The patent troll narrative has dominated our cultural consciousness ever since a clever Intel lawyer coined the term in the early 2000s. Even if you know nothing about patents, you’re probably familiar with the concept. Companies with no intention of producing anything buy up overly broad patents to extort other businesses with. Do you remember when the podcast This American Life devoted not one but two episodes to the subject? I do.
It was so persuasive that legislation — the Leahy-Smith America Invents Act (AIA)— was passed in 2011 to address it. Congressman Thomas Massie (R-KY), an award-winning inventor and successful entrepreneur, began his term the year after Congress passed the AIA.
He perceived the legislation would be damaging, he told me in a phone interview earlier this month, and he was right. It has been. (Read some of the reasons why I believe independent inventors are in danger.)
As an undergraduate at MIT, Massie invented a haptic computer interface in 1993— enabling users to “feel” virtual objects. His thesis advisor encouraged him to reach out to the technology transfer office on campus. With the university’s help, he obtained patent protection. Without it, he is certain he wouldn’t have been able to raise the funds he needed to commercialize the initial prototype.
It took three to four years and $9 million dollars to create a version for consumers.
Thirty patents stem from his initial invention and improvements. Now owned by 3D Systems, his technology is still in use today.
On June 28th of this year, he introduced the Restoring American Leadership in Innovation Act of 2018 into the House of Representatives (H.R. 6264). It is co-sponsored by Congresswoman Marcy Kaptur (D-OH) and Congressman Dana Rohrabacher (R-CA). Its goal is to roll back some of the “worst parts” of the AIA, Massie said.
Others have been sounding the alarm about the adverse effects of the AIA for some time now. They include the Innovation Alliance — a group of research and development-based technology companies from a range of industries, including Qualcomm; patent experts writing on IPWatchdog.com and for the Center for the Protection of Intellectual Property; innovation policy advocates at Inventor’s Project; and activists from US Inventor, a not-for-profit.
To Massie, the relationship between strong patent rights and the incentive to innovate could not be clearer.
“Ideas never get developed if no one can recoup investment from them,” he explained. If ideas were made free and anyone could develop them, he thinks there would be less development of ideas — not more.
Notably, H.R. 6264 abolishes the Patent Trial and Appeal Board (PTAB), the body established by the AIA to review new kinds of patent challenges.
One very successful inventor I know has been tied up in the PTAB system ever since an infringer challenged his utility patent. It’s been years now. Before the AIA, he earned sizable royalties from a licensing agreement for 10 years uneventfully. Originally issued 13 claims, after battling seemingly endless rounds of appeals, he’s down to one. Meanwhile, while his patent remains under re-examination, infringers have flooded the market and sales of his invention have been cut in half.
Massie’s bill explicitly restores patents as a property right, which would reverse a recent Supreme Court decision. As he put it, “Who is going to build a building on a piece of property when someone could say two years later, ‘We reviewed your deed, and you don’t own this property.’”
In its attempt to police malevolent actors and rid the system of overly broad patents, did Congress tip the scales too far against independent inventors and small business owners? Maybe.
“It’s an economic decision, whether to steal or license. Which is cheaper?” Massie explained. There’s even a phrase for it: Efficient infringement. In 2015, Joe Nocera described it as follows in his New York Times op-ed “The Patent Troll Smokescreen.”
That’s the relatively new practice of using a technology that infringes on someone’s patent, while ignoring the patent holder entirely. And when the patent holder discovers the infringement and seeks recompense, the infringer responds by challenging the patent’s validity.
Not everyone agrees, of course. For some, the patent troll issue reigns supreme. There really are far too many bad patents, that perspective contends — which is why processes like inter partes review (IPR) are necessary and good. Filing an IPR is cheaper than going to court.
Andrea Evans, an IP attorney who spent five years examining patents and trademarks at the USPTO, sees that as a potential benefit. She recently celebrated her firm’s 11th anniversary.
“I do think the Patent Trial and Appeal Board is necessary, because I like the idea of having a resource for people who cannot afford to go to federal court. It’s a faster process and less expensive,” Evans noted, adding that it must be policed properly.
Evans hosted the first day of a conference of inventor group leaders from across the country put on by Inventors Groups of America, an organization I co-founded last summer. It took place at the United States Patent and Trademark Office with the help of the United Inventors Association. We were all cheered when Andrei Iancu, the new director of the USPTO, stopped by unannounced to deliver a supportive message.
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Josh Malone, the inventor of Bunch O Balloons, won a $12.3 million judgement against Telebrands’ recently. Josh’s patents were challenged at the Patent Trial and Appeal Board (PTAB) and were found to be invalid. However, the Eastern District of Texas found that the patents were valid and also found Telebrands’ and others had willfully infringed the patents owned by Tinnus Enterprises and Zuru that cover the toy, Bunch O Balloons. Zulu and Tinnus are now looking forward to enhanced damages since the jury found willful infringement by Telebrands’.
Another patent used to protect the invention of Malone was challenged by Telebrands’, but the PTAB did not grant the petition for hearing since the same issues and the same prior art had been reviewed by the examiner in the application for patent. This may show that the tide is starting to turn in favor of the inventor in further reviews of patents in this on-going battle.
