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DBL%20Hendrix%20small.png College chemistry, 1983

Derek Lowe The 2002 Model

Dbl%20new%20portrait%20B%26W.png After 10 years of blogging. . .

Derek Lowe, an Arkansan by birth, got his BA from Hendrix College and his PhD in organic chemistry from Duke before spending time in Germany on a Humboldt Fellowship on his post-doc. He's worked for several major pharmaceutical companies since 1989 on drug discovery projects against schizophrenia, Alzheimer's, diabetes, osteoporosis and other diseases. To contact Derek email him directly: derekb.lowe@gmail.com Twitter: Dereklowe

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February 24, 2012

Independent Inventions

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Posted by Derek

Alex Tabarrok has an interesting post on the idea of patent protection for "independent invention". This would be for cases when two people or organizations independently arrive at the same thing:

In the minds of the public someone who infringes a patent is like a plagiarist or a thief–the infringer has copied someone else’s work or, even worse, stolen their intellectual property. In reality, patent infringement has very little to do with copying or theft. Here’s how I described what is probably closer to the paradigmatic case of patent infringement in "Launching the Innovation Renaissance":

'Two inventors, Kelly and Pat, work independently, neither aware of the other’s existence. Kelly patents first. Under the present law, if Pat wants to sell or even use his own invention, he must pay Kelly a license fee (!) even though Pat’s idea came from his own head and no other.'

If independent invention were uncommon this type of case wouldn’t be important but independent invention is very common. Classic cases include Newton and Leibniz with the calculus, Alexander Graham Bell, Elisha Gray and Johann Philipp Reis with the telephone, Ohain, Campini, and Whittle with the jet engine and so on. And if independent invention is common with great discoveries and inventions then it is surely much more common with ordinary innovations. As a result, it’s not surprising that most patent cases don’t even allege copying.

He proposes that "independent invention" be an available defense for claims of infringement. I agree in principle, but I worry that it would turn into just another way for people with the legal resources to tie up the system until their opposition gives in.

How would such a system affect drug discovery? Since we tend to spend a lot of time making sure that our molecules really are legally differentiable from the competition, I think that this would be less of an issue for us. But it's certainly true that some cases would arise. I personally have worked on a series of compounds (some years ago) that turned out to be the exact same series that a competitor was working on. The patents applications were filed within a couple of weeks of each other, and there were many compounds that overlapped. There are some areas where an independent invention defense could come in very handy (or be a major pain, depending on your relationship to the sharp end).

Comments (16) + TrackBacks (0) | Category: Patents and IP


COMMENTS

1. DLIB on February 24, 2012 11:08 AM writes...

Bad idea...ripe for abuse. The interference methods that currently exist is the way to go. If you file a patent, you should be vigilant. This would also happen less frequently if the bar was raised and fewer patents issued...It's amazing the volume and quality of stuff that gets through!! I guess patent lawyers have to do something with their time.

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2. barry on February 24, 2012 11:08 AM writes...

as of February 2012, U.S. patent law is still "first to invent" rather than "first to file". The Obama administration has stated that it means to change this to accord with the rest of the civilized world. But until it does, our system allows Pat and Kelly to waste months in court trying to establish (from their lab notebooks, which of course they signed and got counter-signed daily) that one or the other did conceive the idea first.

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3. nase on February 24, 2012 11:10 AM writes...

> As a result, it’s not surprising that most patent cases don’t even allege copying.

This is also unsurprising because *it's not an element of infringement.* So, other than just trying to play on the jury's emotions, there would be no real reason to allege it.

Also, a system pretty similar to the one he's describing is basically already available. It's called "trade secret."

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4. milkshake on February 24, 2012 11:41 AM writes...

if you cannot exclude competitors from developing your compounds (under excuse that they worked on similar series too in the past) whats the point of filing patent and publishing the experimental examples. Anything that puts in doubt composition-of-matter drug patents is going to have bad consequences for the whole industry

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5. Alex Besogonov on February 24, 2012 12:26 PM writes...

