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Patents Science

Patent Infringement Exemption for Research? 97

Posted by ScuttleMonkey from the knowledge-for-the-sake-of-knowledge dept.
cheesedog writes "It has been said that 1/5th of all scientific research projects in the U.S. are currently being stifled by patent claims. Well, it looks like the Senate has taken notice, with a recent proposal that has made it into the PACE Education and Research Act that could extend an exemption from patent litigation for scientific research. The Act also proposes treating specialized industries (such as software and business methods) differently than traditional patent areas."
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Patent Infringement Exemption for Research? More

Patent Infringement Exemption for Research?

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  • and...? (Score:1, Interesting)

    by joe 155 ( 937621 )
    This will do very little though, becuase scientific research is mainly done at universities which have an eye on the end results for profit. The universities will not sponsor extensive research on projects which they will not be able to change into profit. Even if people can do the research for their PHD's then there will be a wealth of information in the "wouldn't it be nice if we could use it catergory"

    • Re:and...? (Score:4, Informative)

      by ZachPruckowski ( 918562 ) <zachary.pruckowski@gmail.com> on Monday January 30, 2006 @01:22PM (#14600033)
      No, Universities often do research to get grants. They don't do research to directly make products, they aim to do basic research. They use successful research programs to win grants to do more research. Otherwise you'd see UNC or Berkley or Harvard branded products.

      • Living in the past. (Score:3, Informative)

        by Parity ( 12797 )
        Universities now file their own patents, while the inventing professor(s) take an extended leave of absence to found a for-profit company that licenses the research from the university, to the better bank balances of professors and universities alike. This is why there's a grumbling about the change in direction of academic research and the decreasing amount of basic research that is being done. Grants are fewer, patent licenses are greater, research goals are shifting.

    • Re:and...? (Score:3, Informative)

      by AKAImBatman ( 238306 )
      I had something of a "what the hell?" reaction when I first read the headline, so I went and looked the original story. The problem isn't that patents are directly interfering with research (which they're not supposed to do), but that they are indirectly interfering. From the study:

      The most common reason respondents reported having to change or abandon their research project was that the acquisition of the necessary technologies involved overly complex licensing negotiations.

      So the problem is less of one in

      • So the problem is less of one in creating, say, a Viagra tablet for drug research, but rather purchasing bottles of Viagra to do research on other health effects.

        Did they try a going to a pharmacy? See above where I don't get it what the problem is.

        • Re:and...? (Score:4, Insightful)

          by AKAImBatman ( 238306 ) <<moc.liamg> <ta> <namtabmiaka>> on Monday January 30, 2006 @01:45PM (#14600235) Homepage Journal
          And what's to stop the drug maker from tying up the research in court because they feel that it is a "defamation of their IP"? It doesn't matter if it the drug maker eventually loses, they can manage to delay the research for YEARS, potentially making it pointless. Thus the researchers have to negotiate a contract that says, "I won't divulge my data until the drug maker has a chance to review it."

      • Re:and...? (Score:4, Funny)

        by Phisbut ( 761268 ) on Monday January 30, 2006 @02:55PM (#14600745)
        The most common reason respondents reported having to change or abandon their research project was that the acquisition of the necessary technologies involved overly complex licensing negotiations.

        <sarcasm>
        But... but... but...
        I thought patents were supposed to *encourage* research and innovation, not *interfere* with it... Now I'm all confused...
        </sarcasm>

        • Re:and...? (Score:3, Insightful)

          by AKAImBatman ( 238306 )
          I thought patents were supposed to *encourage* research and innovation, not *interfere* with it...

          They are. The problem comes in when modern business execs abuse the power they're given all to ensure the best results for the next quarter. What we need is a lot more barratry suits. Once a few lawyers start losing their licenses, they'll think twice about taking nonsensical crap to court.
      • No, the big problem is companies demanding patent fees to do any research, claiming that when any body recieves a grant to do research they are earning a income and hence infringing their patent.

        Just sheer greed in action, so the law needs to be adjusted to ensure research can be carried out free of patent litigation, otherwise it would permanently block anybody but the original patent holder from improving upon a patentable product.

        Effectively eliminating all competition in research and dumping all fut

      • All research has inputs and outputs, both physical and mental.

