Douglas Oguss
Legal Issues of the 21st Century
Prof.
Friedman
5/12/04
Patent Problems Pending: A Critical Look at Patent Law
in the 21st Century
- Introduction
The evolution of United States patent
law over the past two centuries may appear relatively quiescent after the
21
st century comes to an end. In a historical context, Article I,
Section 8 of the Constitution provided the foundation for patent law, stating
that “The Congress shall have the power ... To promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and Discoveries.” The
Patent Act of 1790 authorized the issuance of patents for “any useful art,
manufacture, engine, machine, or device, or any improvement therein not before
known or used.”
[1] In 1850, the
Supreme Court in Hotchkiss v.
Greenwood
[2] established an additional
requirement for patentability that eventually became known as the nonobviousness
requirement.
[3] Two decades later,
the 1870 Act required the patent applicant to define the invention more
distinctly, placing a heavier emphasis on the
claims.
[4] In the late 1940s,
Congress put together committees to develop United States Code Title 35, which
provides a comprehensive body of law devoted exclusively to patents. A few
decades after Title 35 was enacted, The Federal Circuit Court of Appeals was
formed in 1982. Essentially, every appeal relating to a patent matter goes to
that one circuit, thereby promoting uniformity in judgments of validity and
infringement. Since the founding of the Federal Circuit Court of Appeals,
patent law has become organized into a fairly well understood body of law.
However, with recent advancements in technology, and the numerous
advancements that could potentially be made during the 21
st century,
several novel patent law issues will be raised. Existing patent laws may be
able to deal with the some technological advancements effectively, while the law
will likely have to adapt to other innovations. The discussions hereinbelow
strive to address various patent law issues that may arise during the
21
st century and how our legal system can cope with such scenarios.
- The Proliferation of Prior Art on the
Internet
- Finding a Needle in the Haystack: The “Available to the
Public” Requirement
Historically, relatively few
pieces of information could qualify as “prior art” to block an
inventor from patenting his invention. After the enactment of Title 35 in 1952,
items or acts that could qualify as prior art for the purpose of anticipating or
rending an invention obvious included,
inter alia, patents and printed
publications existing anywhere in the world before the date of an
applicant’s invention
[5], and
public uses and offers for sale of the invention in the United States more than
one year prior to filing of a patent
application.
[6] Perhaps the most
important prior art revolution in modern patent law comes with the rapidly
growing popularity of the Internet. Before the Internet, a publication had to
be both published and “available to the public” to serve as prior
art
[7], thereby generally limiting
“printed publications” to magazines, articles or other printed
documents that the public could reasonably access.
Since the term
“available to the public” is somewhat subjective, various courts
have interpreted the meaning of this prerequisite for printed publications. For
example, the court in In re Cronyn
[8]
held that school papers, written by undergraduates and filed in a library
without a catalogue or index, could not serve as prior art. Even though the
physical documents existed in a public place, the papers were not readily
accessible to the public.
In the 21
st century, the prior art
publications that are “readily accessible to the public” will change
dramatically. Nowadays, it seems that virtually everything that has ever been
written has been uploaded into cyberspace. Theoretically, the Internet has
furnished billions of additional pieces of prior art that had not necessarily
existed during the 20
th century.
Very little, if any, case law
appears to exist concerning whether all Internet references serve as prior art,
or just those “readily available to the public.” Clearly, if dozens
of popular webpages disclose an invention, then an inventor should be barred
from receiving patent protection based on 35 U.S.C. 102(a) or 35 U.S.C. 102(b),
since the reference is readily available to the public.
A more complicated
scenario will occur in the future, however, when the invention has only been
disclosed on one relatively obscure webpage. As an example, assume that an
invention is disclosed on a webpage that originates in Chile and is only
available in Spanish. Further, assume that an American inventor independently
conceives of the same invention. The American inventor, believing his invention
is new, performs an Internet search for prior art, in good faith, to make sure
nothing else is out there. Google
TM lists the Chilean webpage as
page number 6,400 out of 2 million “relevant” pages.
It is
unclear whether such scenario has been litigated, but if not, it will almost
certainly arise in the near future. Courts may have a difficult time
determining whether the Chilean reference was “available to the
public,” based on
Cronyn, to bar the American inventor from
obtaining patent protection. Courts may need to factor in how many webpages a
reasonable person would search through, and whether they should go through the
hassle of translating the reference, before precluding the American inventor
from patenting the same invention disclosed on the Chilean webpage.
Public
policy may suggest that patent law should favor the inventor, who conceived of
the invention independently and without viewing the Chilean webpage. In most
cases, the applicant will have spent thousands of dollars, and countless hours,
pursuing an invention he believed was novel, in good faith, and after reviewing
the first 2,000 webpages provided by Google
TM. Where such cases of
good faith exist, courts may use the
Cronyn rationale to reward the
inventor with patent protection in the United States.
Alternatively, future
court decisions may opt for a bright-line rule that bars all inventions that had
previously been disclosed anywhere on the Internet and in any language. Such a
bright-line rule would facilitate litigation, as the court could more
consistently interpret the phrase “readily available to the public.”
