James Boyle discussing patent reform
James Boyle on patents:
But I think it is fair to say that over the last ten years there has been a growing chorus of informed scholarly concern about the direction in which the patent system is headed. That chorus is now pretty loud, so loud that policy makers may be beginning to pay attention.
[LBE note: as Professor Chisum pointed out, the patent reform movement was going nowhere until business (e.g., Microsoft) entered the picture. To suggest that scholarly concern brought us HR 2795 is silly. Further, whether the belief in a 97% patent grant rate is informed or scholarly is open to question. For example, Jaffe and Lerner bought into the Quillen/Webster analysis.]
What needs to be done? Some common suggestions include raising the obviousness standard, funding the PTO at higher levels and increasing training in specific technical areas, instituting a pre-grant “challenge” procedure, simplifying post-grant challenges, codifying a statutory research exemption to patent infringement actions, greater use of “march in” rights on publicly funded medical patents, and the abolition or dramatic reduction of business method patents. Each scholar has a different list of suggestions, but the lists overlap and many of these proposals are agreed to even by those who take a more sanguine view of the patent system. The consensus seems to be emerging that change is necessary.
[LBE note: I discussed some of the issues with the obviousness standard in "Patent Reform 2005: Can you hear me, Major Tom?" In the US, we are discussing (not simplifying) post-grant challenges. There is presently the process of re-examination and there is the possibility of a post-grant opposition (which would hardly count as a simplification). In theory, we already have the ability to introduce evidence to the PTO pre-grant. HR 2795 does not attempt to codify a statutory research exception, nor does it discuss marchin rights. We will shortly see what consensus arises as to HR 2795 with Labor Day coming quickly.]
Boyle was, in part, discussing a previous note by Richard Epstein:
For most people, patent law is a subject that conjures up images of high-priced litigation between titans of industry locked in scientific battle. The last thing that they might suppose that these hard-headed lawyers would care about are metaphysical abstractions that baffle even the most skilled philosophers.
Think again. It is just the dollars and cents that drive skilled lawyers to philosophically reflect. One key illustration of this situation was brought home to me last winter when I talked with Robert Merges, one of the world’s pre-eminent patent scholars. The conversation was sparked by my innocent question about the relationship between process and composition of matter patents. My question stemmed from some obvious confusion about why the folks who had isolated various DNA compounds were given subject matter patents for their “isolated and purified” material, instead of a process patent for the particular way in which they isolated and purified their compounds.
The source of my doubt lies in the well-known and oft-iterated proposition that no one can claim a patentable invention in any idea, physical law, or product of nature. The clear instinct behind this categorical rule is that the use of patent protection in these settings would strike a devastating blow to the ability of individuals to communicate with each other, or to continue their own scientific explorations. The protected status of inventions was given therefore, in the words of the US patent act, only to those who invent or discover “any new and useful process, machine, manufacturer, or composition of matter.” So why then is a natural substance some new composition of matter?
The various patent office decisions on DNA took the point so much for granted that they did not go back to the famous Learned Hand decision of 1912, which, as Merges told me, introduced this peculiar patent law deviation from ordinary usage. In 1901 Jokichi Takamine, a Japanese émigré to the United States isolated a variation of adrenaline (originally a trade name) that far exceeded in purity any previous isolate of this key compound. In Parke-Davis Co. v. H. K. Mulford Co. (1911), Takamine had assigned the patent to Parke-Davis - Hand sustained a composition of matter patent , saying: “while it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and therapeutically.” [LBE note: this conflates a composition of matter of X with a purified version of X. If one has a composition of matter patent on X, any later use of X (during patent lifetime) will infringe. If, however, one devises a different and/or more effective purification method, one likely will not infringe on a patent on a purified version of X. These issues are different from patents on DNA sequences.]
That practical interpretation is or course at variance with the meaning of the basic test. Yet, from the outset Hand put his finger on a key difficulty in fashioning an intelligent system of intellectual property: call it the Goldilocks principle. It is easy to make the soup too hot, or too cold, but it is very difficult to get the soup just right.