What does “useful”, one of the basic requirements for the patentability of an invention, mean in Canadian patent law? On June 30, 2017, in AstraZeneca Canada Inc. v. Apotex Inc.(AstraZeneca), the Supreme Court of Canada (SCC) ruled that the threshold for utility is low — a mere scintilla will do. In fact, requiring anything more is not only overly onerous; it is incongruent with the Patent Act and antagonistic to the bargain theory on which patent law is based.
PROMISE AS PART OF PATENT BARGAIN
To be eligible for a patent, the law requires that an invention must be, among other things, new, useful and non-obvious. Should a new, useful and non-obvious invention be denied patentability because a patent application and the resulting patent include a superfluous statement as to a specific level of utility that is not fulfilled at the time the application was filed?
The “bargain theory” of patent law is based on the grant to an applicant of the exclusive rights in an invention for a limited period of time in consideration for disclosure of the invention to benefit society. In recent years, a statement of utility in a patent has been considered a “promise”, forming part of the bargain. If a promise extended beyond that which could reasonably have been understood as a hoped for advantage at the time of filing the application, the patent was held invalid for a lack of utility. This is no longer the case.
In AstraZeneca, in a unanimous ruling, the SCC struck down what had come to be called the “promise doctrine” as “unsound”. In doing so, the SCC reversed years of judge-made law and more closely aligned the utility requirement with that of most of the industrialized world.
THE PROMISE DOCTRINE
The requirement that an invention must be useful is enshrined in the definition of “invention” in the Patent Act (Act). But how is usefulness or “utility” assessed?
In a 1981 decision, instead of defining what utility is, the SCC defined what utility is not. The SCC said that there is a lack of utility if “the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the [patent] specification promises that it will do“. It is the latter part of this statement that led to the promise doctrine.
Over the years, the Federal Court of Canada has interpreted and applied the above language to construe a statement in a patent that speaks of an advantage, directed to what the invention will or will not do, as a promise. This “promise of the patent [was] the yardstick against which utility [was] measured” and had to be either specifically demonstrated or soundly predicted at the filing date of the application. In Canada, unlike some other countries, evidence of events after the filing of the application is prohibited. Additionally, if a patent included multiple promises, each had to satisfy the utility requirement independently.
In the above action, Apotex sought to invalidate AstraZeneca’s patent for the commercially and functionally successful esomeprazole drug, sold under the NEXIUM trade-mark, comprising salts of one of the two mirror image molecules contained in the previously known mixture, omeprazole. Both drugs are used to decrease stomach acid and treat gastric reflux and related conditions; the difference being that the single molecule was found to work better than the mixture.
Apotex succeeded at trial on its argument that AstraZeneca’s patent included a promise of utility beyond a “hoped for advantage”. Specifically, the construed promise said that the new drug is more effective than the previously known mixture and provides less variation in patients’ response.
Esomeprazole did provide an improved therapeutic profile, which did lead to a lower degree of individual variation. However, AstraZeneca did not specifically know this at the time the application was filed and only became aware of it through clinical trials that took place later. The trial court held that, on a purposive construction, the patent as a whole did not provide a sufficient basis to soundly predict this result at the filing date. Therefore, the patent lacked utility and was invalidated. The decision was upheld on appeal.
The result in AstraZeneca was due in part to the fact that the patent was a “new use” case, in which the esomeprazole molecule was previously known and the foundation for the invention was the new (or improved) use. A new use patent is subject to an elevated disclosure requirement, which is meant to prevent an applicant from making an unverified promise to obtain a monopoly on an invention that, but for the promise, would be in the public domain. Importantly, however, even under this standard, if no promise was made in the specification, a “mere scintilla” of utility would have sufficed and the patent would stand.
NEW TEST FOR UTILITY
On further appeal, the SCC considered whether a patented invention that includes a statement that could be construed to be a promise should be required to satisfy that promise at the time of filing of the application.
The biggest challenge the SCC appeared to have with the promise doctrine was that the promise could be found anywhere in the claims or the patent’s description, although the claims alone are traditionally analyzed for the other requirements of patentability and the description is only considered when there is ambiguity in the claims. The SCC concluded that there is no basis in the Act for looking to the description to satisfy utility, and doing so conflates two distinct requirements (utility and disclosure).
The SCC abolished the promise doctrine and replaced it with another, simpler test of utility that requires determination of:
The SCC noted that any degree of usefulness related to the purpose of the invention satisfies this requirement.
WHAT’S ALL THE FUSS ABOUT?
The only reference in the Act to utility is the reference to “useful” in the definition of “invention”. The promise doctrine appears to have gone far beyond this requirement. As the doctrine became entrenched, numerous patents for drugs were invalidated for an absence of utility despite the commercial success of the drugs.
