INTELLECTUAL PROPERTY 6

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

"Most people are other people. Their thoughts are someone else's opinions, their lives a mimicry, their passions a quotation."

- Oscar Wilde

In earlier blogs, 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.
10. Viral patenting.
11. Royalty stacking.
12. Reaching through a patent.

The government awards patents, but when someone infringes on a 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?

I am not a lawyer, and the following paragraphs should not be construed as competent legal advice. They are included here to indicate that some patents, software patents in particular, sit on shaky ground, and that they are often vulnerable to declaratory judgments.

Imagine that you hold a software patent, and you have identified a person whose software contains some code that seems to infringe on one or more of the claims contained in your patent. Your lawyer sends this person a letter claiming infringement and demanding that the person either stop using the patented property or begin paying an assigned royalty. This is the so-called "demand letter" that every software programmer fears.

The alleged infringer, if smart, will seek remedy in a federal court, arguing that your patent is invalid or unenforceable, or that he did not infringe. He will ask for a declaratory judgment to stop you from pursuing your patent demands.

The declaratory judgment is a preventive adjudication. Its purpose is to clear the air, so that the person who received the demand letter need not labor under the constant fear of an impending lawsuit filed by the patent holder (1). Your alleged infringer will bring his case to a federal court venue, near where he lives (you and will need to travel to the location), giving him the home court advantage. If he asks for a declaratory judgment based on non-infringement, you will be required to pursue a counterclaim of infringement; an action that you may not be prepared to pursue. In the case of software patents, virtually every patent holder stands on very weak ground. All software is derivative of someone else's work; hence, every software patent is vulnerable to a declaratory judgment. You may have spent millions of dollars developing your invention and seeking your patent, but all of your investment could be lost through a declaratory judgment.

Declaratory judgment cases must be triggered by a significant controversy, usually a threat of litigation. Your demand letter, indicating infringement and requiring compensation, is often sufficient to trigger a claim for declaratory judgment. This means that, if you have a vulnerable patent, you must NOT send a demand letter that has the effect of a threat.

You may try having a salesman send the letter (not a lawyer). A letter from a salesman is less likely to imply the threat of legal action than a letter from retained counsel. In the letter, you might want to simply identify the patent and indicate that it was available for licensing. It may be wise not to suggest that infringement has occurred.

The purpose of a "demand" letter is to motivate the receiver to buy a license, without triggering a declaratory judgment action. If the letter is sufficiently bland and non-threatening, it may do the trick. Remember, though, that the receiver will likely interpret your letter as a thinly veiled threat. When determining jurisdiction for a declaratory judgment, courts look at all the relevant circumstances. If you have a history of vigorously pursuing patent claims, or you have a history of intimidating people with the implied threat of legal action, a court may interpret any letter from you, no matter how bland, as an intent to litigate.

What is the moral of this multi-part blog on INTELLECTUAL PROPERTY? The patent system does not always work to the benefit of the patent holder, or of society. Scientists who develop basic algorithms, or implementations of existing patents, or whose works do not qualify as inventions or devices, or whose discovery was a creation of nature, or a finding of vital importance to the health of others, should think very deeply before seeking patent protection for their works.

[1] Uniform Declaratory Judgments Act. National Conference of Commissioners on Uniform State Laws. August 2 - 8, 1922.

© 2010 Jules Berman

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

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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.

INTELLECTUAL PROPERTY 5

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.

-- TO BE CONTINUED --

[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

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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.

INTELLECTUAL PROPERTY 4

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.

TO CONTINUE:

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.

-- TO BE CONTINUED --

[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. http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm 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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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.

INTELLECTUAL PROPERTY 3

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.

-- TO BE CONTINUED --

[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. http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm

[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

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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.

INTELLECTUAL PROPERTY 2

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

"What is mine is mine. What is yours is negotiable."

- Nikita Khruschev, who is credited with using it to describe the American approach to arms control negotiations with the former U.S.S.R.

