America-Israel Patent Law

Patents and Technological Obsolescence (with thanks to Tom Lehrer)

Yesterday I wrote about Tom Lehrer dedicating his songs to the public.  Turns out that his output includes a song that’s a wonderful illustration of technological obsolescence.  But a word of background.

The idea behind patents is that by disclosing technological innovations in a manner that enables others to copy those innovations, and by providing the disclosers with a limited period of exclusivity in exchange for that disclosure (viz. a patent), competitors will both be able to implement the technology when the patent expires, and, if the technology is of sufficient commercial interest, be spurred to get around the patent(s), either by developing completely new technology, or by identifying limitations of the patents (in the extreme case, determining that the patents are invalid) and designing around those limitations.  In the end, competition in the field often leads to lower prices for end users, and improvements in technology.  Either way, it’s a variation on the idea that the Talmud expresses as קינת סופרים תרבה חכמה.

In retrospect, Tom Lehrer’s “Polaroid Photography Song” in its 1980 version illustrates this.  In the unlikely event that there are readers who aren’t familiar with Polaroid photography, Polaroid was a big deal in the 1960’s and 1970’s, and even through much of the 1980’s.  Photography until that point had required taking film to a laboratory to be developed (or to one’s own darkroom), which generally meant waiting a few days for the lab to develop the picture, and that was only after the roll of film was used up.  So it could be weeks or months before one saw his pictures.  Edmund Land and his company Polaroid came out with fast, self-developing film, allowing photographers to see their photos on-the-spot, within minutes of taking them. 

The Lehrer Song lists some of the many uses to which this could be put to use (sung to the tune of “The Major General’s Song”, the same G&S tune that Lehrer used for The Elements Song):

Of uses for our photographs you'll find a multiplicity,

From quality control to advertising and publicity,

Computer graphics, diagnostics, also radiometry,

Endoscopy and dentistry and microdensitometry,

And micrometalography and paper chromatography,

Spectrography, thermography, and color scintillography,

For studies biomedical and studies anatomical,

[soft] For bodies microscopic and

[loud] For bodies astronomical!

CHORUS: For bodies microscopic and for bodies astronomical,

For bodies microscopic and for bodies astronomical,

For bodies microscopic and for bodies astronomic-omical!

Geology, oncology, pathology, myology,

Astrology ---astrology? ---forget it , my apology ---

With spectroscopes, oscilloscopes, and cam'ras ultrasonical,

There's hardly any science that is missing from this chronicle.

CHORUS: With spectroscopes, oscilloscopes, and cam'ras ultrasonical,

There's hardly any science that is missing from this chronicle.

Acoustical holography, computerized tomography,

Diffraction crystallography and autoradiography.

In short, in ev'ry field from cosmic rays to choreography

There's bound to be a way of using Polaroid photography.

CHORUS: In short, in every field from cosmic rays to choreography

There's bound to be a way of using Polaroid photography.

[Getting faster and faster:]

In short, in ev'ry field from cosmic rays to choreography

There's bound to be a way of using Polaroid photography.

CHORUS: In short, in every field from cosmic rays to choreography

There's bound to be a way of using Polaroid photography.

Eastman Kodak, at the time a giant in the photography field, decided it could make its own line of fast-developing film and cameras, without infringing Polaroid’s patents.  Oops.  Polaroid sued, and Kodak lost, big time, ultimately settling to pay Polaroid upward of nine hundred million dollars.

But where are Polaroid and Kodak today?  They’ve both been usurped by digital photography (and Kodak, ironically, was one of the innovators of digital photography but didn’t realize how this would upend its film business).  You can read the story in Ronald Fierstein’s “A Triumph of Genius”.

So yes, a good patent portfolio can protect your product line from copyists. But it can’t stop others from coming up with something better…and if it’s a really good portfolio, that’s exactly what it’s supposed to do.

Dedication of IP Rights to the Public (Tom Lehrer Fans, Rejoice!)