The costs to the innovative pharmaceutical industry of dealing with the promise doctrine were significant. To illustrate, after two of Eli Lilly’s Canadian patents were invalidated by the promise doctrine, it initiated a C$500-million claim against the Government of Canada, alleging that the doctrine violated the intellectual property standards under the North American Free Trade Agreement (NAFTA). Although the NAFTA challenge failed, the value of challenging the promise doctrine demonstrates how significant the SCC decision on utility will be for patentees going forward.
ALEXANDRIA, Va., Jan. 26, 2017 /PRNewswire/ — The National Inventors Hall of Fame, in partnership with the United States Patent and Trademark Office (USPTO), is pleased to announce the 2017 class of Inductees, all of whom have contributed to society in meaningful ways through their groundbreaking, patented innovations.
For full biographies on each Inductee, visit: http://www.invent.org/honor/inductees/
Russ Krajec is the CEO of BlueIron, a patent finance company, and author ofInvesting In Patents, which explains the BlueIron investment model. Russ is an angel investor, registered patent attorney, the former COO of a venture-backed startup company, and an inventor with 30+ US patents/applications.
Year after year the patent laws become more complex. It seems with every decision from the Supreme Court and the Federal Circuit more detail is mandated for a patent application to be complete and for patent claims to have a fighting chance. These case law changes, as well as legislative and regulatory changes, are putting the patent system out of reach for startup companies.
The patent applications that must be filed require an enormous investment in time, money, and expertise – mostly by patent professionals who curate the inventions, write the patents, and nurture them through the examination process. To get high caliber, well researched, and well-written patents costs money – a lot of money unfortunately.
Quality is the main buzzword at the Patent Office, and increasingly so within the industry. Gone are the days that one could just get a patent and expect that it would be valuable enough to license or sell. Quality patents that cover quality technologies is the new business reality in the patent sector. But with the skyrocketing costs associated with obtaining the desired quality many startups resort to cost-saving strategies that most often only work to irreparably harm the changes of obtaining a worthwhile patent.
Filing a hastily drafted, woefully inadequate provisional patent application is a mistake, and one that can lead to a patent foundation being built on a hopelessly compromised base. The patent community was recently reminded of this fact when the Patent Trial and Appeal Board (PTAB) refused to recognize the priority of a provisional patent application filed to cover Juxtapid, a cholesterol medication. The PTAB found the provisional application defective because it did not teach the invention adequately and provided insufficient dosage information. This just proves that bad provisional applications are a very real problem even for pharmaceutical companies that should know better.
What are startups to do? There is never enough money to do everything a startup needs to do in order to succeed, so even the best, most well funded startups need to triage. As a patent attorney with over 15 years of experience, I know all too well this very real financial dilemma. Compounding this problem is the truth that most innovative startup companies are entering a marketplace where larger, well-financed corporations with giant patent portfolios dominate. Patents can be the great equalizer, but such a strategy requires high quality patents.
BlueIron’s non-dilutive financing for startups pays all of the patent costs, including filing fees and attorney’s fees, using a conventional commercial “lease-back” arrangement. This model has been gaining traction since its first release in the fall of 2014. After financing professional poker player Phil Gordon’s patent for his new software startup, Chatbox, BlueIron has made investments in startup companies in software, hardware, biotechnology, medical devices, financial services, and agriculture.
By financing the patents, we remove the cost barriers to getting strong, high-quality patents. This opens up the options to do a full due diligence workup, which most startups simply cannot afford. It also means the patents can be expedited and obtained more quickly. It also frees up critical capital for the startup to invest in business activities rather than paying for patents.
For expediting applications, when possible, we prefer the PCT-Patent Prosecution Highway, which often results in an issued patent within 12 months. With PCT-PPH, the costs of the patent are compressed into a 12 month window, rather than spreading them out over 3-5 years. If a patent application gets into the PPH the allowance rates are much higher, and in many cases over 95%. Given that an issued patent is far more valuable to a startup company than a mere pending patent application – especially one raising angel or venture capital – this strategy pays quick dividends, which benefits everyone involved.
The BlueIron model works because everyone has “skin in the game,” so to speak. We have every incentive to get high quality patents and to do so as reasonably quickly as possible. By having a patent portfolio that protects the startups technology additional investment becomes easier to attract, which makes much of the difficult work a startup will do much easier. By helping the innovative startup succeed we succeed. If the innovating startup company is not successful, the investment will only generate patents for products or services that never made it to the market, or which were not accepted once on the market. Patent assets covering technologies the market shunned have little, if any, value. On the other hand, if the startup company is successful the patents have real value – far more value than the cost of financing.
Through the BlueIron model I’ve attempted to create a new framework where both parties have the same goal: protect and grow a successful business. Our sole focus is to build investment-grade patents that have commercial value. By treating patents as “collateral,” our model rises or falls based on how strong the patents are – and how successful the innovative startup becomes.
If you are a startup company that is looking for someone to finance your patent activities please contact me. Candidly, we only invest in patents for operating companies, not for individual inventors for whom the invention is just a hobby. While we invest at a very early stage, the startup must have a financial commitment to bring a product or service to market for us to get involved.
If you are an angel investor or venture capital firm, we are actively seeking formal or information partnerships and relationships.