Intellectual Property Directions

Can you get a patent for a new use of an existing technology? I was a room monitor at last week’s “Ignite Clean Energy” competition semi-finals; that meant I needed to stay out of the evaluation of the presenters. It was tough to bite my tongue as semi-truths flew around the room but the one discussion that was particularly troubling was the suggestion that a presenter had applied for a patent covering all use of a known technology to his problem. Ain’t gonna happen, at least not in any meaningful way.

This idea that you can get a broad (and enforceable) patent that will prevent competitors from applying an existing technology to whole area of use - a so-called “application patent” - just because you think you were the first to think of making that connection is not limited to naive young entrepreneurs. Like children at the make-your-own-sundae bar our eyes are bigger than our stomachs, we often think we can stake out entire fields of use just by stating the obvious (that technology X can be used in area Y). And the USPTO, pre-KSR, acted as our enabler, granting patents that never should have seen the light of day. 

That’s not to say you shouldn’t try to get some patent protection - rather, I am saying that the patent protection that you get is proportional to how unexpected or (heaven help us) non-obvious your invention is.

Consider Dannon’s Activa® yogurt. As part of the pro-biotic fad they claim that including  naturally occurring intestinal bacteria in the yogurt helps with bowel regularity (presumably by increasing its population in the bowel). We hope they’ve carefully cultured the particular strain of bacteria they use, perhaps even genetically modifying it.

Can they get a patent for the use of any intestinal bacteria in foodstuffs for the purpose of improving health or regularity; doubt it. Can they get a patent for a new “yogurt food” that includes a dose of their particular strain of bacteria; perhaps (except it appears someone else already has, see US7195906). Can they get a patent on a genetically modified bacteria; almost certainly.

The lesson is for those of us on finite IP budgets is to carefully evaluate what we really have and to adjust our patent strategy to match.

Independent inventors and inventors at small companies are always so enthusiastic about their inventions. They are excited and want to get their patent so they can start marketing their product. We’re usually about 20 minutes into the conversation when I have to pop the question…”But does it work?”

What I’m really asking, with patent jargon stripped away, is whether the invention has been reduced to practice. The patent world views invention as a process that is spread out over a period of time, sometimes days but more typically months or even years. The invention process has three distinct phases: inspiration, perspiration, and reduction to practice. A (valid) patent can only be issued on an invention that has been reduced to practice - one that operates as described in the patent specification.

Overly enthusiastic inventors, abetted by sluggard examiners at the patent office, often want to file a patent application immediately after the “Ah ha” moment, the inspiration. Examiners, looking primarily for anticipation, obviousness, and specification support for the claims, often seem unworried about the actually functionality of the invention. And certainly there is no explicit proof of reduction to practice, of operation as intended, required in one’s patent application.

Skipping the reduction to practice (RTP) step, or at failing to document that step adequately, can cost you your patent. If you file before RTP, your application might not include modifications to your invention that are needed to make it work; those modifications might be just the tip-off opposing counsel needs to get your patent invalidated.

Or you might find yourself in the same shoes as HAROLD R. GARNER, who lost his interference battle because he could not prove his invention was reduced to practice at an early enough date. The examiner rejected his claims as anticipated by the earlier filed “Quate” patent. To provoke an interference with the Quate patent, Garner amended his application to copy the claims of the Quate patent. Garner, as the junior party, had the burden of establishing prior invention. It is important to remember that the law grants the patent to the person who is first to conceive of the invention AND diligently reduce it to practice.

According to the court decision, Garner attempted to establish his priority by submitting: (i) photographs of a device he allegedly built before the filing date of that prior art reference; and (ii) lab notebook pages that allegedly showed that the device worked. To corroborate his claim that he had built the device depicted in his photographs, Garner also submitted a one-page declaration of an independent party, John Fondon. The CAFC ruled that Garner’s submissions did not sufficiently corroborate his claim of actual reduction to practice. His photographs and lab notebook pages themselves do not prove operation and the Fondon declaration, alas, only states that Fondon saw the device shown in the photographs in Garner’s laboratory in November 1997. Fondon does not testify that the device operated or worked for its intended purpose. In fact, Fondon does not indicate that he ever saw the device operate. At most the Fondon declaration corroborates the existence of a device purportedly shown in the photographs. As the court said “corroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice. It is also necessary to corroborate that the device worked for its intended purpose.”

Have you ever rushed a patent application through before you actually proved your invention works? Have you ever tried to file a patent application, particularly a provisional application, on a concept? If so, consider that although the patent examiner may give you a bye regarding reduction to practice, failure to document that your invention works as intended by your filing date may result in saying “goodbye” to your patent rights.

Diana Ross and the Supremes said You Can’t Hurry Love but… apparently you might be able to patent it. The TV news around Boston (see video) a couple of days ago let itself get sucked into the publicity buzz for a new matchmaking web site. The “patent pending” differentiator for this site is that it uses an analysis of your DNA when making a match. They claim that animals (including people) are attracted to mates who have different DNA characteristics than themselves. They point to many non-human animal studies but then stretch the significance of the limited human data when they use the “sweaty tee shirt” experiment (women found the body odor of only DNA-matched men attractive) and a single 48 subject monogamy study to suggest that the same DNA effect is useful for identifying good matches for human relationships - presumably something more than procreation is the goal of people using this sort of site.

The hook here is that, as the site says, its matching service is “patent pending”; specifically application 10/707,124, which is in its fourth year of pendency. The application as amended has been rejected by the examiner on several grounds and the inventor, who has filed pro se, cannot see the forest for the trees. The inventor has responded to all the easily correctable defects in his application - a misspelled word in a flow chart, using the legend “Figure 1″ when there is only one figure, not including a tangible “product” of his method claim - and ignored the examiner’s rejection of obviousness in light of the prior art.

Although the examiner cited a specific article wherein mice select their mates at least in part on each other’s DNA-based scent, I wonder how any patent can be granted for any sort of “match two entities based on samples of their body chemistry”. Didn’t we figure out blood typing a long time ago, and aren’t the specific matching criteria simply the (unpatentable) observation of naturally occuring properties. Do you think any “typing” application is patentable?

What’s ironic about this rejection is that it is based on the very type of “scientific article” that the web site incessantly points to as support for its uniqueness among matchmaking sites!

I was actually surprised that this application was NOT for a “business methods” patent. That twist was picked up by another company selling DNA based perfume (see AromaMatch Patent Application). But that’s a different story.