In any event, the pool of prior art will continue to expand dramatically in the
upcoming decades, and the courts will have to decide when such “needle in
the haystack” references should qualify as prior art.
- Inoperative, Hypothetical Prior Art
In addition to
the problems associated with merely locating prior art on the Internet, issues
may arise as to whether inoperative, hypothetical inventions disclosed on the
Internet can qualify as prior art. For example, assume that a patent law
professor, administering a final exam in the year 2000, discloses a hypothetical
invention directed to a commercial spaceship for transporting humans between the
Earth and Mars. After grading, the exam becomes “available to the
public” via the Internet. A question may arise as to whether such
“science fiction” can qualify as prior art to a patent application
filed in 2056, which is directed to a similar, yet fully enabled, commercial
spaceship.
Multiple cases have held that an inoperative invention can
qualify as prior art under 35 U.S.C. 103 (obviousness), but not 35 U.S.C. 102
(anticipation). In Symbol Technologies, Inc. v. Opticon,
Inc.
[9], the court held that
“While a reference must enable someone to practice the invention in order
to anticipate under Section 102(b), a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under Section
103.
[10] Recently, in Amgen, Inc.
v. Hoechst Marion Roussel, Inc.
[11],
the court reiterated the
Symbol holding, stating that “Under
Section 103, however, a reference need not be enabled; it qualifies as a prior
art, regardless, for whatever is disclosed
therein.”
[12] The
Symbol and
Amgen cases make it clear that the disclosure of
inoperative inventions qualify as obviousness-based prior art for whatever they
in fact teach, even if the references are not enabling. Applying this rationale
to the example above, the law professor’s exam question, even though
farfetched in the year 2000 when it is administered and uploaded to the
Internet, may qualify as 35 U.S.C. 103 prior art in the year 2056. Further,
virtually all ideas that appear to be “science fiction” when created
ultimately may serve as prior art, if disclosed on the Internet or otherwise
made available to the public. Importantly, since the subsequent inventor still
must make nonobvious improvements over the broad “science fiction”
concept, patent law procedural safeguards will remain in place to reward only
those meritorious advancements in technology.
- That Would Have Been Obvious To My
Supercomputer
- The Current Obviousness Standard
An important
requirement for obtaining patent protection under current patent law is meeting
the “nonobviousness” requirement. 35 U.S.C. 103(a) provides that
“A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102..., if the difference between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which such subject matter
pertains. Patentability shall not be negatived by the manner for which the
invention was made.”
A leading case regarding obviousness is Graham v.
John Deere Co.
[13] In
Graham, the Supreme Court held that the following three factual inquiries
should be used for determining obviousness/nonobviousness of the subject matter:
1) Scope and content of the prior art; 2) differences between the prior art and
the claims at issue; and 3) the level of ordinary skill in the pertinent
field.
With respect to the third prong, several factors may be used to
determine the level of ordinary skill in the pertinent field. These factors
include: the educational level of the inventor; the type of problems encountered
in the art; prior art solutions to those problems; the rapidity with which
innovations are made; the sophistication of the technology; and the educational
level of active workers in the
field.
[14]In the 21
st
century, it may become difficult to ascertain the “level of ordinary skill
in the art,” assuming that various technologies for enhancing intelligence
come to fruition. Therefore, obviousness determinations under 35 U.S.C. 103(a)
may become muddled. The following examples described various means for
enhancing intelligence and their potential impact on obviousness in the
21
st century.
- Artificial Intelligence
In the next few decades, it
is possible that a supercomputer may be manufactured that is significantly
smarter than human beings. Programming may be implemented that gives the
supercomputer access to an enormous range of information, then causes the
supercomputer to process those references and combine them together to obtain
plausible new inventions. If such a supercomputer is perfected, then it is
unclear whether an invention that would have been obvious to a supercomputer,
but not a human, should merit patent protection.
If such supercomputers
become mainstream, for example, such that many households can afford an
artificially intelligent supercomputer, then the case for finding obviousness
under 35 U.S.C. 103(a) may be increased. Essentially, many people could have
turned to their supercomputers, plugged in a query, and discovered the new
invention with ease. Therefore, the new invention would have been obvious to
one of ordinary skill in the art, who just happens to have a
supercomputer.
However, if such supercomputers do not become mainstream
commodities, then the case may be strengthened for finding nonobviousness under
35 U.S.C. 103(a), since average human beings would not have turned to a
supercomputer to solve the problem. Similarly, even if everybody has
artificially intelligent supercomputers, the Patent Office and courts should
likely make a nonobviousness determination where the human enters a nonobvious
query or instruction, thereby causing the supercomputer to discover a nonobvious
invention.
- Mind Drugs
In another scenario, the level of one of
ordinary skill in the art may be difficult to ascertain if mind drugs are
improved. In the future, certain mind drugs may cause a drastic increase in
human intelligence, either permanently or temporarily. An interesting and novel
question may therefore arise: What happens if the invention would have been
obvious to someone taking performance enhancing mind drugs, but would not have
been obvious to an individual using regular brain power?
