Friday, February 19, 2010


This is the third in a multi-part blog on the topic of INTELLECTUAL PROPERTY in the sciences.

In the U.S., the first patents were issued in 1790; three in total. By 1800, there were 41 patents issued. In 1900, there were 26,414 patents issued. In the year 2000, there were 159,255 patents issued, of which 157,494 were inventions, 17,413 were designs, and 548 were plants (1). The reason that the rate of patent issuance has increased through the centuries has less to do with the heady pace of scientific progress and more to do with the profitability of holding intellectual property.

The original purpose of the patent system was to grant the inventor the exclusive right to make, use, or sell, or license his invention. Over the years, the uses of patents have expanded to include practices of dubious societal value, including the following:

1. Patenting to suppress innovation. If you were in the oil business, and an inventor developed a source of free, unlimited energy (e.g., solar power), you might be inclined to buy the patent for his solar energy invention for the sole purpose of halting its implementation. Likewise, if you held a patent on a gene or a drug, you could assert your patent to squelch research or medical testing on your property, for the duration of the patent (2).

In the case of healthcare, there are some limits on the use of patents to suppress a scientific discovery. In 1999, Congress passed 35 U.S.C. 287 specifying conditions that would limit the damages collected by patent holders from healthcare practitioners (3). If you held the patent on a new way of tying a knot, and if a surgeon required the knot to tie a ligature in a surgical procedure, the patent would probably not be enforceable on the surgeon, under 35 U.S.C. 287. For the moment, patent holders cannot stop physicians from saving lives.

2. Patent farming. If you hold a patent for an algorithm or a manufacturing process that could be used in other technologies, you might benefit by "seeding" your invention into the derivative technology. When the new technology is released, you can "farm" your patent by announcing that anyone using the new technology will need to pay you royalties. For example, if a committee is creating a new software standard, you might strive to become a member of the committee. If you can insert your algorithm or subroutine into the new standard, then your patent rights will extend to the final standard. If the standard is mandatory, you can expect to collect royalties from thousands or millions of unwilling users.

3. Patent spreading. Every patent contains a set of claims that specify the intellectual components that are protected by the patent. For example, a patent for a software application may claim each of the algorithms or subroutines that are featured in the application, the graphic user interface by which the application is accessed, and novel features included in the application. A cynical inventor will maximize his list of claims, dividing the patent into minimal patentable units. After the patent is awarded, the patent holder can spread his litigation over the many claims in his patent portfolio, effectively magnifying his intellectual property.

4. Patent holding. A shrewd capitalist can buy patents that cover fundamental processes that are necessary for a particular field. Whereas a single patent may be vulnerable to challenge, a collection of patents that insinuate their claims throughout a complex industry, might be impossible to fight. Patent holding companies (called patent trollers by their detractors) strategically collect patents on devices and processes that are vital to an industry. When the time is ripe, after a new technology has become an indispensable component of business, the patent holding companies can assert their portfolio.

5. Patent shifting. Sometimes, a patent holder may find himself in a position where it would be unwise to assert his patent. Large corporations and patent holding companies occasionally reach agreements with their competitors to hold each other harmless from patent infringements. These kinds of agreements can save companies a vast amount of time and expense. In such cases, a corporation may choose to sell various patents to a third party (an individual, a corporation, or a holding company). The third party, unrestricted by a non-litigation agreement (depending on the agreement's specific language), can prosecute the patent. This works best if the patent is not owned directly by the company that sells the patent.

For example, if a corporation sits on a committee that is developing a new industry standard, it may need to sign an agreement promising not to prosecute patents held by the corporation and implemented by the standard. This kind of agreement is developed by standards committees to discourage patent farming. The company can simply sell the patent to a holding company. Sometime in the future, when the standard becomes entrenched in an industry, the holding company would assert the patent against all of the patent users. The corporation that developed the patent would have made its profit up front, at the time of the patent's sale to the holding company.

6. Remixing prior patents. You can re-mix prior art to make a new device that you can patent for yourself. This provision in patent law is particularly useful for software corporations; virtually all new software is made by re-mixing old software. You must be careful, though, to produce a re-mixed product that is not obvious to your peers. In KSR v. Teleflex (April 30, 2007), the U.S. Supreme Court, in a unanimous opinion, reversed a Court of Appeals decision, and determined that a prior patent was unenforceable because it was obvious (4). The Supreme Court opinion discussed, at length, the principles of obviousness. In particular, the Supreme Court indicated that merely putting together prior art to make a new device can only qualify for a patent if the resulting device is unexpected by people working in the field; hence, not obvious.


[1] U.S. Patent Activity Calendar Years 1790 to the Present. U.S. Patent and Trademark Office. April 16, 2009.

[2] Crichton M. Patenting life. The New York Times February 13, 2007.

[3] Thirty-five U.S.C. 287 Limitation on damages and other remedies; marking and notice.

[4] KSR International Co. v. Teleflex Inc. et al. Supreme Court of the United States April 30, 2007.

© 2010 Jules Berman

key words: history of science , specified life blog , Jules J Berman PhD, MD
Science is not a collection of facts. Science is what facts teach us; what we can learn about our universe, and ourselves, by deductive thinking. From observations of the night sky, made without the aid of telescopes, we can deduce that the universe is expanding, that the universe is not infinitely old, and why black holes exist. Without resorting to experimentation or mathematical analysis, we can deduce that gravity is a curvature in space-time, that the particles that compose light have no mass, that there is a theoretical limit to the number of different elements in the universe, and that the earth is billions of years old. Likewise, simple observations on animals tell us much about the migration of continents, the evolutionary relationships among classes of animals, why the nuclei of cells contain our genetic material, why certain animals are long-lived, why the gestation period of humans is 9 months, and why some diseases are rare and other diseases are common. In “Armchair Science”, the reader is confronted with 129 scientific mysteries, in cosmology, particle physics, chemistry, biology, and medicine. Beginning with simple observations, step-by-step analyses guide the reader toward solutions that are sometimes startling, and always entertaining. “Armchair Science” is written for general readers who are curious about science, and who want to sharpen their deductive skills.