 

We refer to patents, trademarks and copyrights as "intellectual property" in part because they have attributes of what we normally think of as tangible property.  Just as ownership of tangible property – a piece of land or a bicycle – allows us to say who can and can’t use our property, but doesn’t necessarily allow us to use our own property in all situations (e.g. in most places you need a license to drive a car, even if you own it), so too IP rights provide us with a say over who can use our IP, even if IP ownership doesn’t guarantee us the right to use our own IP (e.g. sometimes it’s necessary to cross-license with another IP owner). 

Additionally, we can dispose of IP rights like we do tangible property: we can transfer ownership to others, we can pass on IP rights to our inheritors, or we can forego our rights and dedicate our IP to the public (in the case of IP, prior to the date on which those rights would otherwise have expired). 

Dedication to the public is probably most commonly encountered in the context of US patent prosecution, which sometimes requires an applicant to disclaim the term of a to-be-granted patent beyond a certain date and to promise that that to-be-granted patent will be co-owned with an earlier-granted patent in order to be enforceable, in order to secure grant of the later patent.  (We’ve discussed this in previous blog posts, e.g. here and here.)  That is at its heart a form of dedication to the public, or can be viewed as such.

Less commonly, an author will dedicate his writings to the public.  Recently, Tom Lehrer announced that that’s what he’s doing with his corpus of songs and, to the extent he can, the music he wrote for those songs.  Actually, since US copyright law doesn’t have a dedication-to-the-public provision, technically what he did was to grant an irrevocable, royalty-free license to all comers to use his words and music, but the end result is the same.  We sometimes see this in the patent sphere; a covenant not to sue can also achieve the same end.

If you’re reading this blog and you don’t know who Tom Lehrer is, he was trained as a mathematician, but he gained fame in writing and performing satirical songs on topics of the day in the 1950’s and 1960’s.  His classic “I got it from Agnes”, for example, seems rather appropriate in this era of the Wuhan virus and “contact tracing”.  As an Eagle Scout and a chemist, two of my personal favorites are “Be Prepared” and “The Elements Song”, respectively. 

In any event, Mr. Lehrer is still alive and now in his 90’s, and has made his lyrics and much of his music available here.

Bill Murray Visits the Israel PTO

Not really. But the ILPTO's emailing today of a link to the recent announcement that Trinidad & Tobago has joined the Madrid Protocol reminded me of this classic Bill Murray scene. 

In more ways than one.

 

When Science Professors Opine on IP Matters Without Good Legal Advice

The letter below came to my attention recently.  It was sent out by two professors in administrative positions at one of Israel’s institution of higher education.  Can you spot the errors?

Greetings All, 

Maintaining records of laboratory work is important for the day-to-day activities of collaborative research within a group or Department. Moreover, it is a legal requirement for securing Intellectual Property (IP) rights in cases where patents are involved and the novelty of an invention might be contested.

Traditionally, hardbound notebooks were the standard method for recording and saving laboratory data. With widespread and advanced use of lab computers and digital information processing, the use of paper records is no longer adequate. Researchers around the world use various well-known digital document sharing solutions such as Dropbox, GoogleDocs, or OneDrive, which were not specifically designed for this purpose and therefore not legally recognized. .   

In order to keep up with the growing needs of labs, [name of institution] selected [Vendor/System] for electronic data management. This system was first implemented at [name of institution] in May 2018 and includes the following features:

• • Organize and manage laboratory data in a flexible multi-disciplinary environment
  • Protect intellectual property
  • Collaborate safely and securely
  • Data compliant with funding agency requirements
  • Works on multiple platforms including iOS and android
  • Recognized by funding agencies

The system is currently being used at [institution] by 53 research labs who have created 400 Digital Notebooks.

Dr. WW from the Department of XX was among the pioneers who initiated the project at [institution] and has been using [System] from the beginning.  We encourage you to contact him and learn about his experience with the product.

[Vendor] will be offering an informational webinar this week on Thursday, October 22, 2020, at 14:00.  A group of researchers will speak about their experience with the product, give advice, and present workflows that they have created with the tool.  The event is open to anyone who registers:  [url]

We invite you to take research storage and collaboration in your lab to the next level with this advanced data management system.