If the mind drug
question is analyzed under current patent law, then it probably should be
determined whether the knowledge achieved while using the mind drugs is
commensurate to that of a person of ordinary skill in the art. For example, if
it becomes common to take mind drugs to solve difficult technical challenges,
then patent protection should likely be denied since the “educational
level of the inventor” and/or “prior art solutions to those
problems” factors, enunciated supra, should be evaluated while the
inventor is on the mind drugs. However, if only a few individuals take
mind-enhancing drugs, e.g., due to the risks involved, then the Patent Office
and courts should likely uphold a finding of a nonobvious
invention.
- Genetic Engineering
Similarly, in the
21st century, genetic engineering may pose issues relating to the
level of ordinary skill in the art. If the wealthiest one percent of families
can afford to genetically engineer their children to become brilliant
scientists, professors or physicians, then should the level of ordinary skill in
the art be measured against that one percent, or measured against the other
ninety-nine percent of the population?
As noted above, the current factors
relating to ordinary skill in the art consider, inter alia, the
“educational level of the inventor” and the “educational level
of active workers in the field.” Under such an analysis, if the vast
majority of genetically engineered individuals excel as prolific nanotechnology
inventors, while very few regular humans can grasp the concept of
nanotechnology, then courts should hold that the genetically-engineered
individuals are the “active workers” in the field for purposes of
the ordinary skill level analysis. Therefore, perhaps counterintuitively, if a
regular human came up with what he deemed was a “great nanotechnology
idea,” the invention would likely be deemed obvious under current patent
law, since the genetically-engineered nanotechnology inventors would be the
reference point for ordinary skill in that particular art. While those skilled
in the art represent only a small fraction of the population at the present
time, it is possible that genetic engineering may widen the gap between those
skilled in the art and the general population in the future, assuming that
genetic engineering is affordable to only a small percentage of the
population.
- Conception, Diligence and “Public Use” in a Transparent
Society
- Current Interpretations of “Public
Use”
An important legal requirement for obtaining
patent protection in the United States is that an invention is not in
“public use” in the United States more than one year prior to the
filing of a patent application.
[15]
A main rationale for this one-year grace period is to allow an inventor to test
his product for a short period of time before deciding whether to pursue patent
protection. However, after one-year, the inventor must file for patent
protection in the United States so that he does not prolong a possible monopoly
on his technology.
Since the term “public use” is somewhat
subjective, several court decisions have helped interpret what constitutes a
public use. In Egbert v.
Lippmann
[16], the Supreme Court held
that when an inventor gave his girlfriend a prototype of his invention, without
restricting her use of it, it constituted a public use because she may have told
anyone about it. Further, in Metallizing Engineering Co. v. Kenyon Bearing
& Auto Parts Co.
[17], the court
held that a secret use of the invention was public use because the use was
commercial rather than experimental. Accordingly, to escape the public use bar,
the utilization of the invention must be private, under the inventor’s
control, and not for commercial purposes.
If an inventor can show that the
utilization of the invention was for experimental use only, then the inventor
does not invoke the public use bar. In City of Elizabeth v. American Nicholson
Pavement Company
[18], the Supreme
Court held that an inventor did not invoke the public use bar when he tested his
improved wooden pavement in public because he needed to test viability for its
purpose. If a prima facie case is made of public use, then the inventor must be
able to come forward with convincing evidence to counter that
showing.
[19]
- The Transparent Society
In the future, it is
possible that we will live in a “transparent society” in which
surveillance cameras capture most, if not all, of our
moves.
[20] Such increasing
surveillance, whether invading our public or private lives, will have several
ramifications on existing patent law, and in particular, the “public
use” bar.
With respect to public use, a competitor may argue that an
inventor should be barred from receiving a patent because his invention was used
“publicly” more than one year before the filing of a patent
application. The competitor may claim that he, and others, could see what the
inventor was developing because it was shown in surveillance footage. Whether
the inventor’s actions qualify as “public use” should be
analyzed on a case-by-case basis.
Under existing patent law, the utilization
must be private, under the inventor’s control, and not for commercial
purposes in order to escape a public use bar, as generally set forth above. In
the 21
st century, if the inventor knows of the surveillance, and does
not take appropriate steps to “hide” his invention, then courts may
choose to deny patent protection. Such reckless private use, where the
individual knows, or should have known, that he is being watched, will likely
qualify as public use based on
Egbert, supra, in which the inventor
effectively relinquished control of his invention due to failure to supervise
others who knew of his invention. If, however, the inventor takes reasonable
steps under the circumstances to maintain the privacy of his invention in a
transparent society, then his patent rights should be preserved, even though his
use of the invention could be viewed more than one year prior to filing.