Though depriving society of a medical advance is not a crime, few holders of intellectual property resort to secrecy nowadays; they use patents, copyrights, and courtrooms to protect their interests. The modern patent is a property right (lasting 20 years) given by a government to an inventor of a method, or invention, or a novel item. Patent means "open," so named because the patent process opens the invention to scrutiny. The U.S. Patent and Trademark Office (USPTO) publishes detailed descriptions of every awarded patent, and equivalent patent archives are available in other countries. The right to patent is sometimes referred to as the right to sue patent infringers. The idea is that patents are made public. Users of patented inventions must pay the patent holder a royalty. In return for a royalty, the patent holder refrains from taking legal action against the user.

When a patent or a copyright has expired, the work falls into the public domain and can be used freely. Many patent holders have been ruined by poor timing. Patent holders need to recoup their investment and earn all their profits within a twenty year window. When a patented invention requires twenty years or more to develop a market, the patent holder cannot profit from his work, unless he sells or licenses his patent during the patent's life. Likewise, patent holders may not profit if the practical implementation of their invention requires a second technological advance, that comes twenty years later.

A fine example of a patent issued before its time is the Lamarr/Antheil patent for Frequency Hopping Spread Spectrum (U.S. patent 2,292,387, 1942), issued to Hedy Lamarr and George Antheil. Circa WWII, Hedy Lamarr was a glamorous actress, and George Antheil was a Hollywood music composer. The two came up with and idea for secretly passing messages by jumping a signal from frequency to frequency, giving it the appearance of noise to enemy interceptors. When the sender and the receiver change frequencies simultaneously, the message can be retrieved. Their patent preceded the technology required to implement the idea. Today, decades after the patent expired, spread spectrum radio uses the Lamarr/Antheil technique. In a symbolic gesture, Wi-LAN, a telecommunications firm, purchased the original patent as an historical document, for an undisclosed amount. This was the only income that Hedy Lamarr and George Antheil received from their patent.

© 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.

INTELLECTUAL PROPERTY 1

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

"Don't worry about people stealing your ideas. If your ideas are any good, you'll have to ram them down people's throats."

- Howard Aiken (American computer engineer and mathematician 1900-1973)

Intellectual property is the "dark matter" of the scientific world. We know that there's a lot of it, that it's everywhere, and that it has a strong effect on our lives, but it's all quite invisible to our senses.

When we think of intellectual property, we usually think in terms of patents (for inventions and processes) and copyright (for literature). Patents are rights assigned to an inventor, for a specified interval, in exchange for disclosing his invention to the public. Patents probably came to us, like most great ideas, from the acient Greeks. In 500 B.C.E., the Greek colony Sybarus (in Southern Italy), gave inventors the exclusive rights to profit from their invention for a period of one year. The length of a patent grew over the centuries. In 1449 King Henry VI granted a 20-year patent to John Utynam, who brought colored glass-works to England. The holder of a patent collects royalties from those who use the patent. The term royalties carries the idea that money that would ordinarily go to the king is assigned to the patent holder.

The idea of copyright seems to descend from the settlement of sixth century Irish dispute over the copies of a book of psalms. King Diarmait reasoned, "To every cow belongs her calf, therefore to every book belongs its copy." Basically, copyright guarantees that a book's creator owns the copies. In the United Kingdom, modern copyright was enacted by the Statute of Anne (Copyright Act of 1709). Every nation extends copyright protection to authors. Today, copyright protection extends to the form and content of the text and images and does not apply to particular ideas that might be expressed in the copyrighted work. Copyright protection lasts much longer than patent protection. In the U.S., Copyright persists 70 years after the death of author, unless the author is a corporation, in which case, copyright extends 95 years from publication or 120 years from creation, whichever expires first. As in the case of patents, royalties are paid to the copyright holder, in lieu of the king.