Click here for more information about [Vendor] and how to register [link disabled] 

Professor YY                                                                   Professor YY

In case you missed them:

1. Saying that “Maintaining records of laboratory work … is a legal requirement for securing Intellectual Property (IP) rights in cases where patents are involved and the novelty of an invention might be contested” is misleading at best and in some case just wrong, in two respects.

First, you normally don’t need to prove when you conducted experiments (if you did conduct experiments) in order to secure IP rights – the patent application, if it is properly drafted, speaks for itself. 

Second, in the old days, in the USA, when there was a first-to-invent system, proving initial conception and diligence in reduction to practice could be important, and well-maintained lab notebooks could come into play in situations where precedence of conception was in question.  And yes, proving an early conception date could in some cases be used to disqualify an otherwise novelty-destroying publication as a reference.  Nowadays, though, even the USA has abandoned first-to-invent.  By and large, the first party to file wins (no more interferences in the USA), and the question of priority of inventorship, if it arises, will only arise if the later-filing party asserts that the earlier-filing party derived (or in less flowery language, stole) the invention from the later-filing party.  There’s no more establishing an earlier conception date to overcome a prior art rejection.

2. Paper records may be a cumbersome way to share data, but to say they’re inadequate is a bit much. And to say that Dropbox, GoogleDocs, and OneDrive “are not legally recognized”, whether because they were not specifically designed to share lab information or for any other reason, is, again, just wrong. Can one imagine a system designed specifically to record and share lab data, that clearly records the dates and times on which information was entered and modified, and by whom, and that is protected in such a way as to serve as a good source of evidence in court?  Sure.  But that doesn’t mean that paper is per se inadequate for that task.  It may require a lot more work at trial to prove the veracity of paper records than records generated in a specifically-designed electronic system, but if the researcher is meticulous and diligent about documenting her work, paper can be fine.  Ditto for general document sharing services.

So how did these errors enter into this letter? I have a friend who works in the tech transfer office of this particular institution, who explained that the professors involved (neither of whom, to the best of my knowledge, has been involved in IP litigation) were advised by the office of general counsel rather than by the IP specialists at the TTO.  It’s a shame, because the result is the professors sound like they’re pitchmen for the particular service, rather than the accomplished scientists that they are.

Can We Please Not Screw Up Organic Chemistry With Political Correctness?

I’ve been writing this blog on and off for over ten years, and I don’t think that until now I’ve strayed beyond IP-related things.  I guess there’s a first time for everything.

I was a chemistry major in college.  My favorite course was my sophomore year organic chemistry course, a fact due at least as much to Maitland Jones’ teaching as the subject matter.  I was sufficiently into it that when we got around to studying Diels-Alder and related reactions, and the Woodward-Hoffman rules that explained those reactions, I actually went to the library and checked out Woodward and Hoffmann’s classic “The Conservation of Orbital Symmetry”, which I read cover-to-cover. 

Note that I mentioned Diels, Alder , Woodward and Hoffmann.  Orgo was full of reactions, reagents and phenomena named after the people who discovered them or who devised rules explaining a large set of observations.  Brønsted-Lowry acids and bases. The Cope rearrangement. Tollens’ reagent.  In fact, prompted by the piece I link to a little later, I went back to my sophomore year orgo book, which was published in 1984, and found the following reactions, reagents and phenomena listed in the index:

