Patent News

(Legally Speaking) Night Before Christmas

I’ve seen this making the rounds and thought it was give some folks a holiday laugh….  If anyone knows the author, I’d love to give credit.
Whereas, on or about the night prior to Christmas, there did occur at a certain improved piece of real property (hereinafter, the “House” a general lack of stirring by all creatures therein, including, but not limited to, to wit, a mouse.
A variety of foot apparel, e.g. stocking, socks, etc., et al., had been temporarily affixed by and around the chimney in said House, with appropriate care, in the hope and/or belief that St. Nick a/k/a St. Nicholas a/k/a Santa Claus (hereinafter, “Claus”) would arrive at sometime thereafter.
The minor residents, i.e. the children, of the aforementioned House were located in or around their individual sleeping locations, or beds, and were nestled and engaged in nocturnal hallucinations, i.e. dreams, wherein visions of confectionery treats, including, but not limited to, candies, nuts and/or sugar plums (without and not meeting FDA labeling requirements) did dance, cavort and or otherwise appear in said dreams.
Whereupon the party of the first part, (sometimes hereinafter referred to as I (“I”)), being the joint owner or tenant-in-common in fee simple absolute of the House, with the party of the second part, (hereinafter “Mamma”), and said Mamma had retired for a sustained period of sleep (at such time, the parties of both parts were clad in various forms of headgear, e.g. kerchief and cap) for a long, seasonal (“winter”) nap.
Suddenly, and without prior notice or warning, there did occur upon the unimproved real property adjacent and appurtenant to said House, i.e., the lawn, a certain disruption of unknown nature, cause and/or circumstance (“clatter”). The party of the first part (“I”) did immediately arise and rush to a fenestration (“window”) in the House to investigate the cause of such disturbance. In the process, the party of the first part (“I”) mistakenly tore open the shutters and threw up the sash.
The party of the first part noticed the moon, in full phase, on the topmost part of the new-fallen snow. The party of the first part was informed and believed, and based upon such information and belief, alleged that said moon gave the lustre of mid-day, otherwise known as noon, to objects below. At that time, the party of the first part (“I”) did observe, with some degree of wonder and/or disbelief, a miniature sleigh (hereinafter the “Vehicle”) being pulled and/or drawn very rapidly through the air by approximately eight (8) reindeer. The driver of the Vehicle appeared to be and in fact was, the previously referenced Claus.
Said Claus was providing specific direction, instruction and guidance to the approximately eight (8) reindeer and specifically identified the animal co-conspirators by name: Dasher, Dancer, Prancer, Vixen, Comet, Cupid, Donner and Blitzen (hereinafter “the Deer”). (Upon information and belief, it is further asserted that an additional co-conspirator named “Rudolph” may have been involved.)
The party of the first part witnessed Claus, the Vehicle and the Deer intentionally and willfully trespass upon the top of the porches, walls and/or roofs of several residences located adjacent to and in the vicinity of the House, and noted that the Vehicle was heavily laden with packages, toys and other items of unknown origin or nature. Suddenly, without prior invitation or permission, either express or implied, the Vehicle arrived at the House, and Claus entered said House via the chimney.
Said Claus was clad in a red fur suit with white fur, which was partially covered with residue from the chimney, and he carried a large sack containing a portion of the aforementioned packages, toys, and other unknown items. He was smoking what appeared to be tobacco in a small pipe, and blowing circles that resembled wreaths in blatant violation of local ordinances and health regulations.
The party of the first part observed that Claus’s eyes would not have passed a field sobriety test in that they twinkled. Moreover, Claus’s facial expressions (i.e. “dimples”) appeared overly joyful. As further evidence of his state of being, Claus’s cheeks were very red, almost like roses, his nose was likewise red like a cherry. Claus’s mouth could have been said to look like a bow, and the extended hair growth under his chin could likewise be said to be as white as the snow.
Although Claus did not speak, he did laugh, which caused his rotund stomach area to move about in a manner similar to, but not quite like, a bowl full of jelly. Claus thereafter immediately began to fill the stocking of the minor children, which hung adjacent to the chimney, with toys and other small gifts. (Said items did not, however, constitute “gifts” to said minor pursuant to the applicable provisions of the U.S. Tax Code.)
Upon completion of such task, Claus touched the side of his nose and flew, rose and/or ascended up the chimney of the House to the roof where the Vehicle and Deer waited and/or served as “lookouts.” Claus immediately departed for an unknown destination.
However, prior to the departure of the Vehicle, Deer and Claus from said House, the party of the first part did hear Claus state and/or exclaim: “Merry Christmas to all and to all a good night!”
Or words to that effect.

