As always, this is not legal advice!
This time the reading was Merges and Duffey 67-76 (Diamond v. Chakrabarty); 79-104 (Bilski v. Kappos); 2012 AIA Supplement 1-12 (Prometheous Labs v. Mayo).
These are all cases I read in my “Fundamentals of IP” course last semester. Unfortunately for readers today, we did not get to Bilski. Bilski is actually one of those cases that directly relates to software patents, so make sure you come back for Day 3.
Today, we mostly discussed claim construction and Chakrabarty. The holding, according to Wikipedia, is
Living, man-made micro-organism is patentable subject matter as a “manufacture” or “composition of matter” within the meaning of the Patent Act of 1952. The fact that the organism sought to be patented is alive is no bar to patentability. Decision of the Court of Customs & Patent Appeals affirmed.
This was a 5-4 case. In hindsight, for those that believe that patents spur innovation, it seems like the right decision. The biotechnology industry is huge. Before I get on a soapbox, I want to mention that “laws of nature, physical phenomena, and abstracted ideas are not patentable.” It’s probably obvious why the first two are not patentable — they are part of the public domain. However, abstract ideas aren’t really in nature in the same way as the other two. Whatever the theoretical underpinnings of abstract ideas being lumped in with the other two, it makes good sense. It would be pretty hard for the useful arts to progress if abstract ideas were patentable. Many would argue that they are patentable, which is is the theme of my second rant of the day.
First though…the first rant. What is most troubling about this case (again, in hindsight) is not the legal framework that man-made micro-organisms are patentable, but that we would give a company the ability to exclude others from cleaning oil spills in the most efficient manner possible. Now, of course, the point of the patent is for the company that developed the oil spill technology to recoup their investment – that’s the incentive for the investment. However, the general incentive doesn’t apply here. Oil companies are liable in tort for oil spills. That is, you can sue them for negligence. If the oil company cleans the oil spill more quickly, they are going to cause less damage and thus will be less liable in tort.
Now the retort to this is that being less liable in tort is a competitive advantage. If BP has to pay less for its oil spills than Exxon, then BP is better able to compete in the market. All I have to say is….really? Personally, I don’t want BP and Exxon competing on who cleans up their oil spills. Let them compete on price, cleanliness, efficiency, etc, but once there’s an oil spill, I say the time for competition is over.
Let me emphasize that generally speaking we don’t want judges making these kind of determinations. We don’t want administrative agencies making these types of decisions because they change every four/eight years (now, of course, not every employee changes ever four/eight but just stay with me). The current Congress has proven themselves incapable of getting just about anything done. Thus, we are at a bit of an impasse. I will say though that Congress did actually pass the America Invents Act last September, so they had the opportunity to address this.
At the end of the day, maybe in biotechnology everyone is a big boy or girl and you just get these license deals done. If you’ll notice the title of today’s entry, it’s “Patents: Day 2″. I don’t profess to be an expert, but something doesn’t seem right.
What I will say is that this is not the case in software. You don’t need any capital to start a software project. Depending on access to compile servers, you might be able to code from a library computer. At the least, if you have your own computer, you can code (while GNU/Linux might be better suited for developers, plenty of people find ways to code on Windows or Mac – I can’t profess to understand *why* though). The point is, while BP, Exxon and BioTech giants might just license patents like it’s no biggie, software startups generally do not have that luxury. This is why software patents generally inhibit innovation rather than promote it. The incumbents want software patents because they don’t want innovation. They want the status quo. Since software patents do not promote innovation, they are unconstitutional.
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
Let me step off this soapbox.
We also talked about claim construction.
Let me immediately get on a “notice” soapbox. Patent prosecutors are told to draft their claims as broadly as possible. If property rights only work based on notice, then why don’t we actually give notice in patents? The metes and bounds on real property don’t say things like “to the west of Main Street”. Well, to the west of Main Street in Concord, NH encompasses most of North America. It wouldn’t be very clear where the property ended. However, this is exactly what we do in patents. I did ok in property law, but even less than patents I am going to disclaim any expertise in the project. There is some good stuff that comes out of the University of Chicago and the Federalist Society on property rights (they actually have four different podcast feeds). I highly recommend the podcasts, but also warn that if you aren’t a libertarian, the Fed Society might infuriate you. My main point is to suggest that even if you aren’t a crazy hippie like me, you should be concerned about the flaws of the patent system.
A hypothetical good patent claim has a preamble, a transition and a body. The preamble can be as simple as “an apparatus” (I can feel the metes and bounds there!). The transition has something like “comprising” or “consisting.” Apparently “comprising” means you get what you claim plus infinite. If your invention “comprises” of two diodes, then you have a patent on 1000 diode structures as well because a 1000 diode structure contains two diodes! Again, large telecommunications companies can cross-license blocking patents and it’s just the name of the game. My boy Abraham Williams, working on his new start-up, doesn’t have the capital for that and a hypothetical patent infringement suit could potentially put him out of business. (Let me be clear I’m not suggesting they are infringing anything…I don’t know what those crazy San Francisco hippies are doing.)
Another thing we discussed is something that was mentioned last class as well, but I don’t think I wrote anything about it: having a patent is not a defense against patent infringement. I did mention blocking patents earlier, but I didn’t define them, so I thought I should make this point clear. Wikipedia doesn’t have an article on blocking patents, but their patent pool article mentions them. If anyone is confused about blocking patents, I can talk about them more in the comments or in the next post.
Next time, Bilski and more!
