The Art of Patenting Science

The Art of Patenting Science

 



Patents protect novel and non-obvious functional aspects of an invention (i.e. the physical embodiment or practical application of a new idea, namely a machine, article of manufacture, process, or chemical composition).  In other words, patents protect the application of science (leaving methods of doing business method aside for this discussion).  The way in which patents protect the application of science is through the "claims" in a patent.  Patent claims define the scope of what is covered by the patent.  Many recent U.S. Supreme Court cases and Federal Circuit Court of Appeals cases relating to patent validity and enforcement underscore the fundamental principle that patent claims must be carefully drafted in order to provide the desired patent scope.  While a patent protects applications of science, drafting patent claims is more of an art than an exact science. 

From the protection of pesticide resistant soybean plants and cultivations methods in the patent dispute between Monsanto and an Indiana farmer to subject matter eligibility and indefiniteness issues with regard to computer-implemented methods/software (e.g. Function Media, L.L.C. v. Google and CLS Bank v. Alice Corp (Fed. Cir. 2013)), enforcement and validity turn on the language in the patent claims.  Appeals in all of these cases are currently pending at the U.S. Supreme Court of the Federal Court of Appeals.  Time will tell whether the subject patents have claims which will withstand scrutiny and be found enforceable and infringed or whether the claims, for whatever reason, fail to be sufficient. 

Patent attorneys are the artists who translate inventors' work to patent claims.   However, changing patent laws, judicial decisions interpreting the patent laws and every changing U.S. Patent Office interpretation and examination procedures all lead to uncertainty in what patent claims will be valid and enforceable today and over the 20 year patent term.  Therefore, patent claims must be composed using ones creative mind to envision how the law, the courts, and the Patent Office will act over the next twenty years.

Like forecasting the weather, while patent claims are based on historic data, models and real-time facts, patent claims writing requires ingenuity, creativity and inventiveness, i.e. the skills of an artist.  Creativity in claims drafting helps to ensure enforcement and validity of patents.  The best patent attorneys are true artists taking an inventor's work and molding it into a defendable patent.

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

Love Affair with the Fax Machine is Cultural

Bloglet- Japanese Love affair with the Fax Machine is Cultural

On this Valentine's Day, we reflect on the long standing attraction of tech-savvy Japan for the 200 dpi, monochromatic transmission of paper documents.  In the Washington Post article, "In Japan, Fax Machines remain important because of language and culture", reasons for the lasting affection include the Japanese language with kanji characters that were not easily handled by computers of the day, i.e. the 1970's and 80's when the facsimile technology was created.  As a result, Japanese businesses, government and around 50% of the households adopted the fax machine rather than computers/email for electronic transmission of documents.  The New York Times' article, "In the High-Tech Japan, the Fax Machine Roll On", provides additional insights into the abiding embrace of the facsimile including tried and true, reliable business practices in which paper faxes are integral to their success, as well as the joy and pleasure of receiving handwritten faxed notes and greetings.  In the U.S. where many public elementary schools are considering dropping cursive handwriting, the art of penning a handwritten greeting may soon be a thing of the past along with the fax machine.  However, for now, in Japan, the love affair with the fax machine endures!

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

The Big Bang Theory of Economic Development

The Big Bang Theory of Economic Development

   Move over Keynesian and classic supply-side theories of economics.   Here comes revenge of the nerds and the geek squad.  A recent Brookings Institution Report finds that patents are very relevant to an area's economic health and growth.  Patents, the product of scientists and engineers (sometimes affectionately referred to as geeks), protect inventions.  However, patents, alone, do not provide a guarantee that patents generated in a specific area will actually lead to wealth in that area.  What is needed is an environment or ecosystem which includes patents as part of a system for economic growth.