Very good idea.

Patents should be killed off entirely in areas where independent invention is common. This idea is at least a good step in this direction.

Now, drug discovery is actually a special case where patents are crucial and useful.

A good indicator of usefulness of patents: if it's easy to check whether a thing is patented then patents might be useful. For drugs it's easy. For mechanical engineering it's possible (and we have a lot of history doing this).

However, it's totally impossible and impractical for software or business method patents.

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6. barry on February 24, 2012 12:28 PM writes...

The USPTO still operates on the three-fold test. To be patentable, an invention must be
1-novel
2-utile
3-non-obvious

Perhaps the fact of simultaneous invention testifies that the innovation failed the third part of the test, and the idea therefore wasn't patentable?

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7. DLIB on February 24, 2012 1:30 PM writes...

@6 Exactly!

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8. John on February 24, 2012 1:49 PM writes...

Terrible idea. First, if your invention is not valuable, then there no reason to complain that someone else has a patent to it. If it is valuable and subject to independent creation, then you should have filed a patent for it. To later assert that you invented something independently, but you did not invest the effort or money into obtaining a patent, is unfair to those who did make such an investment. Therefore, if this were a valid defense to infringement, innovators and investors would be discouraged from, well, innovating, investing in, and patenting technology because of the risk of independent invention.

Also, the administrative cost of this would be huge. Litigation would be even worse- in addition to discovery for whether or not there's infringement, we'd have all kinds of discovery and contention over whether there was actually independent invention as opposed to just an ex post, artificial defense to infringement.

Inventors/potential infringers would be incentivized to exercise "wilful blindness" with respect to the prior art and others' patents, the idea being that if they don't know what others have done, then their own inventions must be independent. This is clearly not ideal- it is far better to improve upon others ideas than to independently invent everything. Also, wilful blindness is not a defense in other areas of law, and patent law should not be an exception.

As mentioned above, trade secrets address some of the issue, in that everyone can just keep their idea secret and practice it on their own. However, trade secrets do not protect against independent creation or reverse engineering, which are common and/or possible in the pharmaceutical sciences. Bottom line: if it's something that someone else could come up with, patent it.

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9. Ski Bum on February 24, 2012 1:59 PM writes...

"He proposes that "independent invention" be an available defense for claims of infringement."

Under current law someone is always first (even by seconds), and an interference proceeding may strip the patent rights from an undeserving patent holder. This will end soon.

We are transitioning to a 'first to file' system which was pushed by large companies such as Microsoft and Cisco. They compete on the basis of economies of scale and loath patents and those pesky inventors who demand credit for their ideas. Big Pharma of course opposed the changes but lost.

Under the new first to file system, if I copy the work of a researcher at an ACS convention, then patent it, I will likely get to keep the patent.

The use of the words 'patent reform' in describing the recent changes to the US patent system is akin to a 'health care reform' that works by dropping coverage on all its patients.

Since the entire US patent system has just been changed to defraud the true inventor of their rights, I find it implausible that the author's proposed system will be adopted.

Under the new system there will be a 9 month post grant review period during which an 'IP robbery' victim may seek to overturn the patent on the stolen invention. But you have only 9 months to do it and it will be subject to a MINIMUM fee of $40,000.

How's them apples?

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10. John on February 24, 2012 2:19 PM writes...

@Ski Bum - I suggest you read up on the American Invents Act and the details of the patent reform. Your example of taking an idea from an ACS conference is incorrect. Under the first to file system, there are two major exceptions to "the first to file gets the patent" that would preclude you from getting a patent over the ACS presenter if you stole the idea.

First, even if you file for a patent first, because the ACS presenter publicly disclosed the invention prior to your filing, you cannot get a patent (but she probably can). Second, if she can show you obtained the invention from her, you cannot get the patent. The latter case would be determined in a "derivation proceeding," similar to the current interference proceedings.