Scientists have used and abused intellectual property protection. A legal and popular method of bypassing the patent system is through "trade secret." If nobody knew your secret, your exclusive use of the property could be leveraged to your financial advantage. Nobody understood the concept of trade secret better than the surgeon William Chamberlen. Circa 1570 Chamberlen invented or acquired the design of an improved delivery forceps (tongs with large curved grasping handles that can be pressed together with a scissors action). The forceps was highly profitable to William and to his heirs. His son Peter became the attending physician to Queen Anne, the wife of James I and to Queen Henrietta Maria, wife of Charles I. The forceps kept the Chamberlen family in riches for over a century. A descendant fell upon hard times and sold the secret of the forceps in 1720 to Dutch surgeons. The forceps monopoly was broken when several of the new owners published the secret. A largely apathetic world paid little notice until the highly influential William Smellie published his description of the improved model of the forceps, in 1750. Because an intellectual property was kept secret, the world was deprived of a life-saving medical advancement for approximately 180 years (1).

[1] Strathern P. A brief history of medicine from Hippocrates to gene therapy. Carroll and Graf Publishers, New York, pp 169-171, 2005.

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© 2010 Jules Berman

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to read a litte about my book. Google books has prepared a generous preview of the book contents. If you like the book, please request your librarian to purchase a copy of this book for your library or reading room.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining, history of science , specified life blog , Jules J Berman PhD, MD

Patenting the uses of the DICOM medical image standard

In a prior post, I described how the uses of standards can be patented, using DICOM as an example. DICOM (Digital Imaging and Communications in Medicine) is being actively promoted as a universal and exclusive standard for all medical images.

This blog examines one instance, in some detail, of a patent related to a common use of the DICOM standard.

U.S. Patent 6,725,231 is entitled "DICOM XML DTS/schema generator". This patent was filed March 27, 2001 by Jingkun H and Kwok Pun Lee and assigned to Philips Electronics. The patent was awarded on April 20, 2004.

The methods covered by a patent are enumerated in a list of patent claims. Claim 1 (of 15 claims) for this patent is:

"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. "

The reach of a patent is extended if it is awarded in both U.S. and International Patent Offices. The same application, has been awarded by the World Intellectual Property Organization, (WIPO), WO/2002/077896 DICOM XML DTS/schema generator.

Even after a patent has been awarded, it can sometimes be successfully argued, in court, that the claims are obvious or non-original and cannot be asserted against a user.

How do scientists demonstrate that an idea is original and non-obvious? They publish their work in a respected journal in their field of work. Journals are expected to reject submissions that are obvious or for which prior art (earlier publications) exist. For centuries, scientists have used publications as evidence of the validity, originality and scientific value of their work.

Jingkun H and Kwok Pun Lee published three original papers in the Journal of the American Medical Informatics Association (JAMIA), that are contemporary with their patent applications, and that describe methods related to their patents.

Zhao L, Lee KP, Hu J.
Generating XML schemas for DICOM structured reporting templates.
J Am Med Inform Assoc. 2005 Jan-Feb;12(1):72-83.

Lee KP, Hu J.
XML Schema Representation of DICOM Structured Reporting.
J Am Med Inform Assoc. 2003 Mar-Apr;10(2):213-23.

Tirado-Ramos A, Hu J, Lee KP.
Information object definition-based unified modeling language
representation of DICOM structured reporting: a case study of
transcoding DICOM to XML.
J Am Med Inform Assoc. 2002 Jan-Feb;9(1):63-71.

These described steps exemplify the way that the uses of a standard were patented. As shown previously, many uses of the DICOM standard have been included in current patent applications.

Having multiple image standards provides users an "out" when one standard becomes excessively encumbered. As discussed in a prior post, there are times when using a specification, rather than a standard, facilitates the the free, unencumbered exchange of annotations and image binary data.

-Jules Berman

tags: DICOM, intellectual property, medical images, patents, specifications, standards

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents.

Searching for U.S. patents that encumber a standard

The USPTO (US Patent and Trademark Office) has a website that permits searches of issued patents (database extends to 1790). A separate search engine finds patent applications currently under review by the USPTO.

If you are developing a standard and you wish to avoid including patented technology in the methods included in your standard,

or

if you have developed a standard and are interested in protecting your users against trivial or non-innovative patents attached to the uses of your standard,

or

if you are a standards user and wish to avoid using standards that are encumbered by patents,

or

if you are a standards user who has chosen a standard and wish to avoid infringement on a patent that encumbers the standard,

you will want to visit the USPTO patent search site.