As an example, if a patentee receives a blockbuster patent in 2030, then
patent attorneys may wish to scour through thousands of hours of videotape to
find a “public use” one year before the patent application was
filed, thereby potentially invalidating his blockbuster patent. The inventor
may argue that his prior use should not qualify as “public use”
where the footage is only discovered after a lawsuit is initiated. If an
inventor is developing an invention more than one year prior to filing, and
competitors do not know to perform a surveillance search at that time to find
this “public” use, then public policy should favor the inventor. In
other words, if it takes the initiation of a high-stakes lawsuit for competitors
to scour through hours of surveillance video footage to find a “public
use,” then the original development of the invention was sufficiently
private.
Questions will likely arise as to whether the opposing attorneys
are committing invasions of privacy by searching through countless hours of
footage to find public uses of the invention. The judiciary may need to apply a
balancing test to determine whether viewing footage in the interest in finding
“public use” prior art outweighs any invasions of privacy issues
that may arise.
In another scenario, the legal system may need to decide
whether surveillance video can be introduced into evidence to help an inventor
prove his date of conception, and/or whether he had acted diligently in reducing
the invention to practice. Such concrete evidence is likely to facilitate
litigation, since many patent litigations hinge on the conception date and/or
whether the inventor had acted diligently. Currently, courts rely on certain
documentation to deduce conception dates and to establish diligence.
Problematically, the documentation may be poor, such that days or weeks may have
elapsed between the conception date and first documentation date. Accordingly,
21
st century courts should seek to introduce surveillance video into
evidence, wherever possible, to establish the exact conception date and to show
the inventor acted diligently during the ensuing weeks, absent any
countervailing invasion of privacy issues.
- Inventorship Issues
- Current Inventorship Requirements
Under current
patent law, an inventor shall be entitled to a patent “unless he did not
himself invent the subject matter sought to be
patented.”
[21] A party
asserting invalidity of a patent based on 35 U.S.C. 102(f) must prove both prior
conception of the invention by another and communication of that concept to the
patentee.
[22] In the future,
with increasing forms of mind drugs and artificial intelligence, patent laws may
need to address various muddled inventorship scenarios. Several of the
scenarios may hinge on judicial interpretations of the statutory phrase
“unless he did not himself invent the subject matter sought to be
patented.”
- Artificial Intelligence
In the 21st
century, it may be possible for a human being to program a computer having an
intelligence that is far greater than the human being. Further, it is possible
that the human being can write an algorithm that causes the computer to
“scan” existing technologies all day in an effort to combine
multiple existing technologies into one or more novel inventions.
Alternatively, if the computer has its own artificial intelligence, the computer
can think of new inventions that the human being who created the computer never
could have envisioned.
In such scenarios, the legislative or judiciary
branches will need to decide whether the human being should be considered an
inventor, thereby receiving the right to license the new inventions and make
millions of dollars. One may argue that a narrow interpretation of the phrase
“unless he did not himself invent the subject matter sought to be
patented” means that the human being is precluded from being an inventor
because the computer discovered the invention, not the human being. The human
being simply wrote an algorithm, and did not think of the blockbuster cancer
drug that the intelligent computer discovered.
Public policy, however, may
suggest that the human being that programmed the computer should be deemed an
inventor of the new technology that the computer discovers. After all, the
human being wrote the algorithm that caused the robot to think intelligently
enough to discover the new invention. Further, public policy would likely want
to reward human beings that program robots to think of new inventions, since
society ultimately will be the beneficiary. If inventors were not rewarded with
patent protection, then they may not have an incentive to create intelligent
robots that could develop blockbuster medical cures.
In general, if an
inventor stumbles across a technological improvement accidentally, then he still
is legally entitled to receive patent rights. Therefore, if a programmed
computer discovers an unexpected invention, one can reason that the inventor
similarly has discovered the invention accidentally, albeit via the
supercomputer.
However, if one inventor creates a supercomputer configured
to devise millions of new and useful inventions, patent or antitrust laws may
need to be enacted to preclude the inventor from receiving the rights to all of
the inventions. It might not be fair for one individual to receive two million
patents over a span of three years because he developed a prolific
supercomputer. If the machine truly takes on a mind of its own, then perhaps
the inventions should be donated to society as a matter of public policy,
thereby prohibiting one individual from monopolizing virtually all technological
avenues.
Ultimately, the determination of whether an artificially intelligent
supercomputer can receive patent rights may hinge on the legal status accorded
to such machines. If such machines are given legal rights commensurate with
human beings, such as the right to self-defense and the right to freedom of
speech, then perhaps the machines can be permitted to be inventors, also.
- Mind-Enhancing Drugs
Another interesting legal
issue may arise when an individual consumes large doses of mind-enhancing drugs.
For example, assume that somebody takes mind drugs to make themselves 800%
smarter for one week. That individual may conceive of thousands of new and
useful inventions during his one-week mind trip, writing down each invention
immediately after conception. Once the mind drug wears off, the inventor will
have a record of thousands of inventions that he conceived during his
mind-enhancing voyage, but probably would not have conceived otherwise.
In
the 21st century, should patent laws be enacted to bar such individuals from
taking permanent or temporary mind drugs to facilitate conception of new ideas?
