Score One for the Big Guys: How to Trick a Future Nobel Laureate into Walking Away from a Patent and Giving Away His Rights for Free

Tim O'Reilly (@timoreilly on Twitter) had a recent tweet about the Nobel Laureate Andre Geim who discovered graphene and many potential uses for the super strong two-dimensional diamond-like material. His tweet was "Puts the lie to the claim that patents help small inventors: Why Geim Never Patented Graphene http://bit.ly/9QrEC3". The link is to a discussion on Slashdot that begins with this observation about why Dr. Geim didn't patent graphene. Turns out he almost did, but chose not to after a conversation with someone from a big multinational company that could become a major user of graphene in the future. Here's the content that Tim O'Reilly and others feel shows why patents don't help small business owners:

gbrumfiel writes

"As we discussed on Tuesday, Andre Geim won this year's Nobel prize in physics for graphene, but he never patented it. In an interview with Nature News, he explains why: 'We considered patenting; we prepared a patent and it was nearly filed. Then I had an interaction with a big, multinational electronics company. I approached a guy at a conference and said, "We've got this patent coming up, would you be interested in sponsoring it over the years?" It's quite expensive to keep a patent alive for 20 years. The guy told me, "We are looking at graphene, and it might have a future in the long term. If after ten years we find it's really as good as it promises, we will put a hundred patent lawyers on it to write a hundred patents a day, and you will spend the rest of your life, and the gross domestic product of your little island, suing us." That's a direct quote.'"

While some people, including some in the anti-patent community, see this as a self-evident case for the problem with patents, it's actually just the opposite, in my opinion.

Look at the story again. A genius on the verge of filing a foundational patent for a major breakthrough in technology approaches a large corporation who might benefit from the technology. The company learns that the inventor is about to file a patent. A valid patent would mean that the company would have to pay royalties for the invention, perhaps very expensive royalties. If no patent is filed, the company can use the technology for free and develop its own patents without having to cross-license or worry about what Andre Geim owns. Hmm, which would be better: paying a lot, or paying nothing? Having to work with an inventor or tech transfer office or new patent owner who may end up thinking an invention is worth billions, or having the whole thing pretty much gratis? Tough call, but I think the corporate leader was quick to recognize the advantages to nipping the patent threat in the bud. How could he talk the inventor out of a patent? What negotiating tactic to deploy? ah, how about the Hindenburg? That's where you explain to the other party that their intended course of action would be a flaming disaster, with burning bodies falling out of the sky--oh, the humanity!--resulting in the adversary becoming toast themselves.

The Hindenberg it is. The corporate leader then explains that IF Geim is so foolish, so greedy, so inhumane as to file a patent, disastrous suffering will follow and he'll be burned. "100 patents a day!" Overwhelming force! You'll go into debt suing us for nothing! You'll be toast, baby. One big flaming Hindenburg crashing into the ground.

Baloney! All bluff and bluster. But the intimidation and scare tactics work. "OK, OK, I won't file my patent. Sorry for even thinking about that. Now I see that patents don't help the little guy, Mr. Big. Here, take what I've got for free. I'm just honored to watch you commercialize my work."

Patents are the great equalizer. It's what gives lone inventors a fighting chance against the big corporation that wants to take what they've got for free. It's not easy and may not work, but with patents you've got a chance and corporations know it. Good ones respect that and will work with out. Others will try to take what you've got anyway, or better yet if they can, talk you out of pursuing a patent. Without one, you've already surrendered. You might as well throw the keys of your car to any passing stranger and hope they will pay you someday after they drive away.

The story isn't about why patents don't help the little guy. In fact, I think it's about how much some big corporations despise and loathe patents in the hands of little guys. So much so that they would make outrageous statements to trick a brilliant scientists into NOT doing the one thing that could have helped him most: filing a patent. Instead, he handed them his inventions for free. Score one for the big guys.

Genome Patents Are from Venus, Genome Sharing Is from Mars: The Cocoa Genome Published, not Patented

In the UK, The Independent reports an interesting story about discovery the details of the cocoa genome, a major scientific project that could help cocoa producers worldwide become much more productive in raising this sensitive crop. What I found interesting was the decision by the corporation behind the work, Mars, Inc., to not seek patents based on the work but rather to publish their discovery so that everyone, even competitors, might benefit from the work. Of course, they hope to benefit by having more abundant and higher quality cocoa as a raw material, but I'm still delighted with the decision. Genome patents are tempting and have a role (with over 3 million genome-related patents having been filed in the US, it must be a pretty big role), but are highly controversial and sometimes rather questionable. It's a complex issue to be debated another time. For now, let's just savor the decision by Mars and look forward to major advances in cocoa agriculture.

