For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Monday, 29 August 2011

Letter from AmeriKat: 8,000,000, 3, 1970s, 1, $3,340, #24 - US IP News in Numbers


For international travellers coming from the U.S., you will usually find yourself in one of the many Hudson News stores doting our nation's airports pacing the magazine rack for a selection of entertaining flight-fillers. The AmeriKat's favorite staples that are crammed into her already overstuffed Coach carryall, are The Economist, US Weekly (so bad, its good), National Geographic, Psychology Today, Rolling Stone and, front-seat pocket favorites - Time and Newsweek. These are usually the first magazines the AmeriKat starts devouring even before take-off and by the time the plane is taxing to the runway, she has made it to her favorite page - the page with that week's news expressed in numbers. Sadly the AmeriKat is busily stranded in London so the joy of airplane literature have escaped her this summer, but in a tribute to her favorite travel reading she has taken a glossy page out of US news magazines and has put this week's US IP news in figures. (picture, left - the AmeriKat snuggling under her airplane reading)

When IP news is a f(x) of n.....


8,000,000 - The number of patents issued by the USPTO on 16 August 2011 when it granted a patent to Second Sight Medical Products for a product called Argus II - a visual prosthesis apparatus that enhances visual perception for people who have become blind due to outer retinal degeneration. Argus II uses electrical retina stimulation to produce the visual perception of patterns of light. The Argus II is starting its clinical trials in the US and has obtained marketing approval in Europe. President and CEO of Second Sight, Robert Greenberg, stated that "This patent protection and significant federal support for innovation have already played key roles in creating nearly 100 US jobs at our company. Once the Argus II has FDA approval in the United States, we expect to create hundreds of more jobs over the next several years..." IP innovation and protection = economic stimulus, is plainly the message from the USPTO.

75 years - the number of years that it took the USPTO to reach 1 million granted patents in August 1911 when it issued to Francis H. Holton of Akron, Ohio a patent for his improvement in vehicle tires to make them more durable and puncture resistant.

6 years - the number of years that it took the USPTO to go from 7 million patents granted to 8 million patents. The 7 millionth patent was issued to John P. O'Brien for a strong, biodegradable polysaccharide fibers he invented for use in textile applications.

1 - The number of Abercrombie & Fitch articles of clothing the AmeriKat owns - which is far less than the cast of Jersey Shore. IPKat readers may have caught a glance at last week's story that frat-boy favorite apparel retailer, Abercrombie & Fitch, was reported to have offered to pay Michael "The Situation" Sorrentino of MTV reality show Jersey Shore to never where its clothes on air (see A&F press release here) as the "association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans." Many are calling the press release a publicity stunt for a "slow day in August" right before the back-to-school buying begins. However, its interesting to note that a press release about an allegedly detrimental impact on brand reputation was created to increase just that - brand reputation....ahhh, the fickle world of brands!

$3,340 - The cost of the genetic test for breast cancer risk that was subject of Myriad Genetic's recent success in the US Court of Appeals for the Federal Circuit when the court upheld the company's patents on two human genes - BRCA1 and BRCA2 (picture, right - pink ribbon, (c) Science 2002). The sequencing of the genes tests for mutations that increase the risk of a woman getting breast and ovarian cancer. A recent New York Times article reports that despite its recent legal success some commentators are suggesting that the test has been surpassed by newer DNA sequencing techniques which are faster and cheaper. This, the article reports, may be a sign of trouble to come, notwithstanding that Myriad's main patents do not start expiring until 2014. However, Myriad has stated that the company has time to start adapting to the new technology before its patents expire and in the future will be relying more on trade secret protection than on patents. Myriad's CEO Peter D. Meldrum in January stated, in reply to a question about whether Myriad would begin enforcing their European patents, including for BCRA1 and BCRA2, against companies using the genes in tests, that "[i]f I had my druthers, I would not want to go into a new market in a heavy-handed fashion, trying to enforce patents." Instead, the company is reported to begin relying more on its "vastly superior information."

The patent system is premised on requiring public disclosure of inventions - you get to enjoy your monopoly, as long as the rest of us can see and build upon your scientific step for the betterment of society (as long as the use is non-infringing during the limited time you are enjoying your monopoly). Trade secrets, however, are all about keeping information out of the public domain for an indefinite time. Should information, such as the information Myriad has about which of the thousands of mutations in the two genes raise the risk of getting cancer, be kept out of the public domain? If companies with valuable medical information are relying on trade secrets rather than patents, this could have serious impact on the progress of science (Copyright Clause) and in this case, medical research. If this begins to be a trend, are we to blame failings in our patent systems and protections or the desire of companies to maintain a monopoly on proprietary information and technology for as long as possible? Or is this just the same question? Are there public policy arguments for demanding that such information be disclosed, and if so, how does that square with the Anglo-American philosophy of commoditizing property (and IP)for financial gain? Is it only right that a company should use whatever legal means it has to protect its investment and research, regardless of any public policy or ethical considerations? Similiar questions are posed by the New York Times article and by Dan Vorhaus in his blog the Genomics Law Report.

