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  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 10 November 2003

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Information Wants To Be Free

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On-Line Patent Glossary


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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Everyone "knows" we are living in the information age, that many of us are "knowledge workers", and that Intellectual Property is, typically, non-tangible - that is, knowledge or information.

Yet, in the sometimes arcane world of patents, information itself is not patentable and products produced with knowledge gained from a patented process are not protected either. If you are like Housey Pharmaceuticals, your patents might not provide you with as much protection as you thought. Read "Information Wants To Be Free" to learn more.

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  • Information Wants To Be Free

Many patentable products are invented by the clever combination of known elements. Sometimes, however, we need to learn more about the building blocks of our inventions in order to combine them properly. If we patent a test that gives us this information, is that information protected by our patent?

As a by-product of its drug development activities, Housey Pharmaceuticals (HPI) invented and patented a screening method for identifying substances that inhibit or activate a cell-produced protein, such identification then being used to guide the development of various drug products. Housey rightfully saw that the information generated by their patented process was valuable

Bayer used the HPI method OUTSIDE the United States to assist its development of a new pharmaceutical, which was sold IN the United States. HPI argued in court that Bayer was infringing in two ways. First, it claimed, Bayer infringed by selling a drug that was determined to be useful by the patented method, and, secondly, it claimed that the importation of the INFORMATION obtained by the patented method was infringing.

The Appeals Court really didn't think there was much of an issue. The statute says: "Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent..." (emphasis added by court)

The court looked first at Bayer's pharmaceutical - was this product MADE by the patented process? Clearly the answer was "no". Even without the patented process Bayer would have been able to make the drug. The process simply guided their development in the same way as a spectrum analyzer might be used for an electronic product.

Next the court looked at the question of importation of "information". The court asked, in effect, is the result of a test a "product" within the meaning of the patent statutes: is information "manufactured"? To answer this question the court had to dig into other provisions of the statute to see what congress intended to cover. They found several examples to support the contention that the statute is concerned exclusively with products that are physical goods. For example, one statutory exception rules out infringement where the allegedly infringing product is materially changed by subsequent processes. The court found it hard to think of information as being "materially changed" by a subsequent process.

Finally, the court said that reading the statute to cover processes other than manufacturing processes could lead to anomalous results. Importation of information in the abstract (here, the knowledge that a substance possesses a particular quality) cannot be easily controlled. A person possessing the allegedly infringing information could, under HPI's interpretation, possibly infringe by merely entering the country.

Thus, manufactured products, food, and people may be stopped at the border, but "information wants to be free" and, for now at least, may enter unfettered by US Patent restrictions.

Read this article on line.

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  • Tip of the Month
Understand what a patent can and cannot do for you:
  • Patents protect inventions, not ideas - Having a brilliant idea is not enough to get a patent, you must reduce your idea to practice before it becomes a patentable invention

  • Patents generally protect design results, not design rules - Unless you have a new method of performing product design you may have a problem protecting generalized design rules instead of specific design solutions.

  • Consider keeping Trade Secrets - If the result of your invention does not appear in your finished product in a form that can be reverse engineered, consider keeping your idea locked up as a trade secret.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.


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