Law and Tech A weblog on Law and Technology


Cleveland Show

There was an interesting episode of The Cleveland Show this week titled "Love Rollercoaster." It involved, among other things, the main character and his friends trying to come up with invention ideas. As probably the most enjoyable episode that I've seen thus far of the show I was excited. The only think that irked me was that at the end, Cleveland's great invention was stolen from a night time infomercial and the makers of the original product sued for Copyright infringement. Now, living with a bunch of Intellectual Property law students there was a simultaneous gasp. "What do you mean Copyright Infringement?"

I guess they can't be perfect, but don't you think one person would understand the difference between patents and copyrights? Oh well. I guess writers only really care about certain forms of IP.

To watch the show on Hulu:


Understanding Science

"The modern world would not be modern at all without the understandings and technology enabled by science."

Here is a great website devoted to science and why science is important for society in terms of understanding our world, ourselves and the things brought to us by science that we use everyday (and take for granted) .

I would add that not only should society in general be scientifically literate, but those in the patent community could take steps to better verse themselves in basic science concepts for the betterment of the biotech patent field.


Patent Drafting: should highly technical language require a translation?

Part of my law school experience is to assist in mining patents and categorizing them into topics.   I have the most difficult time 1) searching for relevant patents, 2) wading through the search results to confirm relevancy, and 3) categorizing said patents based on keywords.    I can appreciate why patent landscape analysis is farmed out to specialized firms.

The biggest issue when searching for relevant patents, or even simply reading a patent to determine its scope,  is how patents are drafted. Patent drafters are increasingly coming up with creative (or shady) ways to claim subject matter to ensure broad protection, overcome prior art or avoid 101 rejection.   This is how a "vaccine" becomes an "immunological composition for treating and preventing a disease selected from the group consisting of yada, yada, and yada."   This is also how it becomes difficult to recognize a relevant patent in a landscape when one is searching for vaccine patents and ends up missing all of the immunological compositions.

Surely a patent applicant can become his/her own "lexicographer" (or lexinographer if you want to play that game) but it seems a patent can be drafted around this or that to the point of absurdity.  Of course, one could look to the specification to define the terms in the claims, but from a patent searching perspective, that is not a cost effective strategy.

This seems to become more of an issue in highly technical fields where word substitutions are not intuitive to the nontechnical person.  Certainly, in a mechanical patent, the word "fastener' in  a claim could understandably be substituted for nail or screw.  But is it so obvious to the lay person that "an epitope binding ligand" is synonymous with "antibody?" I don't even want to get into the frustration of decoding that particular example because it actually translates to "a something that attracts antibodies to bind binding binder."

Perhaps technical terms are inherently specific and the only way to broaden them or strategize with them is to make them obscure.  And the solution to this obscurity is for the reader of the patent to become more versed in the art of such obscurity in order to understand what a patent is claiming?  I don't know. Maybe there should just be a thesaurus of synonyms for commonly used words in a specific technical field that could be consulted.  I know that the Word thesaurus has made me a more creative wordsmith.

Here are some fun terms that could define a vaccine: "a prophylactic," "a therapeutic," "an immunological preparation," "a compound for eliciting immune response," "a compound for eliciting neutralizing antibodies," "a polyvalent composition," "a conjugate."

Filed under: Patents, Potpourri No Comments

A Gruesome Parade of Horribles? Patenting DNA

Here is an interesting article covering the issues involved in patenting biological material.

It's been almost 30 years since Diamond v. Chakrabarty, where the U.S. Supreme Court held that genetically engineered bacteria were patentable subject matter, and there is still controversy surrounding the patenting of genes, gene fragments, proteins and genetically modified material.

The main issues involve an ideology that science and scientific research should be 'free' and 'open' to facilitate progress in research and innovation, which conflicts with the practical reality that scientific research has become a business and a key component in the US economy that needs the protection the patent system offers to ensure success.

One of the arguments in support of patenting in this area is that patent rights are a way to ensure that an entity can either court or recoup  investment in research and development of necessary biotechnology.  Science is complex, expensive, and often unrewarding. Viewing biotechnology and the science behind it in a pure, ivory tower sense, where patenting should have no place, is naive at best and painfully ignorant at worst.  Science, like art, has always thrived on patronage and legal protection.  It is human nature to profit on all forms of creativity one way or another.

However, that legal rights and money are attached to innovation should not take away from the noble aspects of the work and progresses made in the scientific field. At its heart, scientific research is about understanding our world and making our lives better because of that understanding.

Aside from the main issues, there is the question of patentable subject matter that seems to be yet unresolved in the genetics arena.   It is important that the patent system respect the science behind the inventions sought to be patented if there is to be any confidence in the system or in the technology. Certainly, a gene or protein manufactured in a laboratory setting does not occur in nature and could thus meet the standard.  However, there seem to be problems  with how the PTO is dealing with genetic patents.  Specifically, it is troubling  that many patents are sought on DNA fragments whose function remains unknown.

There is still much that isn't understood about DNA and genes and it is essential that all those involved in gene patenting be educated to protect the integrity of DNA science and the biotechnology industry before either rushing to grant these patents or to condemn them.

Filed under: Patents, Potpourri No Comments