In March 2006, there was renewed concern about the patent system, which was manifested not only in the discussion of NTP v. RIM (BlackBerry) case, which was settled for $ 612.5 million but also on the fate of the use of precautionary measures in cases of patent infringement, which will be reviewed by the Supreme Court in eBay v. MercExchange. The Wall Street Journal wrote that US patent law is “deterring research and penalizing innovation,” and that the patent system is “rapidly becoming detrimental to America’s competitiveness, not to mention basic justice.” . The idea that patents are not critical to innovation can also be found in the philosophy of some venture capitalists, who will tell you outright that “patents are not the reason we are investing.”

Although some people, such as Adam B. Jaffe and Josh Lerner, suggest that patent problems are of recent origin, with changes in the last 20 years that have led to a decrease in the quality of patents but to a strengthening of rights patent, empirical evidence because this is thin. Many of the problems we see now have been around for a long time.

Aspects of the history of the light bulb are discussed below. According to the VC point of view, JP Morgan invested in Edison, the man, before Edison’s key patent.
issued. To attract the attention of influencers, Edison installed the first commercial electric power plant near Wall Street, just as RIM (BlackBerry) has made an impact through the opulence of
Your clients. After a commercial beachhead was established, the patent wars began. Edison’s ultimate success in the patent wars was established on both offense and defense, and was largely
assisted by his high profile. It is suggested that certain legal problems faced by Thomas Edison in the 19th century will soon appear before stem cell workers in the 21st century. [Of various suggestions that Edison was troll-like in his behavior in not making product, one observes that Edison himself obtained the funds from investors to set up the first electric power plant, and then created the power plant. He made product. Whether he was actually the inventor of the light bulb is a different story.]

DID EDISON INVENT THE LIGHT BULB?

Although not widely debated, Edison’s famous US Patent No. 223,898 application, issued on January 27, 1880, was involved in interference with competing inventors Sawyer and
Man and Edison lost on the disputed point.

Next, Sawyer and Man’s successors challenged Edison’s patent. Edison’s basic claim read: An electric lamp to give light by incandescence, consisting of a high-strength carbon filament, manufactured as described, and secured to metal cables, as stated. The trial court noted that Edison “was the first to make a carbon out of materials and through a process that was specially designed to impart a high specific strength to it; the first to make a carbon in the special shape for the special purpose of imparting high total resistance and the first to combine a burner of this type with the necessary complements of the construction of the lamp to avoid its disintegration and give it a sufficiently long life “. The trial court also noted, something
Cryptically, “There are many adjudicated cases where it appears that the inventor built better than he thought; where a patent has been held for an invention whose full significance was not appreciated by the inventor when it was made. The Bell Telephone patent There were many doubts whether Mr. Bell had thought of the talking phone when he filed his patent application, but the court said: “It describes a device that was an articulated telephone, whether Bell knew it or not.” “Edison’s patent survived. One problem with the court’s analysis is that the clearly long life of Edison’s filaments arose from the use of
bamboo, which was not disclosed in Edison’s patent.

In a case that reached the Supreme Court, the relevant Sawyer and Man patent, asserted against Edison’s interests, did not survive. The first claim of US Patent No.
317,076 (related to patent 205,144) reads: An incandescent conductor for an electric lamp, of carbonized fibrous or textile material and in the shape of an arc or horseshoe, substantially like
stated above. The Supreme Court noted: “It is admitted that the lamp described in the Sawyer and Man patent is no longer in use, and was never a commercial success;
embody the principle of high strength with a small illumination surface. “Going to the breadth of the Sawyer / Man statement, the Supreme Court declared:” But if the woods in general were not fit for purpose, and yet the patent had discovered certain qualities, which gave it a peculiar suitability for such a purpose, it would not constitute an infringement for another to discover and use a different type of wood, which was found to contain similar or superior qualities. “The court further noted that Sawyer / Man” did a wide claim for each fibrous or textile material, when in fact an examination of more than six thousand vegetable crops showed that none of them possessed the peculiar qualities that qualified them for that purpose. Was everyone then prevented by this broad claim from doing more research? We think not. “

The court noted that Edison “found only about three species of bamboo suitable for its purpose.” After discussing the amount of work Edison did with the bamboo, the court asked: The question
It really is if the imperfectly successful experiments of Sawyer and Man, with charred paper and wood charcoal, granting all that is demanded of them, authorize them to subdue them.
honor the results of brilliant discoveries made by others. “The court raised the argument of” infringement if later, anticipation if earlier “:” if the patent were infringed by the use of any such material, it would be anticipated by proof of prior use of such material “.

