Once upon a time the New York Times was a respected publication. These days it’s overpriced toilet paper (and not very soft at that, let alone perforated for easy use). Case in point: a piece it ran at the end of January under the heading, “Colombians Ask: Who Would Dare Patent Panela?”.
The impetus for the article was the issuance in April 2020 of US patent no. 10632167, entitled “System and method for processing raw sugarcane maximizing the preservation of policosanols during production of a shelf stable potable cholesterol-reducing product”. The premise of the NYT piece is that this patent covers a long-known method to make a long-known product (panela), and thus the issuance of this patent, and related patents in Colombia and other parts of the world, will preclude Colombians from practicing a process, and producing the resulting product, that they’ve been practicing, producing and consuming for generations, and that they will be closed out of the market for export of panela to the USA and Europe.
In what has become typical fashion for its hit pieces on patents and other disfavored subjects, the piece weaves in select facts and select omissions of facts to imply that the End of World is Nigh. Had the “reporter” done her homework, she would have asked pertinent questions, like, “Does this US patent have effect in Colombia? Does it actually cover the traditional product or the traditional way of making that product? Will it preclude importation of the product into the USA?” But God forbid that the Times engage in actual reportage. (Hey, if you can spend eight years doing nothing but deifying an incompetent president, and then more than four years doing nothing but smearing his successor who actually did many things right, not to mention assert, repeatedly and loudly, the canard that the USA was founded in order to perpetuate slavery of black Africans, what’s a hit piece on a single patent, right?) So let’s delve into those questions ourselves.
First, some history: the US patent mentioned in the piece, 10632167, while constituting the maturation of USSN 15/803,037, filed in October 2017 and the first application in a chain, is not the first US patent to issue from that chain. That distinction goes to US 10,493,121, granted in December 2019, which was filed as USSN 16/163,365, a continuation-in-part of the ‘037 application. Those two applications served as the priority applications for PCT/US2018/058537, filed in October 2018. It is the PCT that gave rise to related applications in Australia, Cuba, the EPO, China, Ecuador, Nicaragua, Peru and Mexico. A third US application, 16/702,238, was filed in December 2019 on the day that the ‘121 patent issued.
Second, neither of the US patents, nor the pending US application, nor the published PCT application, nor the claims pending in Europe or Australia, claim a product per se. All of them claim a method to produce a juice, not to produce panela, which is a solid. Taking US 10632167 as an example, this patent has a single independent claim, which reads:
“A method for processing a quantity of unwashed raw sugarcane sticks to produce a policosanol-rich sugarcane juice product via a sugarcane juice product processing system, the unwashed raw sugarcane sticks each including a sugarcane stalk outer cortex containing natural policosanol-rich waxes and minerals, the method comprising steps of:
shredding the unwashed sugarcane sticks and conveying the shredded and unwashed sugarcane sticks toward a first one of a series of mechanical roller mills;
extracting sugarcane juice from the unwashed shredded sugarcane sticks via the series of roller mills, the shredded sugarcane sticks, while being conveyed through the series of roller mills, macerated with water having a temperature maintained within a temperature range that prevents dissolution of said policosanol-rich natural waxes and minerals in the sugarcane stalk outer cortex, to produce a volume of water-diluted extracted policosanol-rich sugarcane juice product;
filtering the diluted extracted policosanol-rich sugarcane juice product through at least one filter;
stabilizing the pH of the extracted and filtered policosanol-rich sugarcane juice product in a non-acidic solution of calcium hydroxide to a stabilized pH level within a pH range of 7.0 to 7.6;
heating the pH-stabilized sugarcane juice to a temperature maintained within a temperature range precluding evaporation of policosanols from said extracted policosanol-rich sugarcane juice product;
clarifying the heated and pH-stabilized sugarcane juice, wherein the heated and pH-stabilized sugarcane juice is flocculated using a mixture of water and at least one flocculate product, the flocculated sugarcane juice forming a glutinous froth, the glutinous froth retained and subjected to further processing in order to preserve a rich concentration of policosanols contained therein, the policosanol-rich processed froth subsequently reintroduced into the sugarcane juice product being processed;
evaporating the clarified sugarcane juice product via an evaporation apparatus including a series of evaporators, thereby incrementally increasing a sugar and policosanol concentration of the sugarcane juice product to create a post-evaporation, policosanol-rich concentrated sugarcane juice syrup having a desired post-evaporation Brix value, wherein the Brix value of the sugarcane juice product is maintained at or below 70° Bx during the entire evaporation step; and
extracting the evaporated sugarcane juice concentrate from the evaporation apparatus at said desired post-evaporation Brix value,
wherein, the sugarcane processing method maintains a juice product temperature within a temperature range precluding evaporation of policosanols from said extracted policosanol-rich sugarcane juice product throughout said process.”