Friedel-Crafts acylation	Beilstein test	Leukart reaction
Friedel-Crafts alkylation	Hinsberg test	Lewis acid
Skraup quinoline synthesis	Boltzmann constant	Lewis base
Cannizzaro reaction	Cahn-Ingold-Prelog system	Lewis structures
Grignard reaction/reagent	Chichibabin reaction	Lindlar catalyst
Lemieux-Johnson oxidation	Claisen rearrangement	Lobry de Bruyn-Alberda van Eckenstein reaction
Clemmensen reduction	Fischer indole synthesis	Loeffler-Freytag reaction
Knoevenagel condensation	Claisen-Schmidt condensation	Lossen rearrangement
Schiff base	Cleland’s reagent	Lucas test
Wadsworth-Emmons Wittig reaction	Dieckmann condensation	Mannich base
Wittig alkene synthesis	Ellman’s reagent	Mannich reaction
Wolff-Kishner reduction	Edman degradation	Markovnikov rule
Hantzch pyridine synthesis	Edman reagent	McLafferty rearrangement
Kiliani-Fischer synthesis	Reformatsky reaction	Meerwein’s salt
Claisen condensation	Hell-Volhard-Zelinsky reaction	Meisenheimer complex
Ruff degradation	Erlich’s reagent	Merck Index
Weerman degradation	Eschweiler-Clarke reaction	Merrifield synthesis
Wohl degradation	Favorskii rearrangement	Merrifield resin
Cope elimination	Fischer esterification	Michael reaction/addition
Diels-Alder reaction	Fischer projection	Pauli exclusion principle
Wittig reaction/reagent	Friedlander quinoline synthesis	Reimer-Tiemann reaction
Williamson synthesis	Fritsch-Buttenberg-Wiechell rearrangement	Pinacol rearrangement
Würtz reaction	Hammond postulate	Planck’s constant
Amadori rearrangement	Haworth projection	Sandmeyer reaction
Vilsmeier reaction	Heisenberg uncertainty principle	Rosenmund reaction
Gabriel synthesis	Henderson-Hasselbach equation	Ruhemann’s principle
Hofman rearrangement	Hess’s law	Sanger reagent
Schmidt rearrangement	Hinsberg thiophene synthesis	Saytzeff rule
Walden inversion	Hofmann elimination	Schardinger dextrins
Strecker synthesis	Hund’s rule	Schiff fuschin text
Markovnikov addition	Hückel 4n+2 rule	Schlenk equilibrium
Fischer proof	Hunsdiecker reaction	Schotten-Baumann amine synthesis
Arbusov reaction	Paal-Knorr synthesis	Raney Nickel
Arndt-Eistert reaction	Japp-Klingermann phenylhydrazone synthesis	Tiffeneau-Demjanov rearrangement
Baeyer test	Kekule structures	van der Waals forces
Baeyer-Villiger reaction	Wolff rearrangement	van der Waals radius
Beckmann rearrangement	Körner absolute method	Wolfrom homologation
Beer’s law	Ladenburg benzene	Woodward’s rules for UV absorption
Beilstein	LeChatelier’s principle

What caused me to look up and compile this list?  It was this write-up in Chemical & Engineering News, the weekly publication that goes out to members of the American Chemical Society, of a recent podcast hosted by C&EN.  The “issue?”  That orgo has all these name reactions, and the names are all those of white men.  Here’s one of the money quotes, from a woman with a PhD who is the head of the student lab courses at North Carolina State:

“All the name reactions that we teach in organic one and organic two are named after all white men. So I find that very discouraging to women in the field or people of color in the field because it looks like nobody’s ever going to name a reaction around your name.”

That thinking is muddled, in several ways.  First, many of those name reactions were discovered at a time when very few women were working in the field, when most of the work in chemistry was being done in Germany and France and Russia and England, and now that those reactions have been discovered, they can’t be discovered again. So that precludes not only women from getting those now-known reactions named after them, but also precludes men – of any skin color – from getting those now-known reactions named after them.

Second, who gives a hoot about the gender or the skin color of the people who discovered the reactions, and why should the fact that historically light-skinned men were active in organic syntheses discourage anyone nowadays?  Nothing is presently preventing women, or men, or platypuses, of any shape, size or skin melanin concentration from discovering new reactions. In fact, the article itself notes that the namesake of one of the more recently named reactions is Carolyn Bertozzi, a professor at Stanford.  I wouldn’t mind having a reaction named after me, but gosh, I haven’t discovered one. The small likelihood of having a reaction named after me was not what led me to pursue a career outside the laboratory.