        Research and new ideas don't happen in a vacuum. This is directly affecting research.

        The cosy world view of the patent mafia has only a tenuous link with the reality of research and development.

        Amongst many other things research depends on the free exchange of ideas; people checking on, working with and re-arranging other people's ideas. That's the "re" in research. Publishing an intentionally difficult to interpret patent doesn't even remo

    • Actually, most universities do not fund or are even involved in the approval of most scientific research occuring on their campuses (with the exeption of research needing ethical review). Most scientific research is funded by public grants, and some from collaboration with private companies. While universities are very happy when a product of research is profitable/licenseable, there is more money to be had in scoring more grants, which can only occur with good research and extensive publication.

      aloha
      psil

    • Re:and...? (Score:3, Informative)

      by FuzzyDaddy ( 584528 )
      Universities do not decide what research gets done. Professors apply for grants to outside agencies (NASA, NSF, NIH, etc.,etc.) which are peer reviewed. The awarded money goes to the professor. Universities get a cut of the money ("overhead"), but don't decide what research gets done.

      Now, if something gets done which is patentable and potentially licensable, they will certainly pursue it - but the university administration doesn't make the research decisions.

  • Text (Score:5, Informative)

    by _Sharp'r_ ( 649297 ) <sharper@NOsPaM.booksunderreview.com> on Monday January 30, 2006 @01:21PM (#14600022) Homepage Journal
    text of the bill [loc.gov].

    It has over 40 co-sponsors (From Allen to Obama) and doesn't look like it's going to become a partisan battle, so maybe it'll actually pass.

    • Re:Text (Score:5, Informative)

      by Peyna ( 14792 ) on Monday January 30, 2006 @02:15PM (#14600451) Homepage
      Note from the text that this law doesn't actually change anything. It's just the Senate coming out saying "We think these reforms should be done," but doesn't compel them to actually do them.
      • I assume it is the patent office that would actually have to inact these reforms?
        • No, things are not so screwed up yet that Congress needs to get permission from an agency in order to make law. They are going with a "sense of the Senate" clause because it is easier to get passed and to a politician the appearance of doing something is more important than the actuality.

  • How does this help? (Score:5, Interesting)

    by ZachPruckowski ( 918562 ) <zachary.pruckowski@gmail.com> on Monday January 30, 2006 @01:25PM (#14600052)
    As I see it, this will allow people to do research on things that would have been blocked by patents otherwise. But doesn't that make products related to that research completely poisoned? I mean, it'd be fine for anyone doing the research for the sake of the research, but you'd have major IP issues if you tried to market something derived from the research, right?
    • I mean, it'd be fine for anyone doing the research for the sake of the research, but you'd have major IP issues if you tried to market something derived from the research, right?

      Well, if the product's worth it, there could be some licensing. But at least we'd have a working product, not an "idea to be researched".

      I know, this doesn't solve the patent problem per-se, but it's better than nothing :-/

    • Re:How does this help? (Score:3, Interesting)

      by samkass ( 174571 )
      On the one hand, it means the only people allowed to use the research for commercial purposes are the owners of the original patent, so universities effectively become research arms of the patent owners. On the other hand, the researched extensions to the patent are themselves unpatentable, and potentially gets the technology into the public domain sooner and cleaner. (Remember patents don't go on "forever", like copyrights effectively do under Disney's America.) Otherwise, most patents get subsequent fi
    • The classic case of this (and research exemption isn't new, this is a refinement of it) is if your pharmaceutical company is developing drug A and a competitor has patented drug B, you can synthesize your own B substance and use it to compare the relative performance of the two without concern for patent infringement. Or you can observe in detail what B does and use it to design a different drug C with a similar effect.
    • Okay, this is secondhand info from my dad (who is a research scientist working in a private firm, so has a good idea what's goin on in the area).

      Let's say a company is researching, say, a cure for smallpox. They're going at it in a bunch of different ways, and they want to try a specific treatment that requires "Chemical X."

      Now, the most EFFICIENT way to produce Chemical X is patented by another company. That means that in order for this company to do its research, it has to use some roundabout method of pr
      • You can make Chemical X using the patented process in the lab. There's no problem there. The problem comes if/when you try to patent the process yourself or use it in a published process (eg. for FDA approval) to manufacture and profit.

