Patent Infringement Exemption for Research?

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."

Comments

Re:How does this help?

[Spy der Mann]

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 :-/

Finally

[i_should_be_working]

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.

Re:Finally

[DRJlaw]

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 copy of the file history for the patent from the USPTO.

2. Your geologist should look to see whether his publication was cited by the mining/prospecting company during the prosecution of the patent.

2a. If your geologist can prove that the patent was derived from his work and that the applicant did not disclose his work to the patent office, then he has at least a couple of defenses should the company ever accuse him of patent infringement. This way lies potential litigation, however the potential damages are limited to a reasonable royalty on the geologist's activities (possibly enhanced for willful infringement), which considering that he's an academic is unlikely to amount to something worth litigation. He would have to discuss this with a patent attorney once he's gathered the necessary information. I'm telling you how he can find out what to do, not what to do.

3. If your geologist discovers that his work was not cited in the patent application, then he can file a request for ex parte reexamination (35 U.S.C. 302) for $2520 and the cost of writing a persuasive letter. In this case, discussing the letter with a patent attorney would be wise but not strictly necessary. Yes, the fees can be galling, but I've paid comparable fees just to obtain licensing, and have annual fees that approach $1000 just to practice, so it's not as if he's being uniquely abused. Unfortunately, clearing legal obstacles is sometimes a cost of doing business.

Re:Huh?

[mopslik]

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.

Re:and...?

[AKAImBatman]

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:Huh?

[SirWhoopass]

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 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 algorithm?

It could apply in to non-software patents as well. Just because something is patented doesn't mean that it is being sold anywhere.

Not a good thing

[Peyna]

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

[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 is no Constitutional mandate to reward innovation. Innovation carries its own reward. Patents reward publication. First to invent rewards gaming the system by keeping innovations secret as long as possible. First to file rewards the first to step forward and disclose the innovation.

On a practical note, first to file avoids huge legal costs fighting over who invented something. Time of invention makes no difference in serving the public good, although it's important for bragging rights. Time of disclosure is what matters to the public good. First to file rewards early disclosure and simplifies determining who was first.

Re:and...?

[AKAImBatman]

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.