That’s a method claim with a lot of steps, and the independent claims in the other US patent and pending applications are similar. Under US law, in order to infringe, the infringer would need to practice every single one of those steps - leave out a step and there’s no infringement. Or if some of the steps are practiced by one entity, and the other steps are practiced by another entity, and those entities aren’t acting in concert, there’s no infringement. In this particular case, there also seems to be an easy and inexpensive out: since the starting material is unwashed sugarcane, rinsing the sugarcane with water before beginning the process would apparently result in non-infringement. (Presumably the law is similar in this regard in the other countries where patent applications were filed.)
And of course, a US patent has no force outside the USA against actors who are acting entirely outside the USA. Patents are territorial.
Those are all facts the “reporter” could easily have ascertained, had she troubled herself to talk to a patent attorney…or, in the case of the requirements for infringement of a method claim, even to an L1 taking a patent law course.
Similarly, she could easily have learned that in the USA, a claim on a method does not prevent others from making, using or selling the product resulting from practice of that method, unless they actually practice the claimed method to produce the product.
And if the “reporter” had a friend who’s a more experienced patent attorney – or if she had just spoken with a patent attorney looking for some free publicity – she would have learned that 35 USC §271(g) ostensibly makes it an act of infringement to import into the USA the product of a process that is protected by a US patent, but that the case law has taken most of the teeth out of §271(g), so that if the product can be produced commercially by a non-infringing process, the imported product won’t infringe under §271(g), even if produced by the infringing process.
Why is all that relevant? Because at one point, she notes that (a) Colombia exported about 9000 tons of panela to the USA and Europe in 2019, (b) in Colombia, producers of refined sugar are precluded by law from producing panela, but (c) those same producers are not precluded from producing panela outside Colombia, so (d) if a Colombian sugar producer could control the production (and importation) of panela in (and into) the USA, such a producer could foreclose the market to the (much smaller) Colombian panela producers. Had she done her homework as outlined above, she would have found that that’s an unlikely outcome, since, as noted, panela can produced by non-infringing methods, so §271(g) can’t be used to enjoin the importation of panela, even if produced by the patented method.
Moreover, if indeed the process for producing panela is in the public domain (see below), then there’s nothing NOW to stop someone from producing panela in the USA and competing with the Colombian producers. Well, nothing but economics, which would seem to require a good local supply of sugarcane, and expertise in production, which the article states is difficult to find, even in Colombia.
All that, of course, is before we get to the most glaring issue, which is that if any of the claimed processes were known or were obvious before the patent applications were filed, then the claims on those processes are invalid. This is evident from the prosecution of the European case, in which the Examining Division in its search opinion both took note of third party observations that were filed by the Federacion Nacional de Productores de Panela – FEDEPANELA (an organization mentioned in the article as trying to stymie the grant of the patents), requiring the applicant to respond to the issues raised therein, and raised its own bases for prior art rejection of the claims (in addition to raising other grounds of rejection). To the extent the applicant admits that its own processes differ from prior art processes, that will provide others with a blueprint for how to avoid infringement.
The “reporter” has a point in that, if indeed the process claimed in the issued US patent was anticipated or obvious in view of what was known, then that’s a defect in the examination process. What she neglects to mention in that regard is that there are now several mechanisms in place to put a check on poorly-examined US patents.
If what she’s really lamenting is the fact that someone might seek to obtain a competitive advantage by securing the issuance of a patent, then all I can say is, Welcome to the world, honey. But it goes beyond that, because the unstated implication of her piece is that because the USPTO makes mistakes, there shouldn’t be patents.
Hmm. I wonder if the author has been vaccinated against the Wuhan virus. Because if she has, then among the many things and people she can thank are the patent system and President Trump, for providing the incentives to get those vaccines developed and into people’s arms in record time. Now THAT’S a story worth covering.
One final note: the patent specification explains that panela contains alcohols collectively called policosanols, and asserts that these reduce cholesterol levels. The method alleged maximizes the concentration of policosanols in the final product. If indeed the product of the claimed process is novel and non-obvious, then the applicant could have tried to claim it. For example, it could have written a claim such as, “A solid food product comprising between n-m% glucose, o-p% fructose, q-r% sucrose, and s-t% policosanols.” Such a claim, if granted, would be much more effective than a claim on a process (at least in the USA), as it would be easy to ascertain whether or not a product infringes. And if there’s no written analysis of old samples of panela, it would be hard to invalidate such a claim. Whether the failure to include such a claim was deliberate or merely the result of poor lawyering, the lack of such a claim would have been worth mentioning.
Recent Comments