To get a taste of just how Byzantine an infringement fight can be over who gets pioneer patent rights just follow “Patent Docs” Kevin E. Noonan reports re the CRISPR/Cas9 gene-editing tool patent applications.
6
Since at least 2008, the USPTO screened for and targeted patent applications with, what they loosely defined as, PIONEERING SCOPE for extra scrutiny under their secret Sensitive Application Warning System (SAWS) program.
Here’s how the examining corps was instructed to identify potential SAWS applications: In order to provide the broadest recognition of applications of interest, Examiners have been provided with list of subject matter areas that are considered to be controversial and/or newsworthy, or are directed to specific items of interest. This list is non-exhaustive. Examiners are encouraged to be liberal (in italics) in their identification as to whether or not an application contains potential SAWS material. This initial identification by the Examiner is intended to case a broad net for applications of interest. [excerpt of SAWS memo circa 2008. Applications with pioneering scope are listed as item #2.]
Maybe the USPTO’s extra-regulatory SAWS scrutiny curtailed issuance of these patents and/or reduced the scope of the claims, resulting in fewer patents claiming pioneering inventions available to be discussed in court?
5
Looking at the bar chart, let’s assume (just for a minute) that it means something. If so, did something happen in the 1970’s to prompt a huge surge in the conception of pioneer inventions in the 1980’s?
And if so, has anybody any idea what that something might have been? Perhaps the arrival of computers, leading to a huge surge of “do it on a computer” inventions?
5.1
There was a sea change in the approach of the computing arts in switching from one ware to another ware.
The phrase “do it on a computer” reveals your innate bias there MaxDrei.
5.1.1
I wonder if they had “do it with steam” eligibility issues back in the day?
Of course, this all ignores that doing it with steam likely requires a very different way of doing it than without.
Regardless no one hopes to merely claim: [old result] + [do it on a computer]. This is the boogeyman scenario created by the anti-patent faction. In reality, such a claim would be obvious if not non-enabled. A real claim would likely involve: [new functions performed on a computer] + [similar and/or likely improved result]
So does this data indicate that fewer attorneys are using the concept of pioneer inventions in presenting their cases, or that judges are paying less attention to the concept?
4.1
I suspect Dennis may be asking that with this chart? The law review article I cited here seems to support both your guesses, but there is also a recent popularized book arguing that there really are less “pioneer inventions” nowadays as measured by human benefit or progress, as compared to all the major inventions of the 19th century industrial revolution. That seems consistent with the above chart. As for modern consumer and consumer product impact we have, e.g., ubiquitous computers, software, cell phones and smartphones. But with so many different technology contributors it is arguably harder to point to individual patents as pioneer? Or to argue that things like smartphones have made comparable hundredfold cost and/or labor reductions in food, clothing, heating, shelter, transportation, etc.
3
So …. what word was being used instead of “pioneer” in the “off” years?
3.1
Not a word, but a phrase: “patents are the bad.”
3.2
… and your question appears to presume that the underlying conditions were actually more “steady state.”
We both know that such is not true, as we both are familiar with such innovation topics such as the Schumpeter or Kondratiev waves, right?
2
It would be interesting to lay this in alongside court discussions approving of “discoveries” (per the US Const. Art. I, Sec. 8, Cl. 8) which SCOTUS seems to have read out of the document (along with “well regulated militia”), just sayin’…
2.1
Googling PP interference (to do something about my historical ignorance of famous interference cases) brought me to a 2009 Paper by Charles Adams entitled “Allocating Patent Rights Between Earlier and Later Inventions” which looks in detail into the PP interference.
Ziegler catalysts. No doubt about its being a “pioneer invention”. And not one, not two, but three decades of litigation to allocate the patent rights correctly.
As you drily observe, anon, the CRISPR/cas9 priority contest indeed has a way to go before it surpasses the PP interference.
2.1.1
Oh. Oops. My 2.1 was intended as a 1.2.1.1. Sorry about that.
As to the patents clause, Lawrence, I see that authors create “writings” while inventors make “discoveries”. But the word “discovery” has more than one dictionary meaning and I had always assumed that the one intended in the patents clause was the legal one, like in “discovery proceedings”. You dis-cover your invention when you make available to the public, in your patent application, an enabling disclosure of your invention. Is this not a reference to the classic patent “Quid pro Quo” limited term exclusive rights in return for an enabling disclosure?
2.1.1.1
See 35 USC 100(a): The term “invention” means invention or discovery.