Although the Supreme Court did not address the issue, Edison alleged at trial that Sawyer / Man had amended his application to suit Edison’s work: “There is no such invention.
was established in the original application, but was first filed more than four years after it was filed, and after Edison had used the same material and claimed by
him on a patent application. “The trial court agreed and said that” after Edison’s inventions on this subject had been published to the world, there was a complete change of basis on the part of Sawyer and Man, and that the application was amended to give it a completely different direction and purpose than it was in its original form … [Testimony] shows that the idea of ​​reclaiming carbons made from fibrous and textile materials was an afterthought and was not part of the purpose of the original application. “

Regarding the issue of authorship, the text of the court cases shows mistrust as to whether or not Edison was the inventor of the light bulb. In 1875, Henry Woodward and Matthew
Evans patented a light bulb, the rights of which were acquired by Edison. In 1878, Joseph Wilson Swan invented a light bulb whose lifespan was approximately 13.5 hours. Edison’s bulbs in 1880, derived from a filament derived from bamboo, lasted 1,200 hours.

The problems in the 1895 case are not unrelated to those in LizardTech v. Land Resource Mapping, 433 F.3d 1373; 2006 US Application LEXIS 137; 77 USPQ2D 1391 (CAFC 2006) and are not
unrelated to issues in the current discussion of alterations in continuous application practice.

[Endnote 13, which appears here in the text, states: 71 Fed. Reg. 48 (Jan. 3, 2006). Abuses of applicants while awaiting developments in similar or parallel technology caused by amending the pending application to cover developments. If the
amendments are covered by the disclosure, this practice is allowed. PIN/NIP, 304 F.3d 1235.]

MOTHER CELLS

The situation faced by the courts in the 1880s, trying to find out who made the step-out invention with the light bulb, will soon be faced by the courts of the 21st century, trying to find out who took the step. our invention in embryonic stem cells. Although there are currently numerous patent applications on somatic cell nuclear transfer [SCNT] In the various phases of embryonic stem cell generation, there are currently scope of invention and enablement issues, just as there were in the 19th century. Although many people now claim
large, perhaps with limited clearance and written description, the ultimate winner will be the person, who identifies the information to make the whole system happen and gets the patent
protection in this regard.

UPDATE “YOU JUST LOOK TWICE”

In the November 2005 issue of Intellectual Property Today, I presented some facts about the PTO’s FY 2004 continuing applications, and I noted that the USPTO is evaluating the possibility
limiting continuations, which crystallized in the Federal Register in January 2006. Two Chicago readers, Kevin Noonan and Paul Reinfelds, submitted data for fiscal year 2005 and noted, with the small number of “second” rolling applications, that the PTO’s proposal to limit continuous applications, even if made, would probably not solve the problem facing the PTO.

[Endnote 18 stated of the data for FY 2005: There were 63,000 continuing applications, which included 44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000 were second, or subsequent. Thus, 21,800 applications of
384,228, were second or subsequent, which is 5.7%. As for FY2004, RCEs were the single most abundant “continuing” form, 52,000 of 384,228 [13.5%]. All “continuous” forms combined
constituted 115,000 of 384,228 [30%]. The content of Note 18 was cited in comments made to the USPTO on the proposed regulation in the area of ​​continuous applications:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/ebert.pdf.
The comments were referring to my April 2006 article in Intellectual Property Today, which I was not aware of at the time of the comments, was not actually published by Intellectual Property Today. These comments to the USPTO objected to the proposed limitations on the second and subsequent rolling applications on the basis that, even if implemented, the proposed limitations would NOT solve the problem of backlog AND separately would adversely affect many reasonable uses of practice. continuous application. ]

For Carhart’s book, “Lost Triumph,” the publisher is Putnam, not Putman. Two other reviewers have discussed the novelty of the book, despite the fact that JEB Stuart’s theory about the possible possibility
The paper had been published years before Carhart’s book.

[After March 2006, the Supreme Court decided the case eBay v. MercExchange. Therein, the Supreme Court made clear that entities such as universities and individual inventors, who don’t make product, could satisfy the four-factor test and obtain permanent injunctions to bar infringement of their patents.]