Basic research is "[e]xperimental or theoretical work undertaken primarily to obtain new knowledge of the underlying foundations of phenomena and observable facts, without any specific application or use in view." NATURAL CTR. It requires an inventor to know something about the trajectory of the future research and its eventual practical application."30 This reality has "driven a wedge between academic science and the patent system."31.
ARE RESEARCH INPUTS (INHERENTLY) USEFUL?
It discusses how they will be obtained and enforced, as well as what happens when a practical use for the research inputs is discovered. It provides a theoretical justification for the proposal, addresses concerns about (too much) patent owner control of downstream uses, and makes the normative argument for giving research in patent law.
Utility as a Patentability Lever
Lack of utility is a bar rarely raised against an application by the Patent Office and rarely successfully employed as a defense in [dispute]. Utility in its broadest sense approaches a presumption more closely than any other point in the statute and is rarely called into question by the courts or the Patent Office ...53.
The Current Paradigm
explains that in the mechanical arts, "if the function of the end product satisfies the statutory requirement of utility, that satisfaction is imputed to the intermediate contributing invention."). 34; Only after the PTO provides evidence showing that a person of ordinary skill in the art would reasonably doubt the claimed utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention's claimed utility.
The "Double Standard"
Section 112(a) compels a patent applicant to submit a written description of the invention118 sufficient to enable a PHOSITA to make and use it without undue experimentation.119 This statutory or. 102(a)(1) (denying patentability if "the claimed invention was patented . . . before the effective filing date of the claimed invention"); id. The written description is the part of the patent document that fully describes the invention.
The scope of the claims must be "less than or equal to the scope of the enablement." Nat'l Recovery Techs., Inc. Anticipatory activation is a "judicially imposed limitation" on § 102 that the description of the subject matter in the reference must be an enabling description.
Utility and Useful Disclosures
PATENTING INVENTIONS "FOR USE IN RESEARCH"
Claiming Research Uses
The Primacy of the Patent Claim
74:1:143 For research inputs such as chemical compounds, an inventor typically pursues several types of claims.143 For example, if the invention is compound Y, which is useful for treating arthritis, the claim matrix will likely include a "composition" claim. on Y, the compound itself,144 and one or more 'method' claims aimed at making Y or using Y to treat the disease.145 Method claims provide a fallback position if the compound claim is not available, rejected by the Patent Office or declared invalid. in lawsuits.146. A claim about the compound by itself dominates every method of making that compound and every single use of that compound, every mixture of different components containing that compound, and every end-use formulation including the compound.1 4 9. A claim about the compound may not be available because the compound may be covered by an existing patent or in the public domain.
As Robin Feldman has explained, "Once the inventor identifies a single use for the product, the inventor can exclude others from the full spectrum of the product, including any use of the product and other embodiments of the product. Any use includes those that are not are discovered or foreseen at the time of filing.150 The broad scope afforded by a composition claim is of considerable practical importance.
Modulating Claim Scope
112(a).165 Remember that activation ensures that a patent "is of an appropriate scope in light of the contribution her research makes to the relevant field."166 If the original inventor makes a disclosure that does not possible for a PHOSITA to make and use a downstream invention, then the downstream invention would be outside the scope of the upstream patent.167. Although the inventor's composition claim for Y covers all infringing uses,170 an accused infringer could raise nonenablement as a defense, arguing that the baldness use was not enabled on the patent's filing date. The scope of the claims cannot be wider than the scope of activation specified in the patent document.
Bernard Chao has argued that rigid application of the full scope doctrine may be inequitable—at least for unanticipated embodiments that fall within the scope of the claim. 74:1:143 research.185 That said, the limitation "for research use" would explicitly limit the scope of the exclusive right.
Enforcing the Research Patent
Some patent holders have requested “reach-through royalties,” which are calculated not based on the actual infringing use, but based on the value of the non-infringing downstream product. Given the uncertain (downstream) value or utility of X.201, the availability of reach-through royalties could provide a meaningful incentive for inventors to obtain research patents. There is no easy way to detect the use of
Damages "are usually measured, depending on the circumstances and the evidence, as the patent owner's lost profits or as a reasonable royalty." Beatrice Foods Co. For a discussion of how to calculate range damage for research tools, see James Gregory Cullem, Panning for Biotechnology.