        It probably won't change much except to allow multiple people to publish/patent the same route to the same molecular entity as long as there's no legally demonstratable "for profit" motive.

        IOW... it doesn't really change anything. But it makes for feel-good press releases.
    • Mandatory cross-licensing between the upstream and downstream patent users. Basically, you get to use mine if I get to use yours. Innovating products will be made, and assuming companies already charge what the market will bear, consumers will not (cannot?) be overcharged (any more than usual). The patentees will share the profits. "Fair, non-discriminating royalties" will become a popular term in a few years, it would seem.

      Incidentally, the entire debate on whether we will have a mandatory licensing regime

  • Huh? (Score:2)

    by Kohath ( 38547 )
    What are these guys talking about? If you want something that's patented, you go and buy it at the store. How does that interfere with research? I don't get it. What am I missing?

    When they say they had trouble "acquiring patented technologies" to use in their research, what do they mean? Examples please.

    (I RTFA and skimmed the linked articles. It's a survey. I saw no examples of what they meant when they said they couldn't acquire patented technologies.)

    • Re:Huh? (Score:3, Insightful)

      by mopslik ( 688435 )

      What are these guys talking about? If you want something that's patented, you go and buy it at the store. How does that interfere with research? I don't get it. What am I missing?

      Consider the fact that certain individual genes are patented. Now consider that, to do research involving these genes, you need to purchase a "license" first. These licenses can be extremely expensive.

      I think that this is what the legistaltion is aiming at, rather than, say, you average electronic widget.

      • Now consider that, to do research involving these genes, you need to purchase a "license" first.

        Why? What's the penalty for just doing the research? Is it that you can't ultimately profit from the result?

        • Re:Huh? (Score:4, Informative)

          by HappyHead ( 11389 ) on Monday January 30, 2006 @01:46PM (#14600240)
          <i>Why? What's the penalty for just doing the research? Is it that you can't ultimately profit from the result?</i>

          No, the penalty is being sued for lost royalties by the patent holders, because you used their property without their permission, and then having your research confiscated as it contains and is based on their property. So you're out all that money, <i>and</i> you no longer have access to your own work.
          • Not really. As long as you don't try to patent your research or publish the patented method, nobody would ever know the difference.

            We use patents all the time in the lab. Then we try to get around them if/when they make it to the product development stage.
            • This is what I was thinking. You don't tend to need to license a patent to "investigate" things. At least I didn't think so.

              Some sort of uniform default licensing scheme for patents would probably help a lot of people though.
        • I believe that all depends on the license itself. Some patent-holders are more than happy to have further research done on the genes -- hey, someone else does the work for them. On the other hand, I believe I heard some cases a year or so ago where the "detecting of the gene" had to be licensed, preventing anyone from researching without first paying up.

        • Re:Huh? (Score:4, Informative)

          by cheesedog ( 603990 ) on Monday January 30, 2006 @01:59PM (#14600347)
          What's the penalty for just doing the research?
          The 'penalty' is that it is illegal to do the research without the permission of the patent holder. Here's how it works:

          A scientist independently arrives at an idea that may be covered by an overly-broad or obvious patent claim. The scientist innocently begins conducting research in the area (because there is no way he is keeping track of the 100s of thousands of patents filed each year), eventually letting the world know what he is working on. Big Corp[s] (or Patent Troll[s]) that hold a patent gets wind of his work, and sends him a threatening 'cease-and-desist' letter.

          If the researcher continues past this point, and a court later finds that his work did violate the patent, he is guilty of willful infringement, resulting in court-ordered payment to the patent holder. If willful, those payments may be treble what they would have been had the researcher licensed the technology upfront. And the patent holder can still force the researcher to stop his research immediately.

          Patents grant are a legal right to exclude others from excercising the claims of the patent. That's it. Under current law, there is no exclusion for people excercising the claims in the name of science, solely for their own personal use, etc. The exclusion is 100%. It is an artificial monopoly.

          • I know something about patents. Say I develop (and market, and sell) a product. It turns out I infringed a patent. The patent holder is entitled to damages. It's a license fee per item sold. If I did it on purpose, it's 3x the license fee.

