Often, the judicial members and the patent office examiner are both heavily involved in the infringement case. The issue is that there is a distinction in the type of knowledge that the jury has compared to that of the examiner. Even with the new training, the examiners still do not have the necessary legal knowledge to effectively communicate with the jury. Ineffective communication will not convince the juror that the examiners' decision was correct especially that the pinch-to-zoom claim would not be helpful for the competition and innovation. It could be helpful to have universal guidelines that would also be considered for both the examiners and judicial officials to minimize the number of patent infringements claims that the jury makes. It will be interesting to see how much commitment the USPTO has in closing the gap between the legal mind and technical mind.
Also, I think there are some problems in some of the process steps involved in evaluating the claim. The process is similar to a flow chart for a code program. The claim is valid if it falls under statutory category such as process, machines or composition. The most interesting part of the evaluation that examiners follow is determining claims fall under judicial exception that includes abstract concepts and natural laws. It is an issue since there is subjectivity in determining if the claim is "significantly" different from what constitutes a judicial exception. In essence, ideas such as natural phenomena should not be patented since it could be an integral part of how hundreds of other patents function (such as electricity). However, it is possible to see patents on how one models a phenomena in the sense that there could be different theories associated with it.
http://patentlyo.com/patent/2014/03/eligibility-guidelines-phenomena.html
Hi Norman,
ReplyDeleteI think you're suggesting here that we include more technical experts and not just worry about the infringement from the perspective of law, but also from the technical side. I agree with you on that idea. However, with regards to your second point: following a logical process of looking at claims is a good idea, because in the end that is what a patent is. There is no way of getting around that. And of course, patenting ideas from natural phenomena is an issue, because it's too broad and general. Let me know what you think about this as well.
It's always an interesting topic to discuss what's patentable versus what's not. But since the jury has no technical training nor legal training, communication that needs to be passed on becomes harder in the courtroom. But I feel having no knowledge on these matters sometimes can be really helpful as well since the jury can actually look beyond the complicated claims and focus on something that's more common sense.
ReplyDeleteLooking at the flow chart(http://www.uspto.gov/patents/law/exam/myriad-mayo_qrs.pdf), I feel since the jury won't get too caught up by the specifics, they can make a clear judgement.
That's a very good point you brought up such that overlooking the complicated details. Luke Kim suggested to be selective about juries that can participate to a patent case. Devils are always in the details. Having basic technical background with common sense should suffice to help out with any case.
DeleteIt is interesting seeing the developments over time of what is considered natural phenomena. At one point in time, electricity was a novel concept, probably one that could have been patented. Now it is definitely something that alone could not be patented. However, I don't see this as any impediment to improving the efficiency of electricity. For example, someone could patent a type of conductive material that lowers the resistance of a wire.
ReplyDeleteHi Roshan! Yes, I definitely think that what was not obvious earlier in history is deemed more obvious now. But that can be taken as a positive thing, because it allows us to move forward and accelerates invention, which is extremely important. It is unfortunate that sometimes patents can be used to hinder the innovation process, but if we look at them from another perspective and ignore the loopholes, we can see patents in a more positive light.
Delete"In essence, ideas such as natural phenomena should not be patented since it could be an integral part of how hundreds of other patents function (such as electricity)."
ReplyDeleteNorman, I agree with you that natural phenomena should not be patented. Can you imagine if Edison had patented electricity along with his lightbulb? That would be ridiculous and create a monopoly over a resource that people need. I also want to address Roshan's point about how at one point electricity could have been patented because it was a novel concept. But if electricity is defined as energy resulting from the charging of particles doesn't that mean that it occurs in nature organically? Although we didn't know how to harness the power of electricity or generate it artificially, electrical currents were still prevalent in the natural world. That would be like saying fire could have been patented before the human race figured out how to start a fire. A bit of an exaggeration but I feel it relates