If there are health hazards associated with such mind drugs, then the government
may impose regulations to prevent significant amounts of adventurers from
overdosing, much like illicit drugs. However, assuming the mind drugs are legal
and pose minimal risks, the government presumably would not regulate such drugs,
since they are somewhat analogous to taking herbal supplements to enhance memory
or concentration.
Even if mind drugs are risky, the government may not wish
to intervene because the benefits to society may outweigh any individual harm to
the inventor. For example, it is possible that an indigent with nothing to lose
will be commissioned by an engineering company. The company may
“employ” the individual for one week, paying him large sums of money
to go on a mind-enhancing invention spree. Upon completion of the task, the
company is the recipient of thousands of pieces of intellectual property, the
previously-indigent individual can provide financial support for his family, and
society has benefited by receiving thousands of intellectual property building
blocks. This may be analogous to individuals who are commissioned by drug
manufacturers to be injected with promising new therapeutic drugs, as each
involves risk to the individual but measurable benefits to society. Therefore,
in summary, it is unlikely that the government will intervene to prevent
inventors from using mind-enhancing drugs, unless the health risks clearly
outweigh the significant benefits to society.
- Mind-Machine Links
In yet another scenario, legal
issues relating to inventorship may arise if mind-machine links become feasible
technologies. For example, in the 21st century, an individual may
serially or wirelessly upload information from computer software into his brain.
The upload may occur at a rate that is hundreds of times faster than
conventional information gathering, such as reading or watching an informative
program on television.
An inventor who uses mind-machine links to educate
himself, thereby becoming a more prolific inventor, would likely be awarded
patent protection under existing patent law. Even under a narrow interpretation
of 35 U.S.C. 102(f), the machine-enhanced individual still invented the subject
matter sought to be patented. The individual simply went through steps to
enhance his education, much like reading a book. Further, his own brainpower
still must perform an “inventive step” to devise a new, useful and
nonobvious invention so that he can be awarded patent protection.
In
summary, inventors who use mind drugs or mind-machine links to significantly
enhance their intelligence will likely retain their legal status as inventors,
despite drastically altered intelligence levels. Traditional patent law
safeguards remain unchanged because these individuals still must perform
inventive steps in developing their inventions, even though the inventive steps
are performed with enhanced intelligence. However, if an individual programs an
artificially intelligent supercomputer to conceive of unexpected inventions,
then questions may arise as to whether the human being “himself”
invented the invention under 35 U.S.C. 102 (f). The legal status of the machine
will likely need to be ascertained to determine if it has any legal
rights.
- The Impact of Nanotechnology on Patent Law
- The Basics of Nanotechnology
In the future, if
nanotechnology comes to fruition, it will likely have a far-reaching impact on
patent law. First, a fundamental understanding of nanotechnology will be useful
to understand its potential impact.
All manufactured products are made from
atoms, and the properties of those products depend on how the atoms are
arranged.
[23] In the future,
nanotechnology may make it possible to piece together fundamental building
blocks of nature easily and inexpensively, thereby permitting the fabrication of
an entire new generation of products that are cleaner, stronger, lighter and
more precise.
[24] Further,
nanotechnology may yield new manufacturing technologies that will enable the
building of inexpensive computer systems using mole quantities of logic elements
that are molecular both in size and
precision.
[25] To achieve the
goals of nanotechnology, some form of positional assembly and self-replication
may be necessary.
[26] Positional
assembly may employ molecular robotics, such as robotic devices that are used to
manipulate and position individual atoms and
molecules.
[27] Self-replicating
systems are capable of making copies of themselves, and also may be used to
manufacture useful products.
[28]
Using concepts such as positional assembly and self-replication, products may be
made whereby virtually every atom is in the right place, virtually any structure
can be made in molecular detail, and the manufacturing costs of the products may
not greatly exceed the cost of the raw materials and energy
required.
[29] It is against this
backdrop that some of the numerous patent law issues relating to nanotechnology
will be analyzed.
- Detecting Infringement on a Nanotech Scale
First,
the possibility of having microscopic assemblers and replicators could
facilitate unauthorized reproduction of patented nanotech products. For
example, someone may reproduce an inventor’s patented “angioplasty
nanorobot” without permission. The nanorobot may be configured to be
ingested, then perform completely internal, coronary artery angioplasties every
week. If an individual successfully reproduces and sells the patented nanorobot
without authorization, then a patent infringement clearly results. However, it
might be difficult or impossible for the patentee to locate the infringing
activity, absent enhanced nanotechnology detection devices. It may be necessary
for a whistle-blower, such as a co-worker or prospective customer, to inform the
proper authorities that one is selling products having infringing nanotech
components.
During the 21st century, few new legal issues should
be raised when manufacturers make patented nanotech products, without
authorization of the patentee or assignee, and within the confines of the United
States. This is basic patent infringement, albeit on a smaller scale, and the
difficulty will simply be finding the infringing activity in the first place.