            If I design and never sell or use a product, and it turns out I infringe a patent in the design, then I don't think there's any basis for damages. And 3x=0 when x=0. Is this incorrect?

            What's the basis for damages in a research project? (I don't understand what the
            • 'Damages' may not be the right word, because it implies, once again, something to do with the marketplace.

              Patent rights, as defined by current laws, have little to do with the marketplace. That is why, for instance, a 'patent troll' can collect royalties without ever producing a product whatsoever. In that case, what damages did I do to their product? Zero, because they don't have a product. But that isn't how the system is set up.

              Patent holders are given the right to prevent anyone from practicing

          • What you say is technically true, but that's not the way it works in real life.

            In real life youc an do anything you want--because there's no way to actually prove you were infringing on anything. A pharma company will burn your lab notebook long before they'll let someone subpoena it.

            The problem always occurs in the product development stage when the company you're working for attempts to file their own patent.

            This motion is just a "feel-good" motion which reaffirms the way things have always been done. I

            • What you say is technically true, but that's not the way it works in real life.

              As one who was 'cease-and-desisted' while in college performing research, I'll just go ahead and respond by calling "bullshit." It is easy to sit back and say that this stuff doesn't affect you and that only the ignorant think that it matters, until you are negatively affected by it. And then you realize that you should have been standing up the whole while, making sure your voice was heard.

              • Cease and desisted? What the heck? Did you mail them copies of your lab notebook saying,"haha! I'm copying your research!" Are you trying to scare me into thinking that they had spies in your lab looking over your shoulder saying,"You'd better not order that next bottle of Palladium(dppf) or we'll sue you!"

                Come on. I ask real questions and you come out and attack me?
                • As a matter of definition, the work that is done at universities is done in the open. Papers are published, websites are put up, interviews to the press are granted, articles are written in the campus news. Most academic research is not done secretly, squirreled away for years behind closed doors. That's the point of academia, and to a larger degree, science -- make your results generally known at the earliest possible time (so that you get credit for your breakthroughs) and give enough details so that o
      • The original AAAS report on the effect of patents on science was broadly conducted across disciplines. Patents are not only a problem in BioTech and genetic research. There are *many* reports of research being canceled in electronics and even, yes, in pure computer science. For example, take a look at Chapter 11 of Security and Usability [amazon.com]. The chapter is an overview of keystroke biometrics, and contains a section on the patent minefield in this area. It also states that one of the authors of the article
      • How can you patent a gene? you don't create new genes, you just figure out what existing ones do. I don't think that's deserving of a patent. If I figure why a horse has ears, should I be able to patent that? Just because I figured out that they are used for hearing, doesn't mean that I have come up with a new invention.
        • it's a bit different. what if you create a new species(breed, whatever) of plant that has some nice property of having the exact taste of habaneros and are only as spicy as, say... banana peppers. This is not trivial. it takes several thousand attempts at interbreeding to finally get what is essentially a new plant. Is your work in that field patentable? remember the steps to get there are not obvious and I would call the pepper significantly novel in the world of cooking.

          well, then you can patent it.

    • Re:Huh? (Score:3, Insightful)

      by SirWhoopass ( 108232 )

      What are these guys talking about? If you want something that's patented, you go and buy it at the store. How does that interfere with research? I don't get it. What am I missing?

      A software patent [uspto.gov] covers methods and implementation, not some physical product. Basically, it is a patent on doing certain calculations. No one else can, legally, do those same calculations. So, what do you do if you want to improve on that? What if you think you can make a better compression format, but need to use a patented al

    • If you want something that's patented, you go and buy it at the store.

      The problem is that you can't buy everything in the store, even if you ignore the current fad of patent holding companies who produce nothing but lawsuits.

      Let's say you're researching a new way of making rope and you want to compare it to existing rope-making practices to see if your way is better. Now let's say someone patented a particular method of making rope but doesn't actually sell any. You contact them and ask them if you can ma

  • Finally (Score:5, Insightful)

    by i_should_be_working ( 720372 ) on Monday January 30, 2006 @01:27PM (#14600087)
    Finally, they are starting to recognize that patents can actually deter progress.

