Wednesday, December 14, 2016

There is no "guaranteed" right to use one's own invention

Within a blog post at Scientific American related to the CRISPR IP battle, Jacob S. Sherkow wrote:

Before we even get to the question of what, precisely, was invented, it’s important to understand what a patent actually is. Surprising to many scientists, a patent is not a right to use one’s own invention—you have that whether you file for a patent or not—but rather, the right to exclude others from using an invention without the patent holder’s permission.

[link: ]

A patent is a right to exclude others from making, using, selling or offering to sell that which is encompassed by the claims of a valid patent. But there is no right to use one's own invention. One does not "have that."

The classic story of blocking patents is that of the diode and the triode.

See for example the 2011 post on IPBiz titled "It is axiomatic that a device meriting its own patent does not infringe any other patents."
which includes the text:

From Merges and Nelson, 90 Colum. L. Rev. 839 , on blocking patents:

Two patents are said to block each other when one patentee has a broad patent on an invention and another has a narrower patent on some improved feature of that invention. The broad patent is said to "dominate" the narrower one. In such a situation, the holder of the narrower ("subservient") patent cannot practice he invention without a license from the holder of the dominant patent. At the same time, the holder of the dominant patent cannot practice the particular improved [p. 861] feature claimed in the narrower patent without a license. n96

A screenshot of the relevant Sherkow text:

***Separately, on CRISPR,


Robin Feldman, Imagining the Legal Landscape: Technology and the Law in 2030: The CRISPR Revolution: What Editing Human DNA Reveals About the Patent System's DNA, 64 UCLA L. Rev. Disc. 392 (2016)

Benjamin C. Tuttle, The Failure to Preserve CRISPR-Cas9's Patentability post Myriad and Alice, 98 J. Pat. & Trademark Off. Soc'y 391 (2016)

Steve Connor , Crispr-Cas9: Bitter row breaks out over 'official history' of gene-editing breakthrough;
The two main protagonists are both giants in their respective fields, The Independent, January 25, 2016 Monday 1:46 PM GMT, including the text:

Experts in the field have suggested that Professor Lander has downgraded the achievements of Charpentier and especially Doudna, who is mentioned almost in passing in one or two paragraphs, while Feng Zhang, a scientist working on Crispr at Professor Lander's own Broad Institute, is allotted a full page of the eight-page history in Cell.

The article, called "The Heroes of Crispr", also suggests that Doudna required the "assistance" of a Harvard University researcher, George Church, to get an aspect of the Crispr technique to work. Meanwhile, Zhang is given lengthy praise for his efforts to refine the gene-editing process into something practical that works reliably in human cells, which Zhang and the Broad Institute have successfully patented - although that is now subject to a legal dispute.

Meanwhile, commentators have criticised Dr Lander's alleged slant towards the Broad work at the apparent expense of Doudna's at UC Berkeley.

And from the 16 Nov 2016 Philadelphia Inquirer:

Three researchers will share a venerable Philadelphia science award for their pioneering work on a powerful new gene-editing technique that is expected to enable dramatic advances in the field of medicine.

Not listed on Friday's program? The lawyers.


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