JPMorgan 'Bitcoin Killer' Patent Not Allowed (Yet)

JPMorgan Has No ‘Bitcoin Killer’ Patent

US Patent Publication Number 2013/0317984 as recently received some attention because of it's similarity to the Bitcoin concept.

US Patent Publication Number 2013/0317984 as recently received some attention because of it’s similarity to the Bitcoin concept.

CNN recently published a video post about Bitcoin.  The video featured Ron Paul, who suggested that alternative currencies become more attractive during times when the dollar is under attack.  Bitcoin has gained some recent popularity as one such alternative currency.  Some have suggested that Bitcoin could present a“new paradigm for effectuating electronic payments,” ultimately rivaling present-day services like Western Union, etc.
Recent media attention for Bitcoin suggests that JPMorgan Chase has patented rival technology seeking to compete with Bitcoin.  This is not true for a few reasons.
First, JPMorgan does NOT have a patent. JPMorgan has a pending patent application with claims that are potentially relevant to Bitcoin.
Second, the patent application of interest is old news.  The application dates back over a decade, which precedes the advent of Bitcoin.  This strongly undermines the notion that JPMorgan Chase is chasing Bitcoin’s technology.
Nevertheless, the current scenario raises the interesting question as to whether JPMorgan’s application could potentially cover Bitcoin’s technology when that application issues into a patent.

No Patent for JPMorgan— Only a Patent Application.

The news media appears to confusion a patent with a patent application.
The accompanying CNN article noted that JPMorgan Chase “has patented a digital payment system that could rival Bitcoin.”   CNN’s article continues to explain that the digital payment system “includes digital wallets, the ability to transfer money to anyone and anonymity too.”
The Telegraph also reported on the story.  The Telegraph ran the following headline: “JPMorgan files patent for ‘bitcoin killer’ currency.”  The Telegraph further explained: “The largest bank in the US, JPMorgan, has filed a patent for an electronic currency with many similarities to bitcoin.”
JPMorgan Chase does not have a patent.  They only have a patent application.  This is an important distinction.  Anyone can file a patent application for a new technology.  That application matures into a patent only after it is examined by a patent examiner during a multi-year process called patent prosecution.  During patent prosecution, the applicant and the examiner argue about the claims and eventually agree on a set of claims that defines a patentable invention.
JP Morgan’s Patent Application is only at the very beginning stages of patent prosecution.  It is waiting to be examined at the United States Patent and Trademark Office.  The application of interest is US Patent Application Number 13/958,881. This is not an issued patent.  CNN, the Telegraph, and other news organizations are probably reporting on the patent application because it published on Nov 28, 2013.  Apparently that makes it a current event in the eyes of the media.

JPMorgan’s ‘Bitcoin Killer’ Patent Application is Old News.

Notably, the application is old news–more than a decade old.  The “Bitcoin killer” application is actually a continuation of an early patent application that was filed on Feb. 3, 2000.  The application claims priority back to provisional patent applications filed as early as May 3, 1999.  Accordingly, it is highly unlikely that JP Morgan filed this application with any sort of motivation to rival then-non-existant Bitcoin.  However, this chronology gives rise to some interesting questions:
Could Bitcoin’s technology infringe on JPMorgan’s patent claims (when they issue)?
As discussed above, JPMorgan’s claims have not issued.  (They need to be examined before they issue).  However, what if the issued claims cover Bitcoin’s technology?  That scenario could be a Bitcoin Killer.

JPMorgan’s Pending Claims

JPMorgan’s current patent application has three independent claims.  One example is reproduced below in blue.  The other claims (along with the description) can be accessed by following the link to JP Morgan’s Patent Application.
Example Claim:
155. A computer-implemented method of providing an anonymous payment from a mobile device to a payee device to enable an electronic payment between a payer and a payee without provision of an account number or name from the payer, the method comprising:
storing, in a computer memory at a host server, payer information and instructions; and
accessing the computer memory using a computer processor to retrieve the payer information and instructions and executing the instructions to perform steps including:
receiving at the host server, a bill payment message from the payee, the bill payment message including a transaction ID;
transmitting the transaction ID to the payer, the transaction ID permitting the payer to initiate transmission of a payment amount;
generating a payment authorization message from the payer, the payment authorization message including a payment amount to be tendered to the payee and the transaction ID, the transaction ID allowing identification of the payment, thereby enabling redemption of the payment amount after the payee receives the transaction ID; and
transferring the payment amount from an account associated with the payer to an account associated with the payee.