    There's a geologist in my department who developed a technique for measuring earth density. This could be good for looking for oil or other valuables underground. He published his work, like all scientists. So some mining/prospecting company read up on it, patented a related method and then tried to stop him from doing any more research on it, lest he give away 'their' secrets to their competitors.

    Insane.
    • So the answer is that universities need to patent and then PD all their non-sponsored research.
      too bad that all the patent apps would likely bankrupt them first.
      -nB

    • > There's a geologist in my department who developed a technique for measuring
      > earth density. This could be good for looking for oil or other valuables
      > underground. He published his work, like all scientists. So some
      > mining/prospecting company read up on it, patented a related method and then tried
      > to stop him from doing any more research on it, lest he give away 'their' secrets
      > to their competitors.

      I call bullshit^Wprior art.
      • Since when has prior art stopped a company from trying to pull a fast one with respect to patents? I didn't say they were succesful, but they wasted alot of his time.

    • Re:Finally (Score:2, Insightful)

      by DRJlaw ( 946416 )
      There's a geologist in my department who developed a technique for measuring earth density. This could be good for looking for oil or other valuables underground. He published his work, like all scientists. So some mining/prospecting company read up on it, patented a related method and then tried to stop him from doing any more research on it, lest he give away 'their' secrets to their competitors.

      Assuming that the facts are exactly as you've claimed then to be, then:

      1. Your geologist should order a c

      • Re:Finally (Score:3, Interesting)

        by i_should_be_working ( 720372 )
        Yeah, he's gone to court to do some/all of that stuff. It's settled now, he's continuing his research. But he shouldn't have had to worry about it in the first place. What a PITA waste of time.

        Hopefully this patent reform would end such bullshit.
    • At least it seems that way.

  • Big plus for (Score:3, Interesting)

    by Marxist Hacker 42 ( 638312 ) * <seebert42@gmail.com> on Monday January 30, 2006 @01:28PM (#14600095) Homepage Journal
    "May change the world if it works" inventions of the type that will make money even if you can squeeze out only a penny above patent licensing- because it allows you to find out if something works *before* you pay for patent licensing.

    I've got just such a device in mind for repurposing high level nuclear waste- but the threat of patent litigation means somebody else will probably beat me to it; there's at least six patents on only tangentially related technology involved, the whole thing is made up of what are basically expensive off the shelf parts (well, except for the fuel, which is an expensive, highly controled, on the shelf part, but I'm sure I could convince the IAEA and the DEA to let me have a tankfull of Hanford's finest if I donate the new above ground, computer monitored tank to pump it into before it leaks into the Columbia).
    • You might have gotten that fuel, before they saw your post on the slashdot, posted as "Marxist Hacker 42"
      • Well, actually for the experiment I'm not really that into actually obtaining the fuel myself- I'm perfectly willing to let somebody FAR more qualified, say from the government, take my invention at the gate to Handford, hook it up to the phone lines, transfer the fuel into it, and leave it in place to gather the data. I can always call in to get the data, and they get the added benefit of automated alarms in case of sudden changes in the temperature or the liquid level. And the waste doesn't actually hav
    • but I'm sure I could convince the IAEA and the DEA to let me have a tankfull
      Simulate it with other materials. That's what the synrock team had to do when confronted with invincible beauracracy for many years (decades!).
      • I suppose I could simulate it for a short time with just a regular fire- but I can't get the long-term data I need (respective temperatures inside and outside, and a count of average daily watts produced over the course of a year) with just a fire- or at least, not very easily. Plus, I'm looking for the specific climate at the Hanford res to begin with- as the original intent is to do something good for my local community, and moving the waste would be antithetical to the theory...

        • I suppose I could simulate it for a short time with just a regular fire- but I can't get the long-term data I need (respective temperatures inside and outside, and a count of average daily watts produced over the course of a year) with just a fire- or at least, not very easily

          What about using radioactive sources that are leased for the purposes of industrial radiography? If it is over a long time the loss of intensity may be a problem, but in the short term it may be the answer. Even neutron sources are u

          • Hmm, that's a thought- I wonder if my wife's relatives in Eastern Oregon would let me experiment a bit if I could guarantee their cattle wouldn't get cancer...their land in the Wallowa Mountains is about the same climate as Hanford....