2.1.2
Thanks Max for digging up an article on that old monster interference on one of worlds most important plastics. One difference was that expanded discovery in interferences in those days was almost unrestricted discovery, whereas now it requires APJ approval. But it has in common having more than two competing parties and presumably the possibilities of more than one patent. The preliminary motions activity in the Crisper/cas9 gene editing interference is already massive, as regular reported on another patent blog, so there are many claim patentability or count issues to be decided before any priority of invention dates trial. That interference seems a long way from even starting its undoubtedly hard fought trial phase. Plus there is the traditional “hot potato” effect on the PTO employees who are not eager to handle all the issues on such a highly import and widely publicized matter. [I had the bizarre experience of seeing what the PTO did about another “hot potato” – carbon “buckyballs” applications – [also Nobel Prize subject matter] which they strangely had put in interference.]
These Crisper/cas9 application parties could all have saved a fortune in U.S. legal bills if their patent applications had all been able to be filed later, as AIA applications, thus subject to the AIA elimination of interferences, leaving only derivation proceedings.
2.1.2.1
“thus subject to the AIA elimination of interferences, leaving only derivation proceedings.”
said derivation proceedings which by and large adopted the protocols of interference proceedings, N’est-ce pas?
2.1.2.1.1
Compare the numbers.
2.1.2.1.1.1
You want to look at numbers when you should be comparing the protocols…
1
Googling this subject, I was surprised to not see a specific Wikipedia entry for “Pioneer Inventions” [as a basis for broader claim interpretations, or whatever] pop up, but I did see a LR article claiming collected cases on it, and admitting some D.C.’s still use it:
“Interring the Pioneer Invention Doctrine” by Brian J. Love, Santa Clara University School of Law Article, Publication Date: 2011.”
A suggested current candidate for a “pioneer invention” would be the Nobel Prize winning “easy gene editing” technique [with vast medical and agricultural potential], now the subject of probably the most massive and messy PTO interference since the old polypropylene interference.
1.1
[This is the remarkably precise CRISPR/Cas9 gene-editing tool.]
1.2
Paul, can you add a few words about the PP interference? How big a thing was it, in its day? Were the Parties all US corporations?
My hunch is that CRISPR/Cas9 is a priority contest unprecedented in its magnitude in the entire history of patent law. I mean, it looks to me as if it is shaping up to be (if not already) of that degree of significance in the history of patent law in Europe.
But ought it not to settle? After all, are not the protagonists all American? Might it not be in all their interests, and in the national interest, for them to stop fighting each other?
1.2.1
Unprecedented?
Yet again, you display your uncanny ability to highlight your lack of historical understanding.
To get a taste of just how Byzantine an infringement fight can be over who gets pioneer patent rights just follow “Patent Docs” Kevin E. Noonan reports re the CRISPR/Cas9 gene-editing tool patent applications.
Since at least 2008, the USPTO screened for and targeted patent applications with, what they loosely defined as, PIONEERING SCOPE for extra scrutiny under their secret Sensitive Application Warning System (SAWS) program.
Here’s how the examining corps was instructed to identify potential SAWS applications: In order to provide the broadest recognition of applications of interest, Examiners have been provided with list of subject matter areas that are considered to be controversial and/or newsworthy, or are directed to specific items of interest. This list is non-exhaustive. Examiners are encouraged to be liberal (in italics) in their identification as to whether or not an application contains potential SAWS material. This initial identification by the Examiner is intended to case a broad net for applications of interest. [excerpt of SAWS memo circa 2008. Applications with pioneering scope are listed as item #2.]
Maybe the USPTO’s extra-regulatory SAWS scrutiny curtailed issuance of these patents and/or reduced the scope of the claims, resulting in fewer patents claiming pioneering inventions available to be discussed in court?
Looking at the bar chart, let’s assume (just for a minute) that it means something. If so, did something happen in the 1970’s to prompt a huge surge in the conception of pioneer inventions in the 1980’s?
And if so, has anybody any idea what that something might have been? Perhaps the arrival of computers, leading to a huge surge of “do it on a computer” inventions?
There was a sea change in the approach of the computing arts in switching from one ware to another ware.
The phrase “do it on a computer” reveals your innate bias there MaxDrei.
I wonder if they had “do it with steam” eligibility issues back in the day?
Of course, this all ignores that doing it with steam likely requires a very different way of doing it than without.
Regardless no one hopes to merely claim: [old result] + [do it on a computer]. This is the boogeyman scenario created by the anti-patent faction. In reality, such a claim would be obvious if not non-enabled. A real claim would likely involve: [new functions performed on a computer] + [similar and/or likely improved result]
Reminds me of one of my faves:
link to xkcd.com
This may interest you:
link to quoteinvestigator.com
So does this data indicate that fewer attorneys are using the concept of pioneer inventions in presenting their cases, or that judges are paying less attention to the concept?
