Patentology Soundbytes – 7 June 2011

"All the news that's fit to link!"

In this special edition – the two recent US court opinions setting the patents community abuzz…

>   Therasense, Inc v Becton, Dickinson and Company
>   Stanford v Roche

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THERASENSE AND SENSIBILITY

In Therasense, Inc. v. Becton, Dickinson and Company, the US Court of Appeals for the Federal Circuit (CAFC), sitting en banc, revisited the law of ‘inequitable conduct’ – which renders all of the claims of a patent unenforceable if there is fraud committed on the US Patent Office – and, from the perspective of patent owners and applicants everywhere, went a long way towards setting the world to rights.

Writing for the majority, Chief Judge Randall Rader stated that ‘[l]eft unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.’  Inequitable conduct attacks have become par for the course for defendants in patent infringement cases in the US, where ever-reducing standards of inequity have led to a situation in which any failure of disclosure by a patent applicant – however unintentional or immaterial – could be used to completely neutralise every claim of a patent in a single blow.

Hardly surprising, then, that Judge Rader also called inequitable conduct ‘the “atomic bomb” of patent law’ (really – slip op. p. 21).

Read more at:

1. IPWatchdog
2. Patently-O
3. 271 Patent Blog
4. PharmaPatents
5. Holman’s Biotech IP Blog
6. Patent Docs
7. IP Spotlight

The US Patent and Trademark Office (USPTO) has announced that it is ‘carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures’.

1. USPTO announcement
2. PharmaPatents (and on other things the USPTO might look at while they are about it)

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STANFORD v ROCHE

In Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc., et al. (to give the case its full name) the Supreme Court of the United States of America affirmed a decision of the CAFC, finding that ‘[t]he Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.’

Bayh-Dole was a revolutionary piece of legislation that gave ‘contractors’ (e.g. universities) the power to own and commercialise inventions arising from research financed from federal funds.  It has been spectacularly successful in generating thousands of new businesses, and other avenues of commercialisation, and is largely responsible for the creation of a whole new ‘industry’ of technology transfer professionals.

This decision confirms, however, that Bayh-Dole does not, in itself, ensure that inventions made by university employees in the course of their research under federally-funded programs become the property of their employers.  Each institution needs to make sure that it has appropriate procedures and agreements in place with its researchers for transfer of title of inventions covered by Bayh-Dole.

Read more at:

1. IPWatchdog
2. Patently-O
3. Patent Docs
4. Patent Baristas
5. Association of University Technology Managers (AUTM) President Robin Rasor's blog

Some opponents of the patent reform legislation currently before the US House of Representatives, which would (among other things) replace the ‘first-to-invent’ standard with ‘first inventor to file’, have already jumped on this decision as somehow declaring this reform to be unconstitutional.  The US Business and Industry Council (USBIC) is one such opposing organisation, as illustrated by this report of their press release.  Gene Quinn has posted a contrary view on his IPWatchdog blog.

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Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: News, Soundbytes, US