The composition of matter patent is, in a very real sense, too extensive for its own good. It blocks any individual who develops a wholly different technique for, say, synthesis adrenaline. The subject matter patent blocks this mode of attack. But a radically discontinuous approach is not all that likely to emerge during the patent period, especially as the patent nears expiration. And if it does, the two sides could work out a licensing deal that marries the new technology with the older substance.
But the greater risk in this area lies in the other direction. Process patents are in general too weak to protect an inventor who has made, as Takamine did, a huge advance over the prior art. It’s for this reason that inventors of special processes often protect them as trade secrets - where they are subject to the risks of reverse engineering or independent discovery - rather than by some porous patent. [LBE note: what is the evidence for trade secret?] Generally, process patents protect a precise recipe so that the infringement action is likely to fail if the new entrant circumvents the patent by a small variation easily derivable from the basic technique. Learned Hand made a rough, but sound calculation that better a patent system too strong than too weak.
His view was not uniformly followed in the ensuing years. Before the 1952 Patent Act, the requirements for a patent stiffened, and useful discoveries about particular bacterial interactions in plants, for example, were treated as laws of nature, even though their patentable would do nothing to block the orderly progression of knowledge. But those cases have been distinguished away in more recent times. The key decision in this regard was the 1980 case of Diamond v. Chakabartry, which allowed the patenting of man-made bacteria. We can truly say that much of this huge boom in biotechnology derives from the fact that we give too much patent protection, instead of too little, in those cases where we, like Goldilocks, can never get it exactly right.
Boyle concludes:
Like Professor Epstein, I am an admirer of the idea behind the patent system. Patents require public disclosure of the innovation and, at least compared to our absurdly long copyright terms, are of relatively short duration. At the end of the term the fully described invention is, in theory, now part of the public domain. We give a limited period of private exclusivity on truly novel and non-obvious innovations and get in return general public availability of technology and knowledge. The idea is a wonderful one. But it is an idea that the courts and the PTO have lost sight of, and to which they must be recalled.
But I think it is fair to say that over the last ten years there has been a growing chorus of informed scholarly concern about the direction in which the patent system is headed. That chorus is now pretty loud, so loud that policy makers may be beginning to pay attention.
[LBE note: as Professor Chisum pointed out, the patent reform movement was going nowhere until business (e.g., Microsoft) entered the picture. To suggest that scholarly concern brought us HR 2795 is silly. Further, whether the belief in a 97% patent grant rate is informed or scholarly is open to question. For example, Jaffe and Lerner bought into the Quillen/Webster analysis.]
What needs to be done? Some common suggestions include raising the obviousness standard, funding the PTO at higher levels and increasing training in specific technical areas, instituting a pre-grant “challenge” procedure, simplifying post-grant challenges, codifying a statutory research exemption to patent infringement actions, greater use of “march in” rights on publicly funded medical patents, and the abolition or dramatic reduction of business method patents. Each scholar has a different list of suggestions, but the lists overlap and many of these proposals are agreed to even by those who take a more sanguine view of the patent system. The consensus seems to be emerging that change is necessary.
[LBE note: I discussed some of the issues with the obviousness standard in "Patent Reform 2005: Can you hear me, Major Tom?" In the US, we are discussing (not simplifying) post-grant challenges. There is presently the process of re-examination and there is the possibility of a post-grant opposition (which would hardly count as a simplification). In theory, we already have the ability to introduce evidence to the PTO pre-grant. HR 2795 does not attempt to codify a statutory research exception, nor does it discuss marchin rights. We will shortly see what consensus arises as to HR 2795 with Labor Day coming quickly.]
Boyle was, in part, discussing a previous note by Richard Epstein:
For most people, patent law is a subject that conjures up images of high-priced litigation between titans of industry locked in scientific battle. The last thing that they might suppose that these hard-headed lawyers would care about are metaphysical abstractions that baffle even the most skilled philosophers.
