I think one of the best things that could be done is the use of more scientists by patent attorneys and the patent agencies. Particularly the patent agencies. I have seen a few patent attorneys using scientists as consultants to help with these kinds of issues.

If I remember correctly patent attorneys must have some technical background. I don't remember how much they are required to have. However, we all know that even a year of being out of touch with any science field can result in missing a lot of what has been advanced. It would seem that the best solution is approaching scientists that are still active in the field.

I don't know that the law allows for much to be done about the overly broad patents that were granted in the past. Our best hope seems to be not letting such things happen in the future.

Hi Jacob,

Thank you for taking the time to respond. This topic is a huge concern for people who are very productive an creative in their own fields. It is very frustrating to find patents with overly broad claims that have not been experimentally substantiated when a new patent supported by lots of data comes along. The new findings are different from the broad claims and yet the patents with broad claims take the prior art. It is exasperating to have to go around the broad patents to get the specific patent to get through.

Yes, most lawyers get scientists as their consultants but this does not help much in terms of solving the issues on broad patents that were granted at the early stages of a technology that was not well documented yet. What I am hoping is for patent lawyers and the patent office to recommend a way around these issues. Nowadays, the USPTO and patent offices worldwide have thousands of patent backlog in nanotechnology because of the broad patents issued in the past. There are too many overlaps that are not easily resolved and yet the new patents have more substance in them to show that those are novel and proven while the broad patents are not proven. I wonder if there is a possibility of making the rules more strict so that broad claims have to be experimentally substantiated before these are allowed.

Hi Zoraida,

I know what you mean. In graduate school I worked on the development of a new instrument. The way IP is currently handled is very frustrating. I agree with your solution to set the bar higher for technical patents. It would do a lot to help prevent overly broad patents from making it through the system.

The greater problem seems to be the ones that have already been granted. I doubt that lawyers will be helpful in getting around the problem. It doesn't affect their business since they are paid large fees to find ways around the broad patents. Also, they are well paid by their clients to write the patents as broadly as possible to protect the client. I'm afraid the agencies like the USPTO will simply be apathetic to the issue. They may not realize (or care about) the choke hold it is putting on bringing new innovations to market.

The problem will most likely require making it a political issue to get it attention. This may work but will probably result in more problems.

As an example of the problems with the USPTO. They granted a person a trademark on "Caution!". Is a common word with an exclamation point really worth a trademark? According to their own rules it shouldn't be, yet they granted it.

Hi Jacob,

Thank you for sharing your experiences in terms of the IP landscape. A lot more people need to protect their IP but it is, as you said very difficult and expensive to do that.

Yes, I have read about and heard about errors committed by the patent offices. One 50 kda protein was granted a patent and so many years later, a small 15 kda within the same protein was granted a patent to someone else. So, for a business to be able to use the smaller protein, it has to get license from both companies.

Dear All, I find this discussion very interesting. I am not a patent attorney but I had to read and analyse several patents in my life, so I just want to make few notes. I always felt that patents are part of the national defense system, i.e. the patent offices take into account the interests of their leading companies, especially if decision novelty is concerned. What is the "obligatory knowledge of the engineer"? What can be deduced from the prior art without an inventive step? So patents, similarly to GMP and others are part of the market defense system - that cannot be changed. But I'd like to make two, more technical notes. Fisrt is that - provided that the claims are not supported by the examples - you can go to the court and have the patent cancelled or at least limited. The second is that - if the previous patent speaks ver broadly about certain properties, methods, compounds, and you find something really new within that broad range, you may get a specific patent of narrower scope for your finding.

Hi Gyorgy,

That is very interesting and very good to know. There are a lot of broad patents now especially in the nanotechnology area. At the same time, there is lot of backlog. So, knowing that someone can go to court and have broad patents limited is good. However, as previously mentioned, this will bear some financial burden especially to smaller businesses.

It's again money:) As mentioned in another topic, you should have a specific business plan if you want to have something patented. For scientific glory it is not worth ... Good luck! Anyway, please consult a patent attorney about these issues as I have no personal experience, only heard about it.