Here is the web page at http://appft1.uspto.gov/netahtml/PTO/search-adv.html for a search of pending applications with the word "DICOM" in the title of the application.



Here is the returned web page:



In the next blog, I will use DICOM (Digital Imaging and Communications in Medicine) as an example of a standard for which a user can conduct USPTO patent searches.

- Jules Berman

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents. If you like the book, please request your librarian to purchase a copy of this book for your library or reading room.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining, coercive standards, data standards, DICOM, embedded patents, intellectual property, patent search, sdo, specifications, standards development organizations, uspto

Protecting the basic uses of a Standard

Yesterday's post took an example from DICOM to describe how the uses of an existing standard can be patented. A standard, even if it is a free and open standard, has little value if the intended uses of the standard are encumbered by patents. This would mean, in effect, that the user community must license the standard for uses that are covered by patents (or risk infringeing on one or more patents).

What can SDOs (Standards Development Organizations) do to prevent this problem? I am not a lawyer, and cannot give legal advice, but I would suggest that the following approach is sensible:

When the standard is being developed, the SDO should think about all the intended uses for the standard and publish a document (as an SDO white paper or as a journal publication) that describes, in detail, the ways that the standard can be used, supplying source code, instructions, sample implementations, user commentary, citations to relevant publications in the field, etc. This would help create prior art for the described uses of the patent. When the SDO provides public documentation for the common, expected uses of the standard, it would make it difficult for someone to come along and claim the those methods in a patent.

Also, SDOs should be prepared to work with their Patent Office to explain how patent applications related to their standard may be preceded by scientific art or may provide no new or non-obvious functionality to the standard. As described in an earlier post, the USPTO recognizes that software patents are a difficult area and has a program to seek guidance from the software community.

Suppose an inventor conceives of a totally new use of an existing standard and develops a patentable process or application for this new use. How would an SDO defend the standard in this case. Well, there might not be any defense. After all, if someone really comes up with a novel use for a standard that has a real-world application, why shouldn't their intellectual property be covered by a patent? The problem for SDOs comes from patents that cover customary, expected uses of a patent. SDOs with nothing in place to protect the basic uses of the standard have not done their job very well.

-Jules Berman

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents. If you like the book, please request your librarian to purchase a copy of this book for your library or reading room.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining

Specifications versus Standards

In a prior blog I suggested 16 ways that SDOs (Standards Development Organizations) can protect their standards from embedded patents. Suggestion 12 was "Make specifications, not standards."

This suggestion, I'm sure, is cryptic to most people. A major theme of this blog site is that specifications are different from standards and have a number of features that make them more suitable than standards for describing and exchanging many types of biomedical information.

Though informaticians often use the terms "specification" and "standard" interchangeably, a specification is just a formal way (usually employing RDF) of describing any data object. A data standard is a set of requirements, created by an SDO, that comprise a pre-determined content and format for a set of data related to a very specific kind of data object.

Features of a "specified" object:

1. Anyone can understand the composition and construction of the object

2. If the object is unique, anyone can distinguish the object from all other objects.

3. If the object falls into a known class of objects, anyone can determine, from the specification, the class of the object.


A specification serves most of the purposes of a standard, and much more (data description, data exchange, data merging, data interoperability, semantic logic). Data specifications spare us most of the heavy baggage that comes with a standard (limited flexibility to include changing data objects, locked-in data descriptors, licensing and other intellectual property issues, competing standards for the same domain resulting in limited interoperability, bureaucratic overhead, etc.).

Readers of this blog might want to read an introduction to RDF data specifications written by myself and Dr. G. William Moore. I believe that standards are important, but that specifications are even more important. There are instances in the field of biomedical informatics where specifications could serve better than standards. This was a developed theme in my book, Biomedical Informatics.I hope to provide many examples of specifications (how they are created and used) in future blogs here.

-Jules Berman

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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.

Bad ideas to stop patent farmers

Earlier, I posted a blog that described patent farming (inserting patented methods into new standards with the intention of asserting the patent against the users of the standard). Yesterday, I suggested 16 steps that SDOs can take to reduce their vulnerability to patent farmers

SDOs sometimes pick the wrong tactics to protect themselves from patent farmers. Here are some ideas that are likely to be counterproductive.