23andMe Patent for Gamete Donor Selection

Picture of the 23andMe product, from their webpage

Picture of the 23andMe product, from their webpage

23andMe, Inc.’s Patented “Designer Baby System.”

Yesterday Fox News ran the headline “Genomics firm 23andMe patents ‘designer baby’ system, promises not to use it.”  Many other media outlets have adopted the phrase “designer babies,” offering all sort of moral and ethical commentary on whether humankind should be playing God and tinkering with Genomics.  I will avoid all of these issues in this article because I don’t find them interesting.  This article will focus on 23andMe’s patent.  What did 23andMe patent?  What didn’t they patent?

23andMe’s U.S. Patent No. 8,543,339

On September 24, 2013, 23andmMe, Inc. was awarded a patent on their “Gamete Donor Selection on Genetic Calculations” application.  Their application (U.S. Patent App. No. 12/592,950 claiming priority to U.S. Provisional Patent App. No. 61/201,101, filed Dec. 5, 2008) issued as U.S. Patent No. 8,543,339 (“the ‘339 Patent”).  With the award of the patent, various news organizations have become interesting in 23andMe and it’s patents.  Below, I offer my thoughts as a chemical patent expert without any interest in the ethical and moral implications of this technology.

23andMe’s Patented Property

The claims in a patent define the property granted in the patent.  All of the articles about 23andMe’s patent discuss what the patent describes or “lays out” in the specification.  However, only the claims define the metes and bounds of 23andMe’s property.  The claims are found at the end of the patent document, just after the heading “What is claimed is:”

U.S. Patent No. 8,543,339 has 28 Claims

The ‘339 Patent has 28 claims.  These claims define three different inventions at various levels of generality.

  • Claim 1 defines “a system for gamete donor selection….”  Claims 2-10 and 22 define variations of that general invention by dependent claims.
  • Claim 11 defines “a method for gamete donor selection….”  Claims 12-20, and 23 define variations on that general invention by using dependent claims.
  • Claim 21 defines “a non-transitory computer program product for gamete donor selection….” Claims 24-28 define variations on that general invention by using dependent claims.

In short, the claims in 23andMe’s patent define systems, methods, and computer programs for gamete donor selection.  This should be kept firmly in mind before the company is accused of “owning” babies, genetic material, or the like.  It’s also interesting to note that the product they sell isn’t really a gamete donor selection product.

All Claims in 23andMe’s ‘339 Patent are Limited to Identifying a Preferred Donor from a Plurality of Donors

This is where it gets interesting.  All of the claims in 23andMe’s ‘339 patent are limited to systems, methods, and programs that include identifying a preferred donor among a plurality of donors based on 23andMe’s statistical analysis.  In short, without “identifying a preferred donor,” a system, method, or program would  apparently not infringe on the claims in the patent.
On October 1st, 2013, 23andMe published an article stating the company’s position on the patented technology.  In short, the company is completely dedicated to “enjoyable”genetic exploration,” and offering people with an “engaging way” to “better understand” genetics by introducing people to their own DNA.  The company disavows any intentions to actually pursue the invention described and claimed in the ‘339 patent.

23andMe Patent Covers the Controversial Subject Matter—But the company doesn’t practice that invention.

Notably, the service provided by 23andMe does not include “identifying a preferred donor.”  Accordingly the product that 23andMe sells on its website is not covered by the ‘339 patent.  I find this fascinating:  the company sells a really cool product that is not patented and explicitly avoids monetizing the intellectual property that it has patented.  This raises two questions for me: (1) Is 23andMe pursing patent coverage on the product that it is presently marketing and selling? and (2) what does it intend to do with the potentially valuable intellectual property that it has recently received?
First, the home testing product could be very valuable.  It does offer a fun and engaging way to learn about your own DNA.  Why not pursue claims and draft an application covering that product?  It has already demonstrated tremendous value in the marketplace.  Plus, all of this recent press should lead to a massive increase in demand.
Second, what is going to happen with the patented technology?  Despite issuing a press release stating that the company would never enter the designer baby market itself, the company did not say anything about licensing or selling the technology to another entity.  I suspect that the market for designing a healthy baby with desired physical attributes could be quite lucrative.  23andMe says that they “want to be very clear about our technology and intentions.”  In particular, aside from spending 6 years drafting and prosecuting a US Patent application, they have “never pursued” the designer baby market, “nor do [they] have any plans to do so….”
Do those statements include selling or licensing the technology to other companies?

