USPTO, prior art & IP protection for plants in the US; Day #4 of the NPI meeting

The NPI week continued with a visit to the USPTO.  The building in itself started the day on an impressive note, as did the security system! The USPTO offices were built in 2005 and include five (5) buildings named in honour of important actors of patent history. 

The learning experience started at the Global Intellectual Property Academy with a general overview of the USPTOs history and function. We learned numerous interesting facts on the American history in general and on the subject of patents, i.e. that intellectual property goes back to the American Constitution written by the founding fathers.

We then spent some time with Mary Hale, supervisor in the electronic information centre, who took us through the prior art search systems. This presentation triggered many questions on the issue of the USPTO employees’ access to information and databases. Suggestions were then made by the participants concerning national databases that should be incorporated in the internet tools available to employees. It was obvious that it was crucial to them to avoid having the information on national resources overlooked in the research of prior art.

After lunch Anne Marie Grünberg, Supervisory Patent Examiner, presented “IP protection for plants in the US.” She took us through the three (3) types of protection available in the United Sates for plants: 1) the Plant Patent; 2) the Plant Variety Protection, and; 3) the Utility Patent. She then explained how and why these different protections are used. Anne Marie’s presentation and dynamism also sparked many questions from the NPI group. Questions were centered on the details of; whether it is common to apply for both a patent and PVP? (answer: in her experience, it was more common to apply for a plant utility patent and PVP) what does PVP offer that a utility patent does not? (answer: there are different advantages to these protections, for example, the scope of a utility patent can be broader, while it is less expensive in the long run to have PVP).  There was also discussion around the limitations to all these modes of protection, i.e. the farmers’ and breeders ‘exemption which does not exist under the Patent Act, while it is important in the PVPA. Personally, I was surprised to discover that research exemptions are absent from the US Patent Act, which makes the patent scope even larger in the United States. 

post written by Gabrielle Gagne, National Partner, Canada

Just to add, Hanumanth Rao had the opportunity to raise with the USPTO about the work that ICRISAT & CAS-IP have been working on with the EPO to have CGIAR materials included in their prior art searches.  See the information on the following link for more details of this: http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art.  Minna Moezie, the Attorney-Advisor who led the day’s proceedings invited Hanumanth to contact her directly so they can consider the possibilities. — Kay Chapman

 

The devil is in the differing-detail for the European Patent Office

Despite that many say that patent law within the European Union is reasonably uniform, there are still strong differences which go to the root of the matter.  In a recent hearing, Ranger Services Ltd’s application (BL O/362/09) of 17 November 2009, the applicant challenged the guiding principle that the European Patent Office (EPO) had applied in evaluating the existing prior art.  The EPO took its decision on the basis that proof had to be “beyond reasonable doubt”.   The applicant claimed that in the UK a patent is a matter of civil law and thus decisions ought to be taken on “the balance of probabilities”, not on “proof beyond reasonable doubt” which applies only in criminal matters.

Regardless of the fact that the evidence was not strong enough even if the “balance of probabilities” had been applied, this is a great case which illustrates how much EU Member States need to do to ensure a uniformed and consistent patent-granting regime.

Post written by Francesca Re Manning, consultant to CAS-IP

Getting the word IN. Defensive publishing in the CGIAR

http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art/

Intellectual property management within the context of public research organisations is as much about ensuring access and it is about protecting rights.  Back in 2005 CAS-IP initiated a partnership between the European Patent Office (EPO) and ICRISAT, with a view to ensuring the publications produced by ICRISAT would be easily accessible to patent examiners, and thus qualify as “prior art” and therefore minimizing likelihood of becoming patented by 3rd parties.

Had this option been available to USPTO then perhaps a situation like the Enola bean case could have been avoided.

This forms part of a wider scheme of ‘defensive publication’ http://www.cas-ip.org/ip-agriculture/ip-primer/defensive-publication/

Hanumanth B. Rao, the IP Manager for ICRISAT said:

“The collaboration was initiated primarily to complement the Board approved policy in making ICRISAT’s IPRs  as prior art… Endorsing the CAS-IP novel approach, the CGIAR Genetic Resource Policy Committee(GRPC) has recommended in its meeting held in Rome on 23-25 April 2007 that Centers should be encouraged to incorporate their publications in databases used by patent examiners.  Accordingly, CIAT, the other CGIAR Center has signed a similar agreement with the EPO in Feb 2009.  ICRISAT would also like to initiate collaborations with Patent and PVP Offices in India based on these experiences.”

For more information about this please visit the lead link http://www.cas-ip.org/projects/cgiar-centre-publications-as-prior-art/

“Crowdsourcing” in the patent community, soliciting prior art & preparing defensive publications

http://www.managingip.com/Article/2068325/Open-source-community-launches-peer-to-patent-project.html

This item on ManagingIP talks about the recently launched “Linux Defenders” programme.  The latest peer-to-patent programme which aims to “increase patent quality for software inventions and reduce litigation.”  CEO of Open Invention Network, Keith Bergelt (one of founders of the programme) said the hope is to “benefit open source innovation by significantly reducing the number of poor quality patents that might otherwise be used by patent trolls or strategics”

See previous CAS blog item about a peer-to-patent programme.

The problem with the patent system; too many lawyers and not enough inventors?

http://www.dailyherald.com/story/?id=234949
In an article about the Peer-to-Patent programme“too many lawyers and not enough inventors” was one of the criticisms of the current US patent system (dailyherald.com story link above).  Unfortunately, and jokes aside, that’s not the only criticism.  An overwhelmed system, backlogs of applications as well as changes in pace of technology are some of the reasons contributing to an increase in poor quality patents.  And poor quality patents means more time spent in infringement litigation, which nobody wants (apart from the lawyers perhaps!).  The article outlines some of the opinions for and against the Peer-to-Patent programme, and some of the history and reasoning that lead to its launch.  It could spell an important change in the way patents are issued, and more importantly to the CGIAR, how prior art is identified.