The Brevard Technical Journal

To Have and Have Not

Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Certified Approved Mediator for Computer Law Disputes, and is admitted to the Northern, Middle, and Southern, U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: (321) 821-1922 or by email to jirosenblatt@earthlink.net Past articles may be viewed at http://www.joelirosenblatt.com

When the silent movies became “talkies,” there was real talk, namely dialogue as the action, expressing whatever the movie was about. Not unlike watching Romeo and Juliet in the famous balcony scene. However, talk was not cheap. Screen writers had to be hired and paid and sometimes even the authors of the books Hollywood choose to adapt to the movies, if recent and in copyright, had to be paid.

One copyrighted property happened to be a book authored by Ernest Hemingway. The story goes that Hemingway was asked what his worst book was. The challenge was to make a good movie from a bad Hemingway fiction. Hemingway chose “To Have and Have Not.”

Hemingway lost the bet. What he didn’t know was the studio has already cast Humphrey Bogart (deceased), Lauren Bacall (very much alive), and Claude Rains (recently deceased -- played the first invisible man), in whatever the “worst” book that Hemingway was to have selected. The added advantage was the movie was made for wartime audiences where off-time war workers would sit through anything just for the opportunity to do the expected when watching a movie, namely to “sit.”

As the name implies, the story was about having something but not really having it. Similar to a U.S. Patent, issued only after a lengthy and costly application and examination process, followed by payment of a $1,000 issue fee and annuity payments every 3 years. That adds up to an expensive “have.” Now to where the “have not” comes in.

So let’s say a patent was issued and was followed by a successful licensing program. That’s the “have” part. However, where there’s money made from an idea, as in a patent, there are those who want the idea free of charge. You may remember, getting something cheap or for free, adds to bottom line profit. Not illogical, as common business sense tells us royalty payments cut into profits, and who should be required to pay for anything that was in the public domain, and free for the taking.

Translated, in the words of any patent attorney, “ideas in the public domain cannot be the substance of a government granted patent monopoly and certainly not against the interests of my client.”

Indignation makes for change, and the incensed public, angry over what is believed to have been an unlawfully issued patent, now has an avenue for challenge without risking a charge of infringement, injunction, and damages.

It’s called Optional Inter partes Reexamination, has been around since 1999, is an addition to the ex parte reexamination proceeding, and it works because it is a sensible alternative to litigation in the Federal Courts. It is good, too, for those who enjoy making a federal case. It includes the right of appeal to the U.S. Court of Appeals for the Federal Circuit, and if the reexamination goes against the patentee, the party requesting the reexamination may participate at the appeal level, adding arguments to the Patent Office’s brief for patent invalidation. For the disappointed patentee, that seems like adding insult to injury.

However, those wanting to make trouble for a patentee can’t expect to file a request for reexamination and expect the Patent Office to stop in its important work of issuing patents. First, it will be necessary for the requester to demonstrate there is a substantial new question of patent ability affecting one or more of the patent claims. That’s like new evidence justifying a new trial, and in the case of the patent, it will be evidence limited to “prior art,” meaning publications antedating the filing date of the patent, that discloses in one publication all of a claims elements or combines two or moor publications to suggest or teach the combination would have been obvious to one skilled in the art.

Now comes the best part, at least for the patent attorney. The meaning and scope of the term “a substantial new question of patent ability” is not defined, at least not by statute, and must be based on the facts of each case, giving our patent attorney the opportunity to argue and charge a fee.

Somehow, I remember a famous work called “A Guide to the Perplexed.” I can’t say I remember who wrote it or what it says, but I love the title and think of it every time I turn to the Manual of Patent Examining Procedure (or MPEP for its short title), for any insight into the examination process or what the reasonably skilled patent examiner might be thinking.

What our MPEP tells us is (and this is literal), a prior art patent or printed publication raises a substantial question of patentability where there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publication important in deciding whether or not the claim is patent able.

Restating the obvious for a substantial new question of patent ability, the prior art suggested the reexamination must present new grounds for invalidity and not be otherwise be merely cumulative to similar prior art already fully considered by the Office in a previous examination of the claim. However, a slam dunk prima facie case need not be made. It is only necessary to raise the question whether the “teaching” of the newly introduced prior art would be important in considering the patent ability of the allowed claims.

So far we discussed the “have,” and now it is time to consider the “have nots” of the world. Once again it is the University of Wisconsin, the Wisconsin Alumni Research Foundation (WARF), which has a fundamental patent on human embryonic stem cells. The WARF licensing program provides a free license for use but not for practicing the patented method of deriving the stem cells. Licenses go for $75,000 to $400,000, depending on the size of the buyer and the scope of the “free” license.

In the WARF case, the substantial question of patent ability has been demonstrated through the use of patents and publications, said to show the patented process was done before the invention by the WARF patentee. Not surprising by Patent Office statistics that of the 400 to 500 reexamination requests received annually, about 90% are granted.

Unfortunately, for the proponents of reexamination, the process is slow. It does, however, have a cost to the patentee. While the wheels of the Patent Office revolve, doubt is cast on the validity of the patents and potential infringers literally arise from the vapors.

Up above, I said “once again” for the Wisconsin Alumni Research Foundation because it happened before. It was so long ago, it was a case we aspiring patent attorneys read I law school. I believe the facts were WARF has a patent to an enzyme that purified water. It was a good patent and was making money for WARF. However, at that time, water was more important than is stem cells for heart, nerve, and pancreatic, cells and the court denied enforcement of the patentee’s exclusive right to use the invention, on the grounds of public interest.

My guess is public interest and patents, even though each begins with “P” were parted long ago and we won’t see the likes of that decision, at least for a long time.