Third, the attitude evidenced by the woman from NC State reflects a trend, currently in vogue, to try to erase history. That might have flown in the USSR, but it doesn’t fly in societies that are honest about their past.  Chemistry in the 19th century was mostly done by men in Europe and Russia.  Why should we pretend otherwise?

Instead of whining about how there are all these reactions named after men, Ms. Student Lab Course should take note of the fact that the Nobel Prize in Chemistry this year is going to two women for their contributions to the development of CRISPR-Cas9 technology.  If she thinks female students need more encouragement, that ought to do it.

We Like The PCT International Bureau (For Good Reason, And They Know It)

An applicant who is entitled to file a PCT application may file using his "home" patent office as the PCT Receiving Office (RO), or, if local law allows filing outside the "home" jurisdiction, at the PCT International Bureau (IB).  (Technically, one may actually file at ANY PCT RO, but if it's not one's "home" RO or the IB, additional fees may be required.)

For many reasons, I am a fan of filing via ePCT, using the IB as the RO.  Among those reasons: ePCT includes many checks to help ensure that you don't miss a date or omit materials; ePCT allows you to see what your drawings will look like before they're submitted; after filing, you can immediately check on the application in your ePCT "workbench"; and if there are problems, you can talk to the people at the RO/IB, which is super, super helpful and which, like the rest of the electronic filing team at the IB, super super responsive. 

(To give fair due to the PCT section of the Israel PTO: they are also a super helpful crew.  Unfortunately, at present if one files at RO/IL, it takes a few days until the application shows up in ePCT.)

From time to time, the IB offers free webinars on the PCT in general, on using ePCT, on using the PatentScope database, and on other topics.  On October 14 it offered a seminar that included updates on PCT rules and some other helpful information.  There was also a presentation on e-filing using ePCT, which was good for people who haven't used the system before (although unnecessary for those who have).  The question-and-answer session at the end also contained useful information.  The session will be offered again live on October 28 and November 2 (click here to register), but the October 14 session has already been archived and available for listening here.  I highly recommend that readers go to 1:39:00 and listen for the next minute: the IB knows it's super helpful...and that not all RO's are as inclined to help applicants.

Certification for Patent Searching?

A friend passed on this link to me.  It’s for an organization that exists to give credentials to patent searchers. 

Searching the corpus of prior publications, and assessing the results, can be an important part of assessing the patentability of one’s invention, of deciding on a strategy for patenting or for business development in general, and of developing a research program to support one’s patent applications.  Once submitted, patent applications generally can’t be modified by incorporation of new information, so applicants who don’t do a search before drafting patent applications do so at their own risk: if the application is written in a way that it appears that the claimed invention is known or is obvious in view or prior publications, and there’s insufficient material to support changes to the claims that would overcome those problems, the application won’t be allowed.

Searching, however, can be a haphazard affair.  The quality of a search is dependent on many factors, including the applicant’s budget, the field of endeavor, the applicant’s budget, the experience of the searcher, the applicant’s budget, the number of languages spoken by the searcher, and the applicant’s budget.  Today there are many options for patent searching: many patent law firms offer such services; a number of national patent offices (e.g. Sweden, Norway, Switzerland) offer such services, since a good part of an examiner’s time is spent doing searches; and many private organizations which are not law firms, many of which are based in India, offer such services.  Additionally, many national patent offices are now underworked, so another approach to searching is to draft and file a first application, and to obtain an early search and/or examination report well before the priority year has ended, then file one or more further applications before the end of the priority year that include material meant to address issues raised in the search.  Israel offers such a service, which includes an examination report; this can be done at the UK IPO as well, more easily and for less money, and with the advantage that one can request only a search report, without an examination report.

The idea of professional licensing or certification is, of course, not new, and it is not foreign to patent practitioners, who in most jurisdictions are licensed.  But the idea of giving certification to patent searching is a new one.  This could be a genuine attempt to provide some meaningful certification for patent searchers, but it could also be a ruse to sell a “certification” that enriches the certifying organization without really providing benefit to the public that uses the search services.  I didn’t find anything on the organization’s site explaining under what laws it has been incorporated, which makes me wonder about its legitimacy. I can think of at least one patent firm that will likely obtain this certification, simply to use it as a differentiator from other firms.