Here's an excerpt from The Independent:

Scientists have sequenced the genetic code of the cocoa tree, which they say could triple the yield of the disease-prone crop and transform the lives of millions of poor farmers in Africa and around the developing world who rely on it for their livelihood.

The US chocolate firm Mars, working with the computer firm IBM and the US Department of Agriculture, took two years and two months to unlock the genetic code of the tree, Theobroma cacao ("food of the gods").

Instead of patenting the genome, they have placed it online for anyone to use for free. They say that its discovery will allow breeders who use traditional methods to grow hardier, more productive and disease-resistant trees

See also The Cacao Genome Database where Mars and others have published the results of their sequencing of the cacao genome. Best enjoyed while sipping hot chocolate. You'll need a big cup.

Other reading on related topics:

• "Tycoon [Craig Venter] seeks patent for 'minimal genome' " - New Scientist
• "Gene Patents" - Wikipedia
• "Here Comes SuperCacao: Mars, Inc. Sequences the Cacao Genome" - FastCompany

Should Patents Have Background and Summary Sections?

Greg Aharonian's recent PATNEWS newsletter mentions that he is reviewing the book Drafting Patents for Litigation and Licensing, edited by Bradley Wright of Banner & Witcoff. A chapter in that book led Greg to raise the question about whether inventors and patent owners are helped in any way by including background and summary sections in patents. Greg mentions that numerous risks that can arise when prior art is improperly discussed or when statements in the background or summary sections are imported by judges as unwanted limitations in claims. With all the risks, and with no legal requirement to include such sections, why do it?

It's a fair question and perhaps patents will be more successful if unnecessary sections are left out, but there's another perspective to consider.

Greg is not alone, and in fact is thinking along lines of Irving Kayton et al. at PRG who have been advocating barebones approaches to skirt the numerous pitfalls from judges and courts. (I really enjoyed the "Drafting and Crafting Winning Patents" course I took from them several years ago where they introduced their minimalist concepts.) Skipping the background and summary makes a lot of sense with those concerns in mind. However, the chance of a judge abusing your issued patent is minuscule, and in fact is ZERO if it doesn't get past the Examiner. In light of KSR, I would argue (and do so argue in the book Conquering Innovation Fatigue from John Wiley & Sons, 2009) that it is valuable to build some storytelling into the patent to help the examiner avoid the temptation of applying hindsight to the invention and, when possible, to help the Examiner see that the invention involved more than just conventional problem solving to deal with known problems in standard ways.

Sometimes the key to a brilliant invention is discovering what the real problem was. Once understood, the solution may seem "obvious" and straightforward, and if the patent just presents the solution, the nonobvious nature of it may be lost upon the examiner. Examiners are people who will be most helpful in advancing patents when they get the story and have their imagination captured, and that is what can be done in the background and summary. Tell a story to advance your nonobviousness position, but do be cautious about discussing prior art and avoid listing benefits or "objects" of the invention which can certainly haunt you in future litigation. But when there isn't much of a story that needs to be told, skipping the background altogether might be wise.

Another consideration is the benefits of helping others besides judges appreciate and understand the invention. This might include members of a jury as well as potential licensees or business partners. Again, the storytelling role of the background can add value to the patent.

Storytelling: it's what marketing is, and patents need to be drafted with marketing insights and plans in mind for both long-term and immediate success.

The Miazaki Case: Raising the Bar for Definiteness in Patent Claims

A senior patent examiner at the USPTO in a phone interview recently stressed the precedential BPAI case, Ex parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008). In this interesting case, the Board had trouble with the language in this claim:

1. A large printer comprising:
a paper feeding unit operable to feed at least one roll of paper, at least one substantially flat sheet of paper and at least one stiff carton, the paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process including replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton;

a printing unit located below the paper feeding unit;

a discharged paper stacking unit located below the printing unit; and

a paper feeding path extending in a substantially straight line from the paper feeding unit to the discharged paper stacking unit via the printing unit.

The claim tried to describe a relationship between a person of average height and elements of the printer, but the Board found that there were infinite possibilities in the actual structures described. Where was the person standing - on a platform, for example? And where was the printer - on the floor, or on a table, or what? Given the uncertainty, there is certainly an argument that the claim is indefinite and thus invalid.

