Sunday, February 21, 2010


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

In the blogs from yesterday and the day before, we covered uses of the patent system that had dubious societal value, specifically:

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.
8. Patenting the obvious and the previous.
9. Patenting life.

Here are three more common practices:

10. Viral patenting. Asserting a patent on the manufacturer of an assembled device, and asserting the same patent on the users of the manufactured device. Viral patenting is risky for the patent owner. In a precedential case, the U.S. Supreme Court unanimously ruled that LG Electronic could not assert a patent against Intel (the manufacturer that implemented a memory-technology patent owned by LG Electronics) and on the computer makers that install Intel chips in their computers (1). The patent power to collect royalties was effectively exhausted by its first license (with Intel).

11. Royalty stacking. For a complex process, it may be possible to assert different patents on various steps in a process. For example, a medical test may involve processing cells using a patented technology, using a one or more patented reagents, performing a patented analytic process, using a patented machine, and evaluated using patented software. After all the royalties are stacked, the costs are transferred to the patient or to a third party payer (2).

12. Reaching through a patent. Savvy patent holders may issue licenses that contain an insidious "reach-through" clause. The clause may stipulate that license holders can use the patent under the condition that any future technologies, that the license holder develops with the licensed technology, will be assessed a royalty. The clause allows the patent holder to reach through into the intellectual property created by the license holder, and impose an additional royalty.

Of course, nobody is obligated to patent his discoveries. On November 8, 1895 Wilhelm Roentgen performed the experiment that marked the discovery of X-ray imaging. Six years later, in 1901, Roentgen's effort was awarded with the Nobel prize. Roentgen declined to seek patents or proprietary claims on his discovery and even declined, unsuccessfully, the eponymous appellative, "Roentgen ray." Such altruistic behavior is uncommon.

The government awards patents, but when someone infringes on your patent, the government takes no action. Only the patent holder is harmed, and only the patent holder can litigate against the infringing party. For this reason, a patent is sometimes referred to as the right to sue. Paradoxically, the typical patent holder is terribly frightened of lawsuits and will do almost anything to avoid a court appearance. Why? This will be answered in tomorrow's blog.


[1] U.S. Supreme Court ruling sets limits on patent royalties. The New York Times June 9, 2008.

[2] Jones KJ, Whitham ME, Handler PS. Problems with royalty rates, royalty stacking, and royalty packing issues. In: Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices, eds. A Krattiger, RT Mahoney, L Nelsen, et al. MIHR, Oxford, U.K., pp. 1121-1126, 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.