Yet there is no guarantee that patents generated in a specific location will generate wealth in that same location—a set of conditions (the presence of a skilled and diverse labor force, an “ecosystem” of businesses providing complementary goods and services, financing and marketing capabilities among them) have to be met for invention to be commercialized. Research has established that patents are correlated with economic growth across and within the same country over time.  Brookings Institution Report 

    The Report confirms what many commentators have opined as well as the thesis of one of my prior articles, "Biotechnology fuels drive for economic development," Medical News, May 2011 pages 12-13.  Several factors are necessary for realizing economic development including strong educational institutions, government investment (local, state and national); and trained professional such as intellectual property attorneys, marketer and venture capitalists.  Patent attorneys, scientists and enginers, who are also lawyers, are an invaluable resource that work with inventors (researchers, scientists, engineers), companies and investors.  These attorneys take inventors' work from the lab to the Patent Office.

In conclusion, a healthy growing economy relies on scientists and engineers supported by strong universities and government invectives and corporate investment to create an entrepreneurial ecosystem that functions as an engine of economic growth.Th

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

Posting your child’s finger painting artwork on your refrigerator could be copyright infringement

Bloglet-

Posting your child’s finger painting artwork on your refrigerator soon could be copyright infringement in a Maryland county.  As reported in the Washington Post article, "Prince George's considers copyright policy that takes owership of students' work," a proposal by Prince George's county public school's Board of Education would give schools copyright ownership in works created by students and teachers in the district. 

The proposal is just that, a proposal, and the Washington Post article includes quotes from the Board which may misstate aspects of copyright law in the U.S.  However, the article does open up a dialogy to dig deeper into copyright laws and may in the end foster a better understanding and respect for ones creative works. 

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

So God made a Farmer....Indiana planter allegedly runs afoul with Monsanto's patents

So God made a Farmer...Indiana planter allegedly runs afoul with Monsanto's patents    

Hugh Bowman is accused of infringing Monsanto's Roundup® (active ingredient, pesticide/weed killer-glyphosate) resistant soybean plants patents.  The facts of the story are complex to say the least.  The root of the dispute is anything but garden variety patent infringement.  The alleged infringement stems from Bowman's unique method of cultivating pesticide-resistant soybean plants, a method which Monsanto is attempting to nip in the bud.  But is Bowman's planting technique pure genius or patent infringement?

Digging deeper into the dispute, the germane facts are as follows.  Monsanto holds patents, U.S. Patent No. 5,352,605 and RE 39,247, relating to pesticide (Roundup®/glyphosate) resistant soybean plants, seeds and methods for growing glyphosate resistant soybean plants.  These plants/patents are valuable since they allow one to apply pesticides, such as weed killers to the plants, which in turn, kill the weeds but not the pesticide-resistant plants.

Bowman purchased "commodity seeds" which included the seeds of both the progeny of Monsanto's patented plants (i.e. glyphosate resistant plant seeds) as well as non-patented, not resistant seeds.  These seeds were sold with the "intention" that they not be planted but used for other purposes including as feed stock.  However, the seeds were not sold with any contractual obligations limiting the use of the sold commodity seeds.  Bowman planted the commodity seeds and then applied glyphosate as a weed killer/pesticide.  The applied glyphosate killed the non-glyphosate resistant plants, leaving the glyphosate resistant ones.  The result was that all remaining plants were glyphosate resistant.  Bowman then collected seeds from the remaining plants and used the collected seeds in subsequent planting by mixed them with new commodity seeds.  As in the prior planting, he applied glyphosate.  He repeated this practice for years.

Monsanto alleges that Bowman's planting the commodity seeds (a mixture of glyphosate resistant plant seeds and non-pesticide resistant plant seeds) followed by application of glyphosate infringes Monsanto's patents.  Monsanto and its advocates assert that if Bowman's practice is not considered patent infringement, and is allowed to continue, this will undermine (biotechnology patent) life as we know it and thwart any incentive for biotechnology companies to invest in novel genetically engineered plant species.  Bowman's supporters say, "hogwash"; they argue that Monsanto and other biotechnology companies can use contracts and licenses to ensure their patented inventions are adequately protected and the companies compensated for their research and development in bring innovations to the public.

