Saturday, February 20, 2010


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

In yesterday's blog, we were discussing uses of the patent system that had dubious societal value. We covered:

1. Patenting to suppress innovation.
2. Patent farming.
3. Patent spreading.
4. Patent holding.
5. Patent shifting.
6. Remixing prior patents.


7. Patenting the uses of unpatented inventions. The wheel is an unpatented invention. If you were to come up with a novel, useful, and nob-obvious application of the wheel, you might be able to patent your work. This means that when you use an invention that is not covered by a patent, your use of the invention may still constitute a patent infringement. Here is an example. DICOM (Digital Imaging and Communications in Medicine) is a freely available, unpatented standard for radiologic images. Currently, there is an effort to have all medical specialties adopt DICOM as the exclusive format for all medical images. Nonetheless, there there are specific circumstances for which the DICOM standard cannot be used without infringing on patented intellectual property. U.S. Patent 6725231, issued Apr 20, 2004, to Jingkun Hu and Kwok Pun Lee and assigned to Koninklijke Philips Electronics N.V., has the following claim.

"1. A method for mapping a DICOM specification into an XML document, comprising: mapping each entry of a DICOM table of the DICOM specification into a corresponding XML element of a plurality of XML elements,outputting each XML element of the plurality of XML elements to the XML document, in an output format that conforms to at least one of: an XML document-type-definition and an XML Schema."

In addition, the patent owners have been granted a similar patent by the European Patent Office (EPO). Mapping image information from a free specification, such as DICOM, into another free specification, such as XML, is a common task for medical informaticians. Does this activity constitute an infringement on an existing "use" patent? These are the types of questions that keep patent lawyers busy.

8. Patenting the obvious and the previous. Take the time to visit the USPTO website. You might find that many patents in your field are trivial, obvious, derivative, or useless. True "Eureka" moments are rare. Those who file patents are often motivated by fear ("If I don't patent this, somebody else will, and I can't bear to think that I may be required to pay royalties for my own invention), opportunism ("Hmmm. I can't believe nobody has patented this! I'd better do it before someone else does"), security ("My boss will not give me that raise unless I produce another patent this year"), or greed ("I'll squeeze every penny out of my competitors"). To receive a patent, an invention should be novel, non-obvious, and useful, but the reviewers at the patent office cannot always reach a wise determination.

Software developers are among the angriest critics of the USPTO. In recent years, the USPTO has awarded many software patents, a practice that seems to counter the principle that "ideas" are not patentable. Software developers argue that all software is built from recycled algorithms whose original sources are lost to techno-history. You cannot create a software application without using bits of code that were developed by legions of software developers, over the past half century. Today, software developers live in fear that a line of their code or a brief algorithm included in a complex software application will infringe on one or more software patents. The ever-present risk of patent infringement is a nightmare for earnest software developers, and a dream-come-true for opportunists. If you can patent an algorithm or subroutine that every developer uses, you stand to make a fortune.

9. Patenting life. What must it feel like to own an entire species of living organism? It must be how God would feel, if God had the the Supreme Court on his side. In a 1980 5-4 ruling, the Supreme Court upheld that a living organism could be patented. The case was Diamond v. Chakrabarty and involved a dispute over a patent for a genetically modified bacterium (3), (4).

After a patent on life is awarded, the consequences can be far-reaching. For example, Monsanto developed and patented genetically engineered corn that is resistant to Monsanto's own Roundup weed killer. Using Monsanto's corn seed, robust corn grows in fields that are liberally treated with Roundup. This guarantees that farmers who buy Roundup-resistant corn will also buy Roundup, at Monsanto's price. When farmers buy Roundup-resistant corn, they agree not to collect seed (from their corn crops) for replanting. Each growing season, they must buy new seed from Monsanto, at Monsanto's price (5). The use of genetically engineered seed is rapidly spreading. As more and more farmers use Monsanto's seed, the risk increases that genetically engineered seed will drift (from the winds, or from passing seed transport trucks) onto the fields of farmers who chose not to use genetically engineered corn. After genetically engineered corn invades a field, Monsanto can assert its seed patent on the clueless farmer. As we come to rely on a small genetic pool of crop seeds, the risk increases that a newly emerging disease will decimate the world's food supply.

The Diamond v. Chakrabarty ruling extends "life" patents to genes and sequences of DNA. Jensen and Murray reported in 2005 that 4,382 of 23,688 human genes in National Center for Biotechnology Information had been patented (6). The two most highly patented genes were BMP7, an osteogenic factor, and CDKN2A, a tumor suppressor gene (6). These two genes are claimed in more than 20 patents.


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

[2] Thirty-five U.S.C. 287 Limitation on damages and other remedies; marking and notice. Comment. This important patent provisions provides a level of protection to healthcare practitioners from patent infringement claims. It permits healthcare practitioners to perform customary medical activities (e.g. surgical procedures), even when a patent claim may apply to the procedure.

[3] Poste G. The case for genomic patenting. Nature 378:534-536, 1995.

[4] Eisenberg RS. Biotech patents: looking backward while moving forward. Nature Biotechnology 24:317-319, 2006.

[5] Barlett DL, Steele JB. Monsanto's Harvest of Fear. Vanity Fair, May, 2008.

[6] Jensen K, Murray F. Intellectual property. Enhanced: intellectual property landscape of the human genome. Science 310:239-240, 2005.

© 2010 Jules Berman

key words: history of science , specified life blog , Jules J Berman PhD, MD
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