However, the Board did more than simply identify the indefinite nature of the claim. They went much further in giving a new standard for finding a claim indefinite under Section 112, paragraph 2. Woodcock Washburn LLP notes the problem in their client alert, "BPAI Expands Definiteness Requirement During Patent Prosecution in Ex parte Miyazaki":

On November 19, 2008 the Board of Patent Appeals and Interferences (Board) announced in the above captioned case that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, slip op. at 11-12....

The mischief created by the Board in this case is not whether the claim is or is not indefinite under the statute but, rather, it is found in the Board’s broad holding regarding the application of 35 U.S.C. § 112, second paragraph. Many claim limitations are amenable to two or more reasonable constructions as that is what gives a patent claim breadth. If the Board’s holding is taken at face value, we can expect a flood of rejections of claim terms as being indefinite under the statute.

It may be increasingly important to review claim language carefully and make sure that at least some claims avoid multiple interpretations in ways that could fall under Ex parte Miyazaki. Naturally, almost every limitation of every claim has gray areas that could be interpreted in multiple ways. I hope reason will prevail in the quest for definiteness in claim language.

Inventions from the Fox Valley (Fox Cities) of Wisconsin

As a proud resident of Appleton, Wisconsin in the beautiful Fox Valley, I'm happy to report that this area has a surprisingly rich history of invention and innovation. In fact, the Fox Valley is one of the most patent-rich parts of the Midwest, largely due to the intense patenting activities of consumer products companies like Kimberly-Clark Corp. (which usually gets more patents each year than MIT!) and Georgia-Pacific.

Here is a small sampling of the innovations that have come from this region with a population under 200,000 people (Appleton, the largest city in the Valley, has just 75,000).

• Carbonless paper and a host of innovations related to microcapsules applied to paper. Appleton Paper helped lead the way, developing the coating processes that allowed microcapsules to be applied to paper at high speed without crushing them. Recently Procter & Gamble licensed Appleton's encapsulation technology to apply long-lasting fragrance in microcapsules to laundry via Downy laundry sheets. Numerous innovative applications remain to be developed.



• Cellucotton or creped tissue paper: the absorbent paper wadding material used as a wound dressing and then as the basis for Kotex feminine care products, invented by Ernst Mahler of Kimberly-Clark Corporation. This also led to Kleenex facial tissue and numerous related innovations, including anti-viral tissue, many innovations in processing and packaging, and eventually soft uncreped tissue (with about 50 patents protecting this significant advance in technology, the basis now for several leading products).



• High performance disposable diapers were invented in the Fox Valley. Key innovations include the use of superabsorbent polymers to increase absorbency and a variety of structures for reducing leakage and improving comfort.



• In April of 1969, Dr. Lawson Winton cloned the world's first test-tube tree, a triploid quaking aspen, at the Institute of Paper Chemistry. Genetic engineering of trees is now the basis for some of the world’s largest suppliers of renewable fiber, such as Fibria of Brazil.



• Appleton was home to the first electric street car. The first electric street cars began operating in Appleton on August 16, 1886. Appleton was also the first community in the nation to have electric street cars. They ran until 1930. Sources: Wisconsin Historical Society and http://www.apl.org/history/firsts.html.



• Appleton made history for having the first buildings in the world with electric lighting from hydroelectric power. From http://www.apl.org/history/firsts.html: “On the evening of Saturday, September 30, 1882, Appleton Paper and Pulp Company, the Vulcan Paper Company, and the Hearthstone (home of H. J. Rogers), became the first buildings in the world lighted by electricity generated from the Edison hydroelectric central station.”



• Inverter power sources for arc welders from Miller Electric. See http://www.millerwelds.com/about/1988.html. Miller Electric has been the source of many significant innovation in arc welding, including the world's first engine-driven inverter. See http://www.millerwelds.com/about/1998.html.



• The Fox Valley is home of many significant advances in packaging for microwave-heated foods, such as US Pat. No. 4,861,958, “Packaging Container for Microwave Popcorn Popping,” by Tim Bohrer (Neenah, WI), Tom Pawlowski (Neenah), and Richard Brown (Appleton, WI) of Fort James Corp., now Georgia-Pacific. This was part of a series of patents for “microwave susceptor” technology that allowed a portion of the package to heat up to properly deliver heat to the food being cooked. They were part of the Fox Valley team that developed the first microwavable popcorn package which insured that more kernels would pop and that the package would expand to accommodate the popped corn. The invention was a huge success selling over a billion units per year in North America. The technology was expanded using chemical deactivation technology which resulted in patented processes for products used by Kraft, Heinz Ore-Ida, ConAgra, and others.