U.S. Patent No. 6,630,507 to Methods of Using Marijuana

Does U.S. Patent No. 6,630,507 Give the Government Ownership of Marijuana?

No.  U.S. Patent No. 6,630,507 does not give the government ownership of the marijuana plant.  The claims in the patent define methods of using certain non-psychoactive cannabinoid compounds for treating a list of diseases caused by oxidative stress.

U.S. Patent No. 6,630,507 is limited to methods of using a certain class of isolated cannabinoid compounds—it does NOT claim the plant (or any compounds in the plant) per se.

Marijuana Technology and Marijuana Patents

I recently worked on a project having to do with a new marijuana technology.  During the project, I became interested in whether entrepreneurs had begun mining the marijuana patent landscape.  I asked Google.  When I searched for “marijuana patents,” the most popular result had to do with the U.S. Government (the “government”) owning marijuana by virtue of a U.S. Patent No. 6,630,507.  This notion appears to have many activist groups upset.  Those groups believe that the government is limiting their use of marijuana through patent enforcement.  Is this possible?
No.  The government does not “own marijuana” for several reasons.

The marijuana plant is not patentable because it has been in the public domain for centuries.

The marijuana plant is not patentable because it has been in the public domain for centuries.

Products of Nature are Not Patentable

First, marijuana is a natural product.  It has been around forever.  But under US patent law, only new things can be patented.  Since marijuana is not new, it cannot be patented.  Naturally occurring substances like marijuana are in the public domain.  I recently looked into a similar uprising about fennel, which is also in the public domain.  Things in the public domain belong to the public without any patent-related royalties or exclusivity.  From the standpoint of patent law, we all own marijuana communally.

U.S. Patent No. 6,630,507 Only Claims Methods of Use

Second, every claim in U.S. Patent No. 6,630,507 defines a method of use.  Not a compound.  Not a composition of matter.  The government does not own the patent rights to marijuana per se.  It owns the rights to methods of using certain cannabinoids for treating oxidative stress.  The government could prevent another entity for methodically using certain cannabinoids for the purpose of treating a disease caused by oxidative stress.
Although marijuana (the plant) is not patentable, various marijuana technologies can be patented.  In the case of U.S. Patent No. 6,630,507, the inventor patented a method of using certain (isolated) cannabinoids for a specific medical treatment.

The claimed methods are limited to treating certain diseases

According to U.S. Patent No. 6,630,507, the cannabinoids used in the claimed method are found to have particular application as neuroprotectants, for example in limiting neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases, such as Alzheimer’s disease, Parkinson’s disease and HIV dementia.
Notably, about 1 hour ago, the Huffington Post ran a story about an “Ohio Mother Moving to Colorado to Treat Daughter’s Epilepsy With Cannabidiol Oil.”  That particular use could arguably fall within the claims of the patent.  The isolated oil seems to be within the scope of the nonpsychoactive compounds identified in the patent.  Plus, treating epilepsy seems to be within the scope of the methods of treating ” neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases.”
On the one hand, folks will probably get bent out of shape if the government changes the mother a royalty on using the isolated oil to treat her daugter’s epilepsy.  On the other hand, the inventors of that patent made that treatment an option and arguably deserve a royalty for their contribution.

The U.S. Patent System does not offer a route to "own" marijuana because that plant is in the public domain

The U.S. Patent System does not offer a route to “own” marijuana because that plant is in the public domain

The Claimed Methods are Limited to Administering NonPsychoactive Cannabinoids.

The claimed methods use a class of cannabinoid compounds that avoid the “high” traditionally experienced by marijuana users.  In particular, “Nonpsychoactive cannabinoids, such as cannabidiol, are particularly advantageous to use because they avoid toxicity that is encountered with psychoactive cannabinoids at high doses useful in the method of the present invention.”
The patent further distinguishes the cannabiniods used in its methods from other cannabinoids that produce “undesired psychotropic side effects.”  The invention appears limited to methods of treating oxidative stress with a subset of such drugs are “substantially free of psychoactive or psychotoxic effects.”  As a back of the envelope test, a marijuana user should could determine that she is not infringing on the 6,630,507 patent any time she experiences “psychoactive” properties.
Going back to the example of the Ohio mom from the Huffington Post article: from the standpoint of patent law the government would seem to have a better case for preventing the girl from using isolated nonpsychoactive cannabidiol than using naturally occurring marijuana for the same purpose.  Part of the government’s invention seems to be separating the therapeutic (neuroprotective) properties from the unwanted psychoactive properties found in the natural product.

