TechRoadmap Directions
Intellectual Property Issues of Interest to High Tech Companies
Vol 2 Issue 8 September 2002

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University discoveries and industrial Inventions

Discoveries or Inventions

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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Welcome!!
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.

Engineers seem to fall into two general groups - those who believe that anything they do is "obvious", and not worth patenting and those who believe that everything they discover is a patentable invention. Learning how to find the middle ground is critical to your company's success. This month we learn the difference between an invention and a discovery when an inventor tries to patent broccoli sprouts as a "food product". Read "Discoveries or Inventions" to learn why discovering an inherent (beneficial) property of a product or material is not patentable.

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  • University discoveries and industrial Inventions
  • In an academic environment knowledge, truth, and openness are considered goals worth seeking. The researchers at Johns Hopkins School of Medicine probably were well pleased with their discovery of the best cruciferous sprouts for preventing cancer. Indeed, their work was subsidized by a Government grant. In an industrial setting, however, researchers are directed toward inventions, not discoveries. Their salaries are paid from income the company derives from having a product with a competitive advantage in the market place. Stuck somewhere between the two are the university licensing offices. They must strike a balance between the university as an academic institution and the University as a corporation. To help research faculty convert discovery into invention, licensing offices should do more than make a connection between the researcher and the attorney; the offices should provide on-going help differentiate what was discovered and what was invented.

  • Discoveries or Inventions
  • One of the basic tenets of patenting is that you get rewarded by the government (with a 20 year monopoly) for teaching society about a new product or process. "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter...may obtain a patent therefor..." But there are several meanings for "discover"; Columbus discovered America, Fleming discovered penicillin, and someone discovered that copper, tin, and zinc make bronze. Of these three discoverers, only that unknown metallurgist would be able to get a patent. To learn how researchers at Johns Hopkins discovered that you cannot patent heretofore unknown properties of something that exists naturally, even though you discovered them,...Read on...

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  • Tip of the Month
  • Understand the difference between an invention and a discovery, at least in a patent sense:
    • Invention - Invention almost always involves putting at least two things together to make something new (or the method for making something new). You don't discover bronze, you invent it.
    • Discovery - Literally taking the cover off, most discoveries are uncovering knowledge about an inherent property of nature. You don't discover bronze, you invent it. After you invent bronze, you discover its properties.
    • Patents - Protect inventions, not discoveries (as defined above). Learn the difference between the two and, perhaps, keep your discoveries as trade secrets.
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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
  • The following link should take you to the web based version of Directions, where you will find the on-line Patent Glossary.

    Industry's Best Glossary
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    email us :: visit our site

    phone: 617-243-0007

  • Discoveries or Inventions - continued
    • Perhaps after President Bush (the elder) expressed his dislike of broccoli - which we all know is good for us - researchers at Johns Hopkins University School of Medicine discovered that broccoli sprouts were even better for you. Realizing that people like the President might be willing to eat sprouts instead of the mature plant, JHU filed for and received three patents relating to "A method of preparing a food product rich in glucosinolates wherein cruciferous seeds, with the exception of cabbage, cress, mustard and radish seeds, are germinated, and sprouts are harvested prior to the 2-leaf stage, to form a food product containing a plurality of sprouts". The patents were licensed to Brassica Protection Products (BPP) with the expectation of marketing a true health food. BPP and JHU then brought infringement suits against five other sprout producers (Sunrise et al).

      Sunrise defended itself successfully by having the JHU patents declared invalid, being anticipation by the prior art, and BPP appealed. To be invalid by anticipation a patent claim must have all its limitations previously disclosed. BPP claimed that the prior art, while describing growing sprouts for food, did so somewhat indiscriminately; that is, the prior art did not teach that part of the "method" was to select seeds that produce sprouts "rich in glucosinolates" or "high Phase 2 enzyme-inducing potential".

      According to BPP, the prior art merely discussed growing and eating sprouts without mention of any glucosinolates or Phase 2 enzyme-inducing potential, and without specifying that particular sprouts having these beneficial characteristics should be assembled into a "food product." Moreover, BPP argued, the prior art does not inherently disclose these limitations because at most someone following the prior art would only have a chance of ending up with the food product; the "fact that one following the prior art might have selected seeds meeting the limitations of the claims is not sufficient to establish inherent anticipation." [emphasis added]

      The Appeals Court rejected this line of reasoning stating, "It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates." and, "Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art."

      The bottom line for BPP is that they do not claim to have invented a new kind of sprout, or a new way of growing or harvesting sprouts. Rather, JHU simply recognized ("discovered") that some sprouts are rich in glucosinolates and high in Phase 2 enzyme-inducing activity while other sprouts are not. According to Brassica, their patents should be valid because the prior art fails to meet the step of "identifying" which cultivars should be sprouted. However, the court said, "it is unnecessary for purposes of anticipation for the persons sprouting these particular cultivars to have realized that they were sprouting something rich in glucosinolates and high in Phase 2 enzyme-inducing potential." "The prior art indisputably includes growing, harvesting and eating particular sprouts which Brassica has recognized as being rich in glucosinolates and high in Phase 2 enzyme-inducing potential. But the glucosinolate content and Phase 2 enzyme-inducing potential of these sprouts are inherent properties of the sprouts put there by nature, not by Brassica."

      Brassica simply had not claimed anything that is new and its claims were therefore found invalid.



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      Nothing in the preceding article should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.