Think again. It is just the dollars and cents that drive skilled lawyers to philosophically reflect. One key illustration of this situation was brought home to me last winter when I talked with Robert Merges, one of the world’s pre-eminent patent scholars. The conversation was sparked by my innocent question about the relationship between process and composition of matter patents. My question stemmed from some obvious confusion about why the folks who had isolated various DNA compounds were given subject matter patents for their “isolated and purified” material, instead of a process patent for the particular way in which they isolated and purified their compounds.
The source of my doubt lies in the well-known and oft-iterated proposition that no one can claim a patentable invention in any idea, physical law, or product of nature. The clear instinct behind this categorical rule is that the use of patent protection in these settings would strike a devastating blow to the ability of individuals to communicate with each other, or to continue their own scientific explorations. The protected status of inventions was given therefore, in the words of the US patent act, only to those who invent or discover “any new and useful process, machine, manufacturer, or composition of matter.” So why then is a natural substance some new composition of matter?
The various patent office decisions on DNA took the point so much for granted that they did not go back to the famous Learned Hand decision of 1912, which, as Merges told me, introduced this peculiar patent law deviation from ordinary usage. In 1901 Jokichi Takamine, a Japanese émigré to the United States isolated a variation of adrenaline (originally a trade name) that far exceeded in purity any previous isolate of this key compound. In Parke-Davis Co. v. H. K. Mulford Co. (1911), Takamine had assigned the patent to Parke-Davis - Hand sustained a composition of matter patent , saying: “while it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing commercially and therapeutically.” [LBE note: this conflates a composition of matter of X with a purified version of X. If one has a composition of matter patent on X, any later use of X (during patent lifetime) will infringe. If, however, one devises a different and/or more effective purification method, one likely will not infringe on a patent on a purified version of X. These issues are different from patents on DNA sequences.]
That practical interpretation is or course at variance with the meaning of the basic test. Yet, from the outset Hand put his finger on a key difficulty in fashioning an intelligent system of intellectual property: call it the Goldilocks principle. It is easy to make the soup too hot, or too cold, but it is very difficult to get the soup just right.
The composition of matter patent is, in a very real sense, too extensive for its own good. It blocks any individual who develops a wholly different technique for, say, synthesis adrenaline. The subject matter patent blocks this mode of attack. But a radically discontinuous approach is not all that likely to emerge during the patent period, especially as the patent nears expiration. And if it does, the two sides could work out a licensing deal that marries the new technology with the older substance.
But the greater risk in this area lies in the other direction. Process patents are in general too weak to protect an inventor who has made, as Takamine did, a huge advance over the prior art. It’s for this reason that inventors of special processes often protect them as trade secrets - where they are subject to the risks of reverse engineering or independent discovery - rather than by some porous patent. [LBE note: what is the evidence for trade secret?] Generally, process patents protect a precise recipe so that the infringement action is likely to fail if the new entrant circumvents the patent by a small variation easily derivable from the basic technique. Learned Hand made a rough, but sound calculation that better a patent system too strong than too weak.
His view was not uniformly followed in the ensuing years. Before the 1952 Patent Act, the requirements for a patent stiffened, and useful discoveries about particular bacterial interactions in plants, for example, were treated as laws of nature, even though their patentable would do nothing to block the orderly progression of knowledge. But those cases have been distinguished away in more recent times. The key decision in this regard was the 1980 case of Diamond v. Chakabartry, which allowed the patenting of man-made bacteria. We can truly say that much of this huge boom in biotechnology derives from the fact that we give too much patent protection, instead of too little, in those cases where we, like Goldilocks, can never get it exactly right.
Boyle concludes:
Like Professor Epstein, I am an admirer of the idea behind the patent system. Patents require public disclosure of the innovation and, at least compared to our absurdly long copyright terms, are of relatively short duration. At the end of the term the fully described invention is, in theory, now part of the public domain. We give a limited period of private exclusivity on truly novel and non-obvious innovations and get in return general public availability of technology and knowledge. The idea is a wonderful one. But it is an idea that the courts and the PTO have lost sight of, and to which they must be recalled.
posted by Lawrence B. Ebert at 4:25 AM
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