U.S. Patent No. 6,630,507 has 26 method claims.

Claim 1 is probably the broadest claim.   It recites:
A method of treating diseases caused by oxidative stress, comprising administering a therapeutically effective amount of a cannabinoid that has substantially no binding to the NMDA receptor to a subject who has a disease caused by oxidative stress.
This is a method of use claim.   The government does not own marijuana.  Rather, the government owns the rights to a method of using a particular group of cannabinoid molecules to treat “oxidative stress.”  Oxidative stress is defined in the specification.  The group of cannabinoid molecules is limited to those having “substantially no binding to the NMDA receptor.”

Stop Blaming Patent Law for Marijuana Restrictions

The fact that the government does not “own” marijuana by virtue of s U.S. Patent No. 6,630,507 does not preclude the government from prohibiting people from using marijuana.  The last time I checked, using marijuana is a federal crime under a variety of drug laws.  Nevertheless, those federal statutes have nothing to do with the patent laws.  Please, do not blame patent law for this one.

Entrepreneur Magazine on Shark Tank Patents

Entrepreneur Magazine Discusses Shark Tank's Emphasis on Patents

Entrepreneur Magazine Discusses Shark Tank’s Emphasis on Patents

Entrepreneur Discusses Shark Tank’s Emphasis on Patents

Entrepreneur Magazine recently published an article called 3 Lies You Heard on ‘Shark Tank’.  In that article, Entrepreneur noted that “The sharks always say, ‘You need a patent.'”  This is a fair point, the Sharks almost always ask about a startup’s patent portfolio.  See Shark Tank and Patents.  However, the author (Steven Key) contends that this overemphasizes the importance of patents for startup companies.  Mr. Kay opines:

Naturally, it’s in [the Sharks] best interest to keep competition at bay. But in reality, the majority of products and services on the market today don’t have patent protection. Most of the time, if you have a good idea, I’d argue that speed to market and great customer service are much more important than patent protection.

Patents Provide the Entrepreneur with a Competitive Advantage.

Here, Mr. Key recognizes that a patent “keep[s] competition at bay.”  Clearly, having a federally recognized exclusive right to sell your product provides a tremendous market advantage.  With a patent you have a monopoly.  Competing with another company over MSRP does not enter your business experience.  For an entrepreneur or startup company, having the ability to fend off competition seems like a good thing.
Mr. Key seems to discount the value of a monopoly because “the majority of products… don’t have patent protection.”  This logic suggests that a patent monopoly isn’t valuable simply because most companies do not have patents.  This seems completely wrong.  Scarce resources are more valuable—having a scarce resource would be an advantage.  If a company’s competitors do not have a patent portfolio, having patents would provide a competitive advantage to the patent holder. Score one for patents.

An Entrepreneur Should Patent the Inventive Technology.

A careful reading of Mr. Key’s argument suggests that an entrepreneur should file patent applications protecting their technology.  As discussed above, the patent holder receives a scarce and very powerful asset—the exclusive right to make, use, and sell the technology defined in the patent claims.  The only disadvantage stated in the article appears to be a significant advantage—most companies don’t have a patent. Score another for patents.
Lastly, Mr. Key suggests that patents are overvalued for the following reason:

If someone wants to try to rip your idea off, they will. But if you’ve established a powerful brand and supported it with outstanding customer service, they’re going to have a much more difficult time succeeding.”

Again, this point supports the conclusion that entrepreneurs should protect their ideas by filing a patent application.  Mr. Key states that “if someone wants to try to rip your idea off, they will.”  When “ripped off,” the patent holder has recourse.  The patent holder can seek royalties from the “someone” who rips them off.  Without a patent, the ripped off company has no recourse.  Having a powerful brand or outstanding customer service would not provide a legal right to shut down your competitor’s business.  Only the patent system provides this exclusive right.  Score another for patents.

The Sharks like patents because patents are valuable.

As Mr. Key points out, “The sharks always say, ‘You need a patent.'”  The Sharks most likely pay so much attention to patents because those patents are very important.  Having a patent changes the company’s entire business by providing the right to exclude competitors from selling the product falling within the patent’s claims.  The Sharks recognize how important patents are… so they ask about patents.