Several novel legal issues, however, will likely be raised with respect to
importation and exportation of products containing nanotech components, as
described in the following sections.
- Importation of Products Containing
Nanotechnology
In general, patent law dictates that a
patent is enforceable only in those countries in which the invention was
actually patented. Therefore, if an inventor patents an invention in the United
States, the inventor has no recourse if the invention is being manufactured and
sold at an astounding rate in Japan, assuming a corresponding patent has not
issued in Japan.
However, there are a few exceptions to this general rule.
For example, with respect to importation, 35 U.S.C. 271(g) provides that
“Whoever without authority imports into the United States ... a product
which is made by a process patented in the United States shall be liable as an
infringer.” Accordingly, manufacturers cannot escape liability by
manufacturing an invention in a foreign country, then importing the invention
into the United States. A few important exceptions to this rule apply, namely
that infringement will not occur if the product is materially changed by
subsequent processes before importation, or if the product “becomes a
trivial and nonessential component of another
product.”
[30] An example
will be useful in understanding the 21
st century issues that will be
raised when products having nanotech components are imported into the United
States. Assume that a California corporation is the assignee of a United States
patent directed to a process for manufacturing a nanotech-size adhesive. The
nanotech adhesive is a key ingredient for manufacturing the above-mentioned
“angioplasty nanorobot” on a nanotech scale. Now assume that a
Delaware corporation manufactures the nanotech adhesive in China, using the
patented process without the permission of the California corporation. Before
importation, the nanotech adhesive manufactured without permission ultimately is
used in a conventional angioplasty catheter to secure the balloon to the
catheter.
Under modern patent law, the Delaware corporation may escape
liability for patent infringement when the catheters are imported into the
United States and sold here. The determination will hinge on whether the
nanotech adhesive has become a “trivial and nonessential component of
another product,” i.e., the large, conventional catheter.
An
influential judicial interpretation of the phrase “trivial and
nonessential component” is set forth by the court in Hughes Aircraft
Company v. National Semiconductor
Corporation.
[31] In that case,
Hughes’ parent company, General Motors, argued that the allegedly
infringing semiconductors are only a “trivial and nonessential”
component of its automobiles.
[32]
The court held that, although General Motors’ evidence makes it clear that
the allegedly infringing semiconductors are only small part of their
automobiles, that does not support a finding that they are trivial and
nonessential components as a matter of law, particularly in light of the
legislative history of 35 U.S.C.
271(g).
[33] With respect to the
legislative history of 35 U.S.C. 271(g), the Report of the Senate Judiciary
Committee gives a series of examples designed to guide the courts in defining
the words “trivial and
nonessential.”
[34] In one
such example, the Committee indicates that if a shock absorber is manufactured
using an infringing process, then subsequently incorporated into an automobile,
the automobile manufacturer would not be shielded from liability under 35 U.S.C.
271(g) by the “trivial and nonessential”
exception.
[35] Based on the
Hughes determination, and the examples in the Report of the Senate
Judiciary Committee, it appears that companies using patented nanotech processes
to make nanotech products in foreign countries will likely be liable for
infringement under 35 U.S.C. 271(g) when the nanotech products are placed in
larger products, then imported into the United States. This interpretation
assumes that a small nanotech component, incorporated into a larger product,
will be analogous to a semiconductor or shock absorber incorporated into an
automobile.
- Exportation of Products Containing
Nanotechnology
With respect to exportation, 35 U.S.C.
271(f)(2) provides that “Whoever without authority supplies ... any
component of a patented invention that is ... not a staple article..., knowing
that such component is so made or adapted and intending that such component will
be combined outside of the United States in a manner that would infringe the
patent..., shall be liable as an infringer.” In short, patent
infringement occurs when one makes a material, non-staple part in the United
States, and then ships the part outside of the country with knowledge that the
non-staple part will be used in an infringing product.
An analysis of 35
U.S.C. 271(f)(2) may conclude that existing exportation laws are well-equipped
for possible future developments in nanotechnology. With respect to
exportation, assume that an inventor has a United States patent directed to the
“angioplasty nanorobot.” Further, assume that a nano-size
“balloon” is an important component of the angioplasty nanorobot,
and the nanotech balloon has no other major uses. If the Delaware corporation
ships the nanotech balloon from the United States to Japan, knowing that the
balloon will be used to construct an infringing angioplasty nanorobot in Japan,
a patent infringement has occurred under 35 U.S.C. 271(f)(2). This is because
the nanotech balloon is a material, non-staple component of the patented
angioplasty nanorobot, and the corporation knows that infringing activity will
occur in Japan once the nanorobot is assembled there.
In summary, it
appears that modern patent law, perhaps accidentally, will be well-suited to
deal with exportation of nanotech components for manufacture in other countries.
Further, modern patent law also appears to be well-equipped to deal with
importation of products having components made by nanotech processes, by
providing judicial and legislative guidance as to when relatively small
components may become “trivial and non-essential components” of a
larger product.