$353 million - the amount of money reported to have been generated by the breast cancer test which accounted for Myriad's $402 million revenue in the year ending June 2011.

3 - The number of grape growers that have successfully claimed that the US government can be joined to a patent invalidity claim. The three Californian grape growers have claimed that a California trade group, The California Table Grape Commission, licensed invalid patents from the US Department of Agriculture(USDA). The USDA owned three patents issued under the Plant Variety Protection Act for grapevines that produce table grapes - Sweet Scarlet, Scarlet Royal and Autumn King. The USDA licensed its rights in the three patents to the California Table Grape Commission, a California state agency. The Commission was established to promote the state's table-grape industry and is funded by a tax levied on each box of table grapes produced in California. The Commission sublicences the patents and under the licences is entitled to retain 60% of the royalties with the remaining 40% going to the USDA. The Commission authorized three nurseries to serve as the exclusive distributors of the patented varieties. The ultimate growers of the grapes have to sign a "Domestic Grower License Agreement" which requires the growers to pay a royalty, prohibits the growers from propagating the plants, and permits the Commission to order the destruction of the purchased plants if the Commission believes the growers are violating the license.

Three grape growers, who purchased the grapevines covered by the patents signed the licence agreement and paid the licensing fee. They then brought a claim for declaratory judgment challenging the patents for invalidity for lack of novelty and that the Sweet Scarlet (picture, left) patent is unenforceable because of alleged inequitable conduct during prosecution at the USPTO. The US Court of Appeals for the Federal Circuit issued a decision last Wednesday that the Administrative Procedures Act ("APA")enables the 3 grape growers to "pursue equitable relief against the USDA on its patent law claims." The 3-judge panel ruled that the USDA could be joined as a party to the claim because the licensing agreement between the USDA and the Commission did no transfer all the rights in the patents, as such the USDA was a necessary and proper party to the grape grower's patents claims. Judge William Bryson, giving the opinion of the Court, held that an amendment to section 702 of the APA "recognizes a right of judicial review for 'agency action'" in that it waives "sovereign immunity for actions seeking relief other than money damages against federal agencies, officers, or employees" - such as the equitable relief sought by the grape growers in their dedicatory judgment for patent invalidity. As such, the grape growers could join the USDA in their action. Allegedly invalid patents are also curse for the US government it seems....

#24 - The ranking given to Girl Talk's album, Feed the Animals, by Rolling Stone in 2008. Girl Talk, the one man band of Gregg Gillis, a former biomedical engineer turned musician, is known for weaving hundreds of samples of recorded music and sounds into frenetic tracks which he releases for free or a la Radiohead model. A recent article in the Huffington Post this week explains why Gillis uses this model when he releases his work under the Illegal Art label. Also this week, EMI won a partial victory in a copyright lawsuit against online music storage site MP3tunes who was found liable for contributory infringement when it failed to remove unauthorized songs from its website after being put on notice. District Judge William Pauley however refused to rule on whether MP3tunes employees were liable for copyright infringement in downloading 171 songs.

1970s - The decade when late sportscaster Myron Cope coined the term "The Terrible Towel" (watch the story here). The Terrible Towel, a yellow and black cloth which is swung about in the air by the Pittsburgh Steeler's (an American football team) fans is the subject of a trade mark infringement suit. The lawsuit brought by the Steelers and Allegheny Valley School (who owns the trade mark and is where Cope's autistic son lived) against Eugene Berry Enterprise alleges that that company filed a trade mark application in May for THE TERRIBLE TOWEL and has been selling shirts with the mark. Eugene Berry Enterprise has been asked to withdraw its application.

1 comment:

Gentoo said...

"Philosophy of commoditizing IP?"

Are we sure it's a philosophy? It's legal (obviously...) but isn't the history of all this (over here anyway) more rooted in exchanges of Royal favours for cash?

Any philosophy is surely the ex-post application of (ironically) Marxist narrative or possibly (less controversially) Hegel

An alternative view is that it is poor government to grant private monopoly rights for cash in the face of evidence in economic theory (through pure free market to welfare economics)* or research into sources of innovation. Yes, proper registration of IP gives rise to legal rights, let's leave it there.


*though I do understand the need to extend copyright retrospectively so that bereft sixties pop superstars rubbing along on their last £100 million or so, don't lose out, very philosophical

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