  • Research? Improvements? (Score:4, Interesting)

    by SchrodingersRoot ( 943800 ) on Monday January 30, 2006 @01:32PM (#14600132) Journal
    Well, I'm not sure what would qualify one as a "researcher."
    Since research often has some sort of financial aspect, this leads me to wonder where the breakpoint would be, and how effective it would be.

    I mean, I can see how patent infringement shielding would be useful in teaching (if not already present), but research is often done with end-result: profit in mind. And if certain (synergistic, for example) technologies were developed using research that was protected by the shielding, where would that patent fall? Improvements on a patented idea?

    I guess I don't know enough about what sort of research is affected by patent infringement litigation.

    I mean, the patent system is a mess. We all know that. And I somehow feel that this is a Good Thing(TM). I hope there'll be improvements. But I still wonder...
    • Seems to me, to take my example above, I would be able to aquire parts to use in my research (such as a large concrete tank, a Freightliner digital float tank probe, a very long digital thermometer, a bimetal thermocoupler, a Basic Stamp, and a couple of voltage regulators and inverters) but if I ever went into PRODUCTION, I'd then have to license these materials that make up my nuclear waste repurposing generator.
  • This makes sense...It'll never pass...

    Andy Out!

  • However (Score:3, Interesting)

    by Billosaur ( 927319 ) * <wgrother AT optonline DOT net> on Monday January 30, 2006 @01:55PM (#14600314) Journal
    Ok, so I'm a researcher, and you've given me the freedom from patent restrictions to allow me to go ahead with my research and Company XYZ can't stop me because it's for "research" and not personal gain. Don't I eventually end up becoming a de facto researcher for Company XYZ? They still hold the patents and could make use of my research to improve their products, couldn't they? And where's the economic incentive for me to do this research?
    • > Ok, so I'm a researcher, and you've given me the freedom from patent restrictions to allow me to go ahead with my research and Company XYZ can't stop me because it's for "research" and not personal gain. Don't I eventually end up becoming a de facto researcher for Company XYZ? They still hold the patents and could make use of my research to improve their products, couldn't they? And where's the economic incentive for me to do this research?

      Surely you can patent something that depends on another patent?

  • Not a good thing (Score:5, Insightful)

    by Peyna ( 14792 ) on Monday January 30, 2006 @02:12PM (#14600434) Homepage
    First of all, the section dealing with patent reform actually doesn't change anything. It would just say that the Senate thinks Congress should enact legislation to make such changes.

    However, I bring your attention to Sec. 321 (3) (A):

    "Congress should implement comprehensive patent reforms that--
    (A) establishes a first-inventor-to-file system"

    While this would make the patent office's job easier (prior art is restricted to everything filed with them), it means that prior art that is not filed is no longer a defense.

    First to file is not good. The research exception would be insignificant next to this change.

    • Re:Not a good thing (Score:1, Insightful)

      by Anonymous Coward
      First to file is good.

      Prior art still applies to first to file. What would change is SECRET prior art. What would change is that submarine patents would go away. I call that good.

      The Constitutional purpose of patents is to advance the public good by publishing innovations. To encourage publication, a temporary monopoly is granted to those who publish, in the form of a patent, the knowledge needed to apply the innovation. The goal is not innovation, but making innovations available to the public.

      There i
      • The Constitution mandates that patents be awarded to inventors. That means the first inventor, not some johnny-come-lately. Whether he's the second, or third, or one thousandth person to invent something, he's not the inventor. That was the person who was first.
        • Sorry, a quick clarification here: The Constitution doesn't mandate that patents be granted at all. But if they are granted, then they have to initially vest in inventors, rather than someone else. Of course, the inventors are still free to have sold their rights off, etc.

        • The Constitution mandates that patents be awarded to inventors. That means the first inventor, not some johnny-come-lately. Whether he's the second, or third, or one thousandth person to invent something, he's not the inventor. That was the person who was first.

          "Congress shall have the power.....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;"

          Doesn't imply a mandate that patents must

        • The Constitution mandates that patents be awarded to inventors. That means the first inventor, not some johnny-come-lately. Whether he's the second, or third, or one thousandth person to invent something, he's not the inventor. That was the person who was first.