- Infringement in Outer Space
As noted above, a
patent generally is enforceable only in those countries in which the invention
was actually patented. In the 21
st century, if human beings fly to
the Moon, Mars, or simply take a short outer space flight, several unique
territorial issues may arise with respect to patent infringement. For example,
if an inventor has a United States patent directed to a method for curing
cancer, it is unclear what will happen if a United States citizen flies into
outer space and has a team of doctors perform the patented treatment method on
him. The man will then return to the Earth cancer-free, for example, six hours
after surgery. Since all of the infringing acts, i.e., the method steps,
technically were performed outside the United States, then it must be determined
whether the inventor or assignee has any recourse under current patent
law.
Historically, there appears to be a paucity of case law relating not
only to infringing acts in outer space, but also on the high seas. A leading
case regarding infringement on the high seas is Gardiner v. Howe
(1865).
[36] Without including
facts, the terse opinion held that the use of a patented device on a vessel
owned and operated by Americans while on the high seas constituted use “in
the United States.” The judgment, based on policy rather than law,
reasoned that “Were it to be held that in cases like the present the
plaintiff is not entitled to recover, patents for improvements in the tackle and
machinery of vessels, or in their construction, would be
valueless.”
[37] Before
1990, commentators and courts in dictum considered whether the United States
patent law applied to activities aboard vehicles in outer
space.
[38] In 1990, Congress
quelled the speculation by adding 35 U.S.C. 105, entitled “Inventions in
outer space.” 35 U.S.C. 105(a) recites, in relevant part: “Any
invention made, used, or sold in outer space on a space object or component
thereof under the jurisdiction or control of the United States shall be
considered made, used or sold within the United States for the purposes of this
title....”
[39] The statutory
exceptions to 35 U.S.C. 105(a) include “any space object or component
thereof that is specifically identified and otherwise provided for by an
international agreement to which the United States is a
party....”
[40]One of the
few cases to interpret the “patents in space” law provision of 35
U.S.C. 105(a) is Hughes Aircraft Co. v. United
States.
[41] The court noted that
“The legislative history indicates that the purpose of the law was
‘to clarify U.S. patent law with respect to its extraterritorial
application aboard U.S.-flag spacecraft, in order to encourage private
investment in research and manufacture conducted in outer space.’...
Moreover, the legislative history suggests that the Act was consistent with
international
law.”
[42]Based on the
legislative and judicial interpretations, it appears that any infringing acts in
outer space will be covered by the newly-enacted provisions of 35 U.S.C. 105(a),
so long as the space object is “under the jurisdiction or control of the
United States.” In the example above, the medical team performing the
patented method in outer space cannot escape liability under 35 U.S.C. 105(a),
assuming the invention is being used on a space object “under the
jurisdiction or control of the United States.” It appears that Congress
had the foresight to envision such scenarios, which will likely arise in the
21
st century, and intends to use 35 U.S.C. 105 as a means for
protecting inventors from potential infringing acts that could otherwise seek to
circumvent territorial loopholes in outer space.
- Inequitable Conduct Made Simple?
- The Defense of Inequitable Conduct
An important
concept in existing patent law is the patent applicant’s duty of candor to
the United States Patent and Trademark Office. This duty was codified in 37
C.F.R. 1.56, which states “Each individual associated with the filing and
prosecution of a patent application has a duty of candor and good faith in
dealing with the Office, which includes a duty to disclose to the Office all
information known to that individual to be material to patentability.” In
short, the applicant must bring to the attention of the Patent Office all known,
material references during prosecution of the application.
There are strong
sanctions for knowingly withholding material prior art from the Patent Office.
Specifically, an entire issued patent will be invalidated if inequitable conduct
is proven.
[43] Therefore, it is not
surprising that when a high-stakes litigation arises, attorneys seek to discover
what “material” prior art references were known to an applicant,
perhaps 10 or 15 years into the past, in order to invalidate his or her patent
on the grounds of inequitable conduct.
Since inequitable conduct requires
both materiality and intent, it may be difficult to prove the intent of an
individual. For example, assume that an individual invents a new and improved
spatula. The inventor can simply submit a patent application directed to the
spatula without searching for prior art. Current patent laws require that the
inventor merely informs the Patent Office of what he has seen that may be
relevant, not to perform an affirmative search to find prior art. If it turns
out that an extremely material, prior art spatula existed, it may be difficult
to prove whether the inventor had seen the prior art spatula previously, e.g.,
in stores or online. Therefore, it is difficult to determine if the inventor
was knowingly withholding material prior art from the Patent Office, or merely
didn’t know of it at all.
At present, one of the best mechanisms for
meeting the “intent” requirement for finding inequitable conduct is
to realize that the inventor has not disclosed prior art to a first national
patent office, when that prior art reference was cited during the prosecution in
a second national patent office. For example, assume that the inventor of the
spatula prosecutes his invention in the United States and Europe. The European
Patent Office examines the application first, and rejects the application based
on an issued Japanese patent showing an extremely similar spatula. If the
inventor does not bring the Japanese spatula reference cited in Europe to the
attention of the United States Patent Office, then inequitable conduct may be
found. This is because the cited reference was clearly material and brought to
the attention of the inventor in writing during prosecution. As such, an intent
to deceive the United States Patent Office can be inferred.