• LiveYearbook (http://www.liveyearbook.com/). This is a startup company that is inventing new ways to provide long-lasting, dynamic yearbooks at low cost for schools and organizations. They were the first IT company and first Northeastern WI company to win the Governor’s Business Prize Award (2010). The programming for this concept is being done here in the Fox Valley.



• The famous enMotion® paper towel dispenser, the one that automatically delivers towel by waving your hands in front of it, was developed in Neenah by a Georgia-Pacific team.



• A variety of papermaking advances have their origins in the valley, including Georgia Pacific's foam-based tissue forming technology that was commercialized in France and novel fabrics for papermaking from Kimberly-Clark, Appleton Wire (now Albany International), and Asten Johnson. The famous Crecent Former, used worldwide for making tissue, was a local innovation from Kimberly-Clark. Also, dryer bars--the rods used in rotating steam-filled driers to enhance heat transfer in drying tissue and paper around the world--were invented in the Valley at Kimberly-Clark Corp. and have saved vast amounts of energy over the years. The Pulmac Classifier for detecting "stickies"--polymer junk that can interfere with papermaking--was also developed in the Valley.



• Some of the most valuable advances in nonwoven textiles and fabrics came from Fox Valley inventors working for Kimberly-Clark Corp. This includes the foundation for many of the laminated fabrics that are used in medical gowns and other health care products, the soft webs used in diapers and many other products, stretchable nonwovens, and polymer-paper fiber composites.

If you would like to see other inventions from this region featured, let me know.

PCT Fees to Drop in September

The IP Factor reports that PCT filing fees are dropping in September. About a 15% reduction. Nice! May US fees start moving downward as well--wishful thinking.

Patent Reform and Medical Innovation: There Are Reasons To Be Concerned

One of the constant challenges in crafting policy and law is to avoid unintentional consequences. This cannot be done by living in an ivory tower. When it comes to the business world in particular, there is a need for careful communication with small business owners and entrepreneurs to understand what they are facing and what they might face in light of proposed changes. When it comes to some of the proposals for patent reform, the need to listen to the "voice of the innovator" becomes particularly great. Unfortunately, there is sometimes a human tendency to listen to the voice of one's own staff and the voice of major contributors rather than the voice of the many who will be affected.

What will proposed patent reform legislation do for the economy? I hope there will be careful hearings and investigations into that matter, far more than the efforts so far. Consider the medical industry, an area where innovation can have tremendous impact not only on the economy but directly on human lives. Will changes in patent laws hinder innovation and weaken the industry? Whatever changes we make, let's hope they will strengthen this vital area.

The magazine Medical Innovation and Business recently devoted an entire issue to the challenges of patent reform. The lead article, "Patent Reform: Effects On Medical Innovation Businesses" by Renee Kaswan, David Boundy, and Ron Katznelson, speaks in strident tones about the scope of the problem:

We, as the editors of this special issue, are deeply concerned that the Patent Reform Act will severely harm medical and small company innovation. As an academic researcher who invented a blockbuster drug, Restasis®, a patent lawyer who has helped small companies and their investors, and an inventor/entrepreneur who founded and raised investment capital for two start-up companies based on patentable inventions, we have seen how the robust American patent system enables new, innovative companies to secure investment funding and to negotiate with strategic partners. We have seen how patents enable entrepreneurs and researchers to turn raw ideas into useful products. A strong patent system benefits patients and helps the economy grow by giving companies the competitive position and incentives they need to get new pharmaceuticals, medical devices and procedures into the technology pipeline. Innovators can invest in R&D, testing and FDA approval because patents allow investors to recoup their investments in these staggeringly expensive activities. We are very concerned that the Patent Reform Act undercuts the entire idea-to-product pipeline by weakening the investment value of patents in several ways that selectively impact the most innovative companies. If Congress gets Patent Reform wrong, products characterized by high development costs and low production costs, typical in medical innovation, will die in the lab. The capital investment necessary to get ideas to market will simply dry up, and be diverted to companies that don't need patents to attenuate risk.

Some of the many articles in the issue include:

• "Venture Capital - The Buck Stops Where?" by Gary Lauder


• "What Is A Bad Patent? 1" by Patrick Doody


• "Patent Reform's Weakened Grace Period: Its Effects On Startups, Small Companies, University Spin-Offs And Medical Innovators" by David E. Boundy and Matthew Marquardt


• "Post-Grant Review-Our Next Nightmare? VC Perspective" by John Neis


• "Patent Reforms Must Focus On The U.S. Patent Office" by Ron D. Katznelson, Ph.D.