You are also incorrect that Big Pharma opposed the patent reform. Indeed, one of the biggest proponents of it for years was Robert Armitage, senior VP and general counsel for Lilly. The CEO of Lilly stood next to Obama as he signed the reform. PhRMA and BIO endorsed it...

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11. MolecularGeek on February 24, 2012 3:02 PM writes...

John (#8):
Inventors are already incentivized to remain personally ignorant of the patent literature. If one is found guilty of willful infringement on another's patent, the damages are trebled. There's a reason that companies have in-house patent counsel to run those searches instead of having the bench science team do it themselves. That way, the inventors don't have to admit in court that they might have seen the relevant patent themselves and been influenced by it. They can truthfully say that they were only concerned with the published literature, and a qualified patent professional told them that the compounds they proposed did not infringe, in their opinion. Deniability is a virtue.

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12. John Schilling on February 24, 2012 4:03 PM writes...

#8: "If it is valuable and subject to independent creation, then you should have filed a patent for it"

The scenario being contemplated is one of an inventor who does (promptly) file a patent, only to find that someone else filed yesterday. This creates a perception of unfairness, in that the second inventor worked really really hard in the sincere belief that he was making the world a better place, seemed to have succeeded, and gets nothing for his trouble.

I agree that the proposed remedy would cause more harm than it prevents, in large part because that simplistic model of independent invention is not at all representative of what generally happens. Also, when it does happen, the second inventor has in fact failed to make the world a better place, did in fact waste his time, and market economies work very badly when we try to impose an "A for effort" rule.

But, it is a powerfully sympathetic case, and that sort of thing can drive legislation - for better or for worse. We have life-plus-seventy copyrights because the corporations that really benefit from such a thing were able to sell the idea on the basis of, "Imagine the Tolkien grandchildren penniless on the streets, the day New Line opens 'Fellowship of the Ring' in umpty-thousand theatres!"

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13. John on February 24, 2012 4:23 PM writes...

@MolecularGeek - There's a big difference between a damages multiplier and getting off the hook completely.

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14. Goerg-Martin Krapper on February 24, 2012 6:36 PM writes...

Patent protection for 'independent' inventions could lead to an upsurge in registrations of virtual compounds in Pharma databases. Imagine the brave new world of 'our computer thought of it it first'. There is a somewhat farcial element to pharmaceutical patents. An engineer patents something and there is a pretty good chance that, when built, it will function as it was designed to function, even if its development is not commercially viable. When medicinal chemists patent a series of enzyme inhibitors, there is a very good chance that none of them when synthesized will function as a drug. It is this ability to stake out regions of IP real estate without having to demonstrate utility that creates an environment in which patent trolls can thrive.

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15. Ski Bum on February 24, 2012 6:45 PM writes...

@10 John said- "Your example of taking an idea from an ACS conference is incorrect. Under the first to file system, there are two major exceptions to "the first to file gets the patent" that would preclude you from getting a patent over the ACS presenter if you stole the idea."

You might note I did use the phrasing 'likely keep' as the precise nature of the disclosure comes into play (was it a detailed poster or was it a presentation on the web?). Public disclosure may be difficult to prove.

Your statements are nice propaganda that play on the ignorance of most of the readers of this blog. There is no ‘patent police’ that will prevent someone from stealing information as I described. Since the aggrieved party will not have access to the thief’s records, it will likely be difficult to obtain access to such a derivation proceeding. You seem to have a high opinion of an untested derivation proceeding that will only be granted at the discretion of the USPTO.

Secondly our hypothetical ACS participant will only have one year to petition for such a proceeding.

§ 291. Derived Patents
(b) FILING LIMITATION- An action under this section may only be filed within 1 year after the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor."

How many scientists are actively monitoring every conceivable database and publication that may then be later used against them as prior art?

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16. petros on February 25, 2012 3:23 AM writes...

On SkiBum's point. Such cases have arisen, in a different form, in the system that the US is finally adopting to conform with the Rest of the world.

Patents have been invalidated due to prior disclosure of material at meetings even obscure meetings, even in pre Internet times.

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