- We Know What You Saw
In the 21st
century, proving inequitable conduct may become a significantly easier task.
Generally, before an inventor pursues patent protection for an invention, the
inventor searches for prior art. Such a search is not required, as noted
hereinabove, but often is advisable so that the applicant knows what prior art
exists before spending large sums of time and money pursuing his invention.
Such prior art searches can be performed, e.g., using the United States Patent
Office search engine, GoogleTM, and so forth.
In the
21st century, it is possible that all computer activity can be logged
into a database. Therefore, it is possible that an attorney can at least prove
that an inventor viewed a website having material prior art. If this webpage
was not brought to the attention of the Patent Office during prosecution, that
attorney may argue that inequitable conduct was present.
Similarly, in a
transparent society, as described above, it may be easier to determine whether
an inventor viewed pertinent prior art. Surveillance video may make it possible
to prove that an inventor saw an advertisement on the television showing his
spatula, or that the inventor walked into a store and saw the spatula on sale
before he filed his patent application.
While such an activity log or
surveillance can be useful for determining whether an inventor viewed prior art,
intent must still be proven to invalidate a patent. Simply because the inventor
viewed an existing product or disclosure does not mean that he deemed it
material to his invention. The inventor of the spatula, believing that his
improvement was superior, might have thought that it was unnecessary to disclose
an inferior spatula, which he saw on the Internet, to the attention of the
Patent Office. However, the mere fact that the inventor viewed prior art is
helpful evidence of intent to deceive.
- Conclusion
Various technological advancements that
may emerge in the 21st Century will likely have a significant impact
on existing patent laws. Technologies such as artificial intelligence, mind
drugs, nanotechnology and surveillance, to name a few, may dramatically affect
what is considered obvious, or may raise several new issues regarding
inventorship. The emerging technologies may provide useful knowledge for
brainstorming new inventions, or may be used as tools to invalidate a
blockbuster patent during a high-stakes litigation. Finally, assuming this
paper is published to the extent that it meets the “available to the
public” requirement described above, please be forewarned that this paper
may serve as prior art for anyone seeking patent protection directed to an
angioplasty nanorobot.
[1] Donald S. Chisum et al.,
Principles of Patent Law, Foundation Press, 18
(2001).
[2] Hotchkiss v.
Greenwood, 52 U.S. 248
(1850).
[3] Donald S. Chisum et
al.,
Principles of Patent Law, Foundation Press, 20
(2001).
[4] Id. at
21.
[5] 35 U.S.C.
102(a).
[6] 35 U.S.C.
102(b).
[7] Donald S. Chisum et
al.,
Principles of Patent Law, Foundation Press, 430-431
(2001).
[8] In re Cronyn,
890 F.2d 1158 (1989).
[9] Symbol
Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569
(1991).
[10] Id. at
1578.
[11] Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313
(2003).
[12] Id. at
1357.
[13] Graham v. John
Deere Co. of Kansas City, 383 U.S. 1
(1966).
[14] Donald S. Chisum et
al.,
Principles of Patent Law, Foundation Press, 598 (2001).
[15] 35 U.S.C.
102(b).
[16] Egbert v.
Lippmann, 104 U.S. 333
(1882).
[17] Metallizing
Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516
(1946).
[18] City of Elizabeth
v. American Nicholson Pavement Company, 97 U.S. 126
(1877).
[19] Donald S. Chisum et
al.,
Principles of Patent Law, Foundation Press, 359
(2001).
[20]
http://www.davidbrin.com/tschp1.html.
[21]
35 U.S.C. 102(f).
[22] Gambro
Lundia AB v. Baxter Healthcare Corporation, 110 F.3d 1573
(1997).
[23]
http://www.zyvex.com/nano
[24]
Id.
[25]
Id.
[26]
Id.
[27]
Id.
[28]
Id.
[29]
Id.
[30] Donald S. Chisum
et al.,
Principles of Patent Law, Foundation Press, 965
(2001).
[31] Hughes Aircraft
Company v. National Semiconductor Corporation, 857 F.Supp 691
(1994).
[32] Id. at
697.
[33] Id. at
698.
[34] S. Rep. No. 83, 100th
Cong., 1st Sess., 49-52
(1987)
[35] Hughes Aircraft
Company v. National Semiconductor Corporation, 857 F.Supp 691, 698
(1994).
[36] Gardiner v.
Howe, 9 F.Cas 1157
(1865).
[37]
Id.
[38] 5-16 Chisum on
Patents, Section 16.05.
[39] 35
U.S.C. 105(a).
[40]
Id.
[41] Hughes
Aircraft Co. v. United States, 29 Fed. Cl. 197
(1993).
[42] Id. at
230.
[43] Donald S. Chisum et
al.,
Principles of Patent Law, Foundation Press, 1050 (2001).