz should only be allowed to recover financial damages caused by their overzealous application of copyright (which of course are essentially zero) rather than to receive compensation for the violation of her right to post the video. The judge agreed, writing;

Requiring a plaintiff who can make such a showing to demonstrate in addition not only that she suffered damages but also that those damages were economic and substantial would vitiate the deterrent effect of the statute.

Now we wait to see what damages are assessed. But in the meantime, it’s safe to go back in the water.