The U.S. Supreme Court will hear oral arguments later this month.  Unfortunate for Bowman, Monsanto's patents include claims to genetically modified, glyphosate resistant soybean plants as well methods for growing the glyphosate resistant plants and applying glyphosate.  Further, Monsanto won at the district court level and the Federal Court of Appeals level.  However, anything can happen when the U.S. Supreme Court weighs in on a patent dispute and cultivates its interpretation of U.S. patent law.

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

Meet us at BIO in Chicago (April 22-24)

Meet us at INTA in Dallas

 

Apple Obtains U.S. Trademark Registration for Layout and Design of Retail Stores

Last week the United States Patent & Trademark Office issued a registration to Apple, Inc. for the design and layout of the Apple retail stores. The registration issued as U.S. Registration No. 4,277,914, and protects the totality of the features of the retail store, including but not limited to the clear glass storefront, paneled facade, rectangular recessed lighting units, cantilevered shelves. The Trademark Office determined that this combination of elements had acquired distinctiveness, and that consumers recognize these elements as an identifying symbol of Apple.

U.S. Registration No. 4,277,914

 

The look of Apple's retail stores is protectable as trade dress. In its 1992 Two Pesos, Inc. v. Taco Cabana, Inc. decision, the U.S. Supreme Court held that trade dress that is inherently distinctive is protectable under Lanham Act § 43(a) without a showing that the trade dress has acquired secondary meaning.  However, the Trademark Office found that the design of the Apple store was not inherently distinctive.  When a mark is refused registration on the basis that it lacks distinctiveness, the applicant must submit evidence to the Trademark Office showing that the public associates the mark as the source of the goods or services promoted under that mark.  This is precisely what Apple did. Apple strenghtened its claim of acquired distinctiveness by claiming that the trade dress had been in use in commerce for more than 5 years.

The issuance of this registration is just one step forward in Apple's fight against copy cat retail stores, which have been popping up around the world at a surprisingly high rate. Apple's U.S. trademark Registration in its retail store design provides prima facia evidence of Apple's rights in the look and feel of the popular retail stores.

© Mari-Elise Taube, Stites & Harbison, PLLC, 2013

Send email feedback- mtaube@stites.com

The Kit Kat shape is protectable? Give me a break.

Love the Kit Kat?  Who doesn't, really?  Part of what I love most is that you can break apart each of the "four fingers" while eating it.  This "four finger" design is a trademark of Nestle and the Board of Appeal at the Community Trade Mark Office recently acknowledged Nestle's rights in this design.

Nestle obtained a Community Trade Mark registration of the unique four-finger Kit Kat in 2006, but Nestle's rival Cadbury (now owned by Mondelēz International, a recent split from Kraft Foods) won an appeal which invalidated that registration.  Nestle fought back, and the Board of Appeal at the Community Trade Mark Office reinstated the trademark on the four-finger chocolate bar shape.  This registration prevents other confectionars from selling chocolate bars with a similar four-bar structure anywhere in the EU.

Here in the U.S., the shape and design of a product is referred to as its "trade dress", and if trade dress satisfies the federal standards of trademark protection as identifying and distinguishing a product, it is registerable. To be registerable as a trademark, the elements of the trade dress must be capable of definition such that the public will know the exact parameters of what is being claimed as trade dress. One example of this is the Hershey Bar. Last summer, the United States Patent & Trademark Office granted Hershey's a registration for its signature candy bar shape.

In 2000, the U.S. Supreme Court ruled that product design trade dress can never be classified as "inherently distinctive."  Those claiming rights in product design trade dress, such as the Kit Kat shape or the Hershey shape, must always prove that the design has acquired secondary meaning in the market.  The USPTO found that Hershey’s had presented evidence to show that the design of the Hershey bar had acquired distinctiveness and was therefore registerable.

However, those who can't prove secondary meaning in their product design shouldn't fret.  Design patent and copyright protection are usually available as alternatives to obtain protection for a design that is source identifying but has not yet obtained secondary meaning.

Next time you "have a break", grab a Kit Kat and check out this protected four-finger design.

© Mari-Elise Taube, Stites & Harbison, PLLC, 2013

Send email feedback- mtaube@stites.com