What Happens When a Practical Use
Section 102(a)(1) of the patent statute, the basic prior art rule under the AIA,2 12 denies patentability if “the claimed invention has been patented, described in a printed publication or in public use, for sale, or otherwise in available to the public before the effective filing date of the claimed invention."21 3 This rule treats a pre-publication discovery, including the activity of the original inventor, as disruptive innovation.214 This means that the discovery of X in a research patent of published document would bar a later composition claim.215 Section 102(b)(1)(A), however, is a novelty-preserving exception that excludes from the prior art "[a] disclosure made 1 year or more shortly before the effective filing date of a claimed invention. A disclosure under the AIA, then, means subject matter that is, prior to the applicant's filing date: "patented, described in a printed publication, or in public use, for sale , or otherwise available to the public, Pursuant to AIA § 102(a)(1). In other words, discoveries made by the original inventor during the grace period do not enter the public domain (and therefore are not prior art).
Because an exploration patent can act as a wildcard, it is similar to a provisional patent application that allows the inventor to obtain an early filing date for the invention before the inventor is ready to draft a claim or full application. An inventor must file a regular, "non-provisional" application within a year to take advantage of the early filing date.
Justifying Research Patents
Disclosure and Knowledge Transfer
The technical information disclosed in the patent document "adds to the sum of useful knowledge when published." The focus on promoting useful articles to the exclusion of the technical merits of the invention is shortsighted.") It has been reiterated time and time again that the purpose of the patent system is to encourage invention through protection, and inventors should understand that this is for the common good.
First, a research patent will allow the inventor of X to disclose it (publicly or privately) without losing exclusive rights.2 49 Use of X without permission during the patent. It is impossible to find out how many inventors opt out of the patent system because of utility barriers.
Innovation
74:1:143 Invest in the often costly and risky development required to translate the emerging technology into a downstream application.25 7. It is also true that patents have long been frowned upon in academic science.25 8 University researchers viewed them as contradicting traditional scientific norms of open sharing, discourse, and serving the public interest.25 9 These views have evolved for several reasons, including a decline in federal support for basic research26 0 and the adoption of the Bayh -Dole Act of 1980, which allows universities to patent and license inventions resulting from federally funded research.26 1 Now every major research university has a technology transfer office charged with collecting invention disclosures about research in a early stage, obtaining patents and licensing them to private companies for commercialization.262. This way of thinking has become even more popular in the wake of the COVID-19 pandemic.
For example, the Association of University Transfer Managers ("AUTM"), the world's leading association of technology transfer professionals, has encouraged IP owners to adopt a licensing strategy for COVID-19 that requires. 34; granting time-limited, non-exclusive, royalty-free licenses in exchange for licensees' commitment to rapidly manufacture and distribute products and services to prevent, diagnose, treat, and contain COVID-19." AUTM, https:// autm.net/about-tech-transfer/covidl9/covid-19-licensing-guidelines (last visited October https://perma.cc/.
Controlling Future Uses
Survey results from researchers suggest that although commercial researchers face more obstacles from intellectual property than academic researchers, it is rare for an ongoing project to be stopped due to patents in either context.). The study results "also suggest that IP-protected technologies remain relatively accessible to the wider scientific community and not as limited by IP protection as many have warned." Id. See e.g. Duffy, supra note 30, at 242 ("Because the holder of an embryonic patent must have the patent developed by further research, the right holder has every incentive to try to lower the cost of that research. A patent holder gains nothing by blocking research that is necessary to bring the innovation to market.").
It is true that [the patentee] could try to block entire areas of research, but the patentee has every economic incentive not to do so. SoC'Y argues that the ability to obtain patents for newly discovered uses would prevent the composition patent owner from blocking an entire field of research).
Giving Research Its Due in Patent Law
These are the inventions with which we are most familiar and the ones we care most about." (footnotes omitted). See Risch, supra note 29, at 1221 (exploring arguments that the bias might stem from . "simpl[e] desire to promote manufacturing rather than science"). The broader point is that a court hearing a patent case may not "fully understand all the science before it." Burk & Lemley, supra note 292, at 1197; see also Arti Rai , Addressing the Patent Gold Rush: The Role of Deference to PTO Patent Rejections, 2 WASH.
This can be traced back to the Latin proverb "[d]amnant quod non intellegunt" which literally means "[d]em they condemn what they do not understand." WALDO E. 34; The only exceptions to the effective elimination of the utility requirement in patent law are the fields of biology and chemistry.” BURK & LEMLEY, supra note 27, at 111.