          Yep, by the sick logic of the patent mafia having an independent inventor is somehow not clear evidence that invention is obvious to a person skilled in the art. Double-think at it's very best.

          ---

          Creating simple artificial scarcity with copy

          • Well, I dunno. Just because two people come up with it doesn't make it obvious. Remember that obvious to a PHOSITA means that the invention cannot have required creativity at all. I don't think that independent invention makes the inventors uncreative.
    • While this would make the patent office's job easier (prior art is restricted to everything filed with them), it means that prior art that is not filed is no longer a defense.

      No it does not mean that. It only means that we will be moving to first to file along with the rest of the world. Patentees can look around and have more certainty about prior art because if it is not filed, it cannot defeat them for priority on the same invention. Prior art (in the form of published articles, for example) still render

  • PACE Act = BAD! (Score:3, Interesting)

    by diakka ( 2281 ) on Monday January 30, 2006 @02:13PM (#14600439)
    As Winston Wolfe of Pulp Fiction fame eloquently put it.. "Let's not start sucking each others' dicks just yet."

    While this does sound like a good proposal, it is only one part of the PACE Act. There is one measure in this act that I found very disturbing and that is the establishment of a "First inventor to file system." Basically, that sounds like it would kill off any prior art claims that had not been a part of a previously filed patent. I wouldn't be surprised if it didn't increase the number of BS patents filed because companies would be scrambling to file for things just to get it on record. Very Scary.
    • First inventor to file system
      It's good for the patent office - they officially become nothing but a rubber date stamp and cash collection agency and don't have to consider anything else. The US patent system is unofficially close to that now, but do we really want to see things go that extra step - especially with the "fishing" patents out there even now waiting to be sprung on someone who actually works out to solve a specific problem.
    • Don't forget, though, that the US is the only country in the world that uses "first to invent", rather than "first to file". The patent system of every non-American country hasn't suddenly ground to a halt because of this.

  • Be very careful here (Score:5, Interesting)

    by deblau ( 68023 ) <slashdot.25.flickboy@spamgourmet.com> on Monday January 30, 2006 @04:17PM (#14601620) Journal
    Disclaimer: IANAL, this is all my own analysis.

    The issue is not as straightforward as you might think. First, one common bar to receiving a patent is prior art, which is generally covered in 35 U.S.C. 102 [cornell.edu]. The big hammer for prior art made by someone else is 102(b), which says that you can't get a patent if your invention was "in public use" or "on sale" in the US more than a year prior to the filing date of your application. The "on sale" part is fairly easy to understand, but has a few quirks that I won't go into now. The "public use bar", as it's called, is what we're talking about here.

    There is a famous Supreme Court case that says experimental use of an invention, even in the public, isn't a "public use". Such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 134-35 (1877) [justia.us]. This is the "experimental use defense" to the public use bar. You may think to yourself, that's all well and good, researchers are performing experiments, that must be experimental use, right?

    Not so fast. Read the Federal Circuit's take on experimental use, Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002) [pubklaw.com]. The court ruled that use does not qualify for the experimental use defense when it is undertaken in the "guise of scientific inquiry" but has "definite, cognizable, and not insubstantial commercial purposes." 307 F.3d at 1362. Here's their reasoning:

    For example, major research universities, such as Duke, often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects unmistakably further the institution's legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve, for example, to increase the status of the institution and lure lucrative research grants, students and faculty. Id.
    Regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or non-profit status of the user is not determinative. Id.

    To sum up: even though a university may be conducting research with no perceived commercial benefit, there are indirect benefits. If the exception for research were broadened, schools would receive a windfall. So would anyone else claiming "I'm not quite done with my invention yet, but isn't it pretty." (Think "Google whatever -- still in beta!") There's an argument to be made that this is OK, but that's a matter of opinion and public policy.

  • What it means is that if I have an idea for a new gizmo that might or might not work and there are patents on technology that is somehow connected to the idea, I can go and develop the idea without worrying about the patents. Then, if the idea doesnt work, I dont need to worry about the patents.
    I only have to get a licence if my idea actually works and goes into production.

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