1. (Bad idea) Try to get the U.S. government to create the standard.

2. (Bad idea) Make the standard a requirement for your user community (usually done by lobbying the government and/or user organizations.

3. (Bad idea) Encumber the standard under a pre-paid user license.

4. (Bad idea) Focus the standard for a single imagined user (e.g., radiology
departments)whose needs may not fall under an existing patent claim.

5. (Bad idea)Make no special accommodations for research/testing activities that arise from or use the standard.

6. (Bad idea) Pretend there is no problem and try to marginalize people who disagree.

In a future blog, I'll explain why these ideas are bad for the SDO or the intended user community.

- Jules Berman

tags: intellectual property, ip, patent farming, patent infringement, risk, sdo, standards development organizations

---

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.

Patent farming in medical standards

In a prior blog, I listed some of the IP issues involving medical standards. One of the biggest problems is the inclusion of patented methods within standards. Hidden patents within standards can be asserted against anyone who implements the standard.

Bruce Perens, an open source Guru, has written extensively on this problem. He uses the term "patent farming" to describe the act of planting the seed, a patented method, into the standard while the standard is being developed. Once the standard is approved and implemented by the user community, the patent farmer reaps his crop by asserting the hidden patent. Perens provides several specific examples where patent farming has benefited standards committee members to the detriment of the users of the standard.

You might think that it would be a simple matter to require the participants in a standards effort to disclose any of their owned patents that might be included in the standard. In the Rambus case described by Perens, such a disclosure agreement was in evidence, but the patent disclosure policy of the standards organization proved unenforceable in court.

Even if an SDO (Standards Development Organization) had an enforceable disclosure agreement with its members, it would seem that a committee member could sell strategic patents to a patent holding company, striking a deal with the holding company that would yield IP earnings on an asserted patent positioned within a standard. By working with a holding company, the original patent holder divests the patent and would not need to disclose the existence of the patent to the standards committee.

Patent holding companies (called patent trolls by their detractors) buy portfolios of patents to assert IP rights in strategically chosen business sectors. Recently, hospital-based technologies (including radiology imaging) have been the target of at least one major patent holding company.

In the next blog, I will discuss measures that SDOs may take to reduce their vulnerability to patent farmers. I will also discuss some defensive strategies that are often suggested but which really do not work.

This blog will also appear on Bruce Friedman's Labsoft
site

- Jules Berman

---

My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents.

tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining, hidden patent, intellectual property, ip, medical standards, patent holding company, patent troll, specification, viral patent

biomedical standards

Bruce Friedman and I have informally discussed a disturbing problem in health informatics: the insinuation of intellectual property (via licenses and patents) into healthcare data standards. This issue also arose during my digital imaging
presentation, February 6, at CaBIG.

Industry and government agree that we need to have standard ways of describing, organizing, and exchanging data. In the U.S., there are thousands of standards development organizations (SDOs) busily creating new standards and revising existing standards. In the healthcare industry, it is likely that a small number of standards will emerge as the "big winners" in this evolutionary struggle. A great deal of money will be invested in the development of software and other implementing technologies for those standards that are recommended or required by the U.S. Government.

Unfortunately, the implementation of standards in commercial systems (even standards that have been recommended or required by the government) may put commercial entities at some legal risk.

--The standard may contain methods that are covered by existing
patents.

--The standard may itself be "owned" by entities that exert a license.

--The uses of the standard (not the standard itself) may be patented.

I will be writing a series of blogs over the next few weeks that discuss problematic IP issues related to biomedical standards.

Next blog in the series

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My book, Principles of Big Data: Preparing, Sharing, and Analyzing Complex Information was published in 2013 by Morgan Kaufmann.

I urge you to explore my book. Google books has prepared a generous preview of the book contents.

Jules J. Berman, Ph.D., M.D.
tags: big data, metadata, data preparation, data analytics, data repurposing, datamining, data mining, intellectual property, patents, standards