I suspect Dennis may be asking that with this chart? The law review article I cited here seems to support both your guesses, but there is also a recent popularized book arguing that there really are less “pioneer inventions” nowadays as measured by human benefit or progress, as compared to all the major inventions of the 19th century industrial revolution. That seems consistent with the above chart. As for modern consumer and consumer product impact we have, e.g., ubiquitous computers, software, cell phones and smartphones. But with so many different technology contributors it is arguably harder to point to individual patents as pioneer? Or to argue that things like smartphones have made comparable hundredfold cost and/or labor reductions in food, clothing, heating, shelter, transportation, etc.
So …. what word was being used instead of “pioneer” in the “off” years?
Not a word, but a phrase: “patents are the bad.”
… and your question appears to presume that the underlying conditions were actually more “steady state.”
We both know that such is not true, as we both are familiar with such innovation topics such as the Schumpeter or Kondratiev waves, right?
It would be interesting to lay this in alongside court discussions approving of “discoveries” (per the US Const. Art. I, Sec. 8, Cl. 8) which SCOTUS seems to have read out of the document (along with “well regulated militia”), just sayin’…
Googling PP interference (to do something about my historical ignorance of famous interference cases) brought me to a 2009 Paper by Charles Adams entitled “Allocating Patent Rights Between Earlier and Later Inventions” which looks in detail into the PP interference.
Ziegler catalysts. No doubt about its being a “pioneer invention”. And not one, not two, but three decades of litigation to allocate the patent rights correctly.
As you drily observe, anon, the CRISPR/cas9 priority contest indeed has a way to go before it surpasses the PP interference.
Oh. Oops. My 2.1 was intended as a 1.2.1.1. Sorry about that.
As to the patents clause, Lawrence, I see that authors create “writings” while inventors make “discoveries”. But the word “discovery” has more than one dictionary meaning and I had always assumed that the one intended in the patents clause was the legal one, like in “discovery proceedings”. You dis-cover your invention when you make available to the public, in your patent application, an enabling disclosure of your invention. Is this not a reference to the classic patent “Quid pro Quo” limited term exclusive rights in return for an enabling disclosure?
See 35 USC 100(a): The term “invention” means invention or discovery.
Thanks Max for digging up an article on that old monster interference on one of worlds most important plastics. One difference was that expanded discovery in interferences in those days was almost unrestricted discovery, whereas now it requires APJ approval. But it has in common having more than two competing parties and presumably the possibilities of more than one patent. The preliminary motions activity in the Crisper/cas9 gene editing interference is already massive, as regular reported on another patent blog, so there are many claim patentability or count issues to be decided before any priority of invention dates trial. That interference seems a long way from even starting its undoubtedly hard fought trial phase. Plus there is the traditional “hot potato” effect on the PTO employees who are not eager to handle all the issues on such a highly import and widely publicized matter. [I had the bizarre experience of seeing what the PTO did about another “hot potato” – carbon “buckyballs” applications – [also Nobel Prize subject matter] which they strangely had put in interference.]
These Crisper/cas9 application parties could all have saved a fortune in U.S. legal bills if their patent applications had all been able to be filed later, as AIA applications, thus subject to the AIA elimination of interferences, leaving only derivation proceedings.
“thus subject to the AIA elimination of interferences, leaving only derivation proceedings.”
said derivation proceedings which by and large adopted the protocols of interference proceedings, N’est-ce pas?
Compare the numbers.
You want to look at numbers when you should be comparing the protocols…
Googling this subject, I was surprised to not see a specific Wikipedia entry for “Pioneer Inventions” [as a basis for broader claim interpretations, or whatever] pop up, but I did see a LR article claiming collected cases on it, and admitting some D.C.’s still use it:
“Interring the Pioneer Invention Doctrine” by Brian J. Love, Santa Clara University School of Law Article, Publication Date: 2011.”
A suggested current candidate for a “pioneer invention” would be the Nobel Prize winning “easy gene editing” technique [with vast medical and agricultural potential], now the subject of probably the most massive and messy PTO interference since the old polypropylene interference.
[This is the remarkably precise CRISPR/Cas9 gene-editing tool.]
Paul, can you add a few words about the PP interference? How big a thing was it, in its day? Were the Parties all US corporations?
My hunch is that CRISPR/Cas9 is a priority contest unprecedented in its magnitude in the entire history of patent law. I mean, it looks to me as if it is shaping up to be (if not already) of that degree of significance in the history of patent law in Europe.
But ought it not to settle? After all, are not the protagonists all American? Might it not be in all their interests, and in the national interest, for them to stop fighting each other?
Unprecedented?
Yet again, you display your uncanny ability to highlight your lack of historical understanding.
Comments are closed.