Re: [PIUG List] controversial patent application

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Hi James,

James Ryley a écrit :
| I've followed this discussion with interest because it seems very relev=
ant
| to nanotech patent applications -- a field in which I am interested.
It is
| my impression that people are patenting things in the field of
nanotech that
| they really don't know if they can do. Their inventions are sometimes
| supported by computer simulations, but those certainly do not have 100%
| accuracy.
|
| Perhaps parallels could be drawn with biotech, where I think it is fair=
ly
| common to patent a POSSIBLE therapeutic intervention without ever havin=
g
| done human trials, since early work is often done in mice and such.
| Something that works in a mouse very often does not work in a human.
|

Well, yes and no. If a drug works in a mouse, then it is often tested on
rats, pigs, chickens, dogs or rabbits, before being tested on humans. I
think it would be difficult to state categorically that tests on mice
very often do not work in a human. The greatest difficulty is often in
finding an appropriate dosage form or formulation, and that in itself
can lead to modification of the drug candidate. The rates of successful
drug candidates compared to the number of starting molecules is
incredibly low, but there are many factors that will influence how and
why a particular molecule is chosen over another very similar one.

| Is anyone on the list an expert in this field that might be able to
provide
| some input as to and what issues they see down the road with people
rushing
| to patent to exclude competitors from the field, where their
inventions may
| never have been actually practiced? Is it happening frequently? What
might
| the courts think of this when it comes to litigation?
|

I do most of my work in the Life Sciences (although not exclusively, my
practice is too small for that). It is clear that the EPO now takes a
very dim and restrictive view of speculative claims. National courts in
Europe, however, have had varying opinions (how very unsurprising). In
the US, we have seen claims being interpreted restrictively, but usually
due to other factors (prosecution history estoppel, inequitable conduct,
etc), but the Eli Lilly/UCLA case about rat insulin did bring to light
the problem with non substantiated claims to products that were never
actually made or accurately described at the time of filing the
application (enablement and written description). I'd have to look up a
bit to see what has followed on from that case, but one thing is certain
is that the Lilly/UCLA case is being used by the USPTO to challenge
patent validity under both "enablement" and "written description".
Whether it is right in doing so is another matter.


|
| That is a somewhat troubling concept because, when you are dealing with
| multi-million dollar inventions, it could make sense to just make up
things
| that you think will work, realizing that some will eventually be proven
| correct, and some will not be. But, if you file for 10 patents at a to=
tal
| cost of say, $200,000, and only one turns out to be defensible, but it =
is
| worth $10 million... You can see what would happen to the system.


Quite, so if you can afford to do that, then by all means, and this is
precisely what is being done by many companies in this field who do have
the finances to support such a strategy. BTW, the phenomenon is not new,
it has just exploded out of all proportion compared to say 20 years ago.


Alex Thurgood
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Received on Wed Feb 13 2008 - 18:51:21