In any event, today is the last day to take advantage of some lowered criteria for certification.

But What's The Plaintiff's Cause of Action?

After years of lacking an official internet presence, Gary Larson recently relented and starting posting his old Far Side cartoons on a daily basis.  Several of these have an IP angle to them, like this one.  But what's the cause of action here - right of publicity? Copyright? Unjust enrichment? Passing off?

Ancient Copper Smelting and Intellectual Property

The news outlets in Israel recently ran stories about the discovery of ancient copper smelting furnaces in what is today Beer Sheva (“ancient” meaning 6500 years old).  You can read about it here and here; the journal article that prompted the press release is here.  The general site was first discovered in the 1950’s; the current research was the result of excavations carried out in advance of building in the area. 

It was known that copper smelting at the time was conducted in small batches in crucibles; the researchers, from Tel-Aviv University, the Israel Antiquities Authority and the Geological Survey of Israel, found evidence of larger, furnace-like structures that were used for smelting larger quantities of copper ore.  Crucibles were normally used for a single-step process, but the furnaces were used in a two-step process which gave a better yield. 

As a patent practitioner, there were several aspects of the story that caught my eye.  The first relates to the fact that the furnaces were found in geographically spaced locations within the site.  Apparently all used ore from the same location about 100 km from the site, and all the furnace operators utilized the same basic process; but chemical analysis suggests that the process used with each furnace differed slightly from the process used at the other furnaces.  In other words, someone figured out the technology for the two-step process, and this knowledge was disseminated among a small number of people who maintained it as a trade secret amongst themselves (i.e. as a guild); but the individual operators of the furnaces then experimented with the process, trying to improve it, apparently without sharing their findings with each other, maintaining their own experiments as secrets. 

The maintenance of both knowledge of the copper smelting process as well as attempts to improve it as trade secrets should probably not be surprising: according to the researchers, metallurgy was the hi-tech of the day.  The ability work metal conferred military and other advantages (see, e.g. Samuel I 13:19 – according to Rashi, the Philistines knew how to work iron whereas the Israelites did not, and the Philistines kept it that way to assure their military advantage).  Although in the case of the copper smelted at the Beer Sheva sites, the metalworking was done by others elsewhere, and the copper implements themselves were likely more for ceremonial rather than utilitarian purposes, nevertheless you can’t make the implements without the raw materials, so the extraction process clearly was valuable to someone. 

Additionally, the fact that the basic process itself even existed is remarkable – who figured out that if you heat certain rocks at a high enough temperature, you could get copper (or other metals if you heat other rocks), and how did they discover that? 

I also ask myself, If patents had existed at that time, how might these processes have been claimed?  Nowadays we would specify the temperature(s), pressure(s), and composition(s) of the atmosphere(s) used, but 6500 it wasn’t possible to measure these variables, let alone to control them to the same degree to which they may be controlled today.  And today one might also claim the end product, e.g. on the basis of purity.  Back then, what would have been the test – hardness? Color?   

The disparate locations of the miners, the smelters, and the metalworkers is also interesting. In the situation in which the end products are of primarily ceremonial value, there wouldn’t necessary have been an advantage to consolidating the operations in close geographical proximity.  (And thus, had patent protection been available, the smelters of Beer Sheva might have foregone patent protection in Jordan where the ore was mined, if there weren’t competing smelting operations there…or perhaps they would have sought such protection, to ensure that competition didn’t start up there.  Or maybe they would have just maintained their processes as trade secrets.)  However, in the case in which end products were utilitarian, there may have been advantages to such geographical consolidation of at least two of the three steps.  And indeed, the researchers noted that in later periods in the area, it became standard to smelt the metal close to the place at which it was mined.  The variables to be taken into account in the economics of the production of goods apparently haven’t changed all that much over the years.