Histonetters, here is a post from August 1998 concerning patents on tyramide. It details what a patent is all about and how it affects us in the lab. The question I have, is if you use a different method than that outlined in the patent, are you home free?
 

 Date: Fri, 21 Aug 1998 08:22:55 -0500
                From: LINDA MARGRAF MD <LMARGRAF@childmed.dallas.tx.us>  Save Address Block Sender
                Subject: A patent primer
                To: histonet@pathology.swmed.edu


                Dear Histonetters:

                Here's the information from Mark Bobrow regarding patents. This is in follow-up
                to the recent discussions on the tyramide amplification patent. Hope folks find
                this helpful.


                The patent system goes back over five hundred years where, in Britain, one
                could obtain a patent granted by the King.  In the U.S., the first patent
                commission was headed by George Washington, who personally signed every patent
                granted during his tenure.

                A patent is a right granted by the government.  Article I, Section 8 of the
                United States Constitution states,
                "The Congress shall have the power to promote the progress of science and
                useful arts, by securing for limited times to authors and inventors the
                exclusive right to their respective writings and discoveries."

                It is often misunderstood that the purpose of the patent system is, as stated
                in the Constitution, *to promote the progress of science and useful arts.*
                The concept is that by disclosing (and not keeping a secret) an invention,
                technological innovation will continue.  In the process of obtaining a patent,
                the inventor must disclose the invention and the best mode of practicing it
                (in other words, they can't hold anything back, or the patent will not be
                valid).

                In return for disclosing the invention, the government grants the patent
                holder the right to exclude others from making, using, or selling the
                invention.   Currently, these rights extend for 20 years from the filing date.
                After the term expires, everyone is free to make, use or sell the product or
                method which was disclosed in the patent

                The right to exclude others from practicing the invention applies to everyone,
                including academic investigators.  In terms of being able to use what is in
                the published literature, U.S. patents are published after they issue, in
                Europe the applications are published 18 months after filing.  So, even though
                patented products and methods are in the published literature, using them
                without proper authorization from the patent holder is not legal.

                Now, the reality of the situation is that if an academic researcher infringes
                a patent, the potential damages are so minor, that chances are nothing will
                happen.  But, if it is a pathology lab, which is using a patented method to
                report rerults, then this is like selling the invention for profit, and the
                damages could be significant (patent infringement damages are often multiples
                of the actual monetary damages plus legal fees).  

	  Another case where damages could be significant is an academic investigator
                who publishes a patented method and/or encourages others to infringe.  This is
                called contributory infringement.  The liability now falls for every case that
                cites the original "illegal" disclosure.  This is like finding a way to rob a
                bank, and then teaching others how to do so.  So for people who are making
                home made tyramides, when they publish the method, they are potentially liable
                for contributory infringement.  

                There have been some questions as to the extent of coverage of the tyramide
                amplification patents.  In the spirit of simplification, four basic concepts
                are claimed.  They are the enzyme substrates (e.g., tyramides), the product of
                the enzyme-substrate reaction, the method of catalyzed reporter deposition
                (e.g., detecting an analyte with a reporter enzyme using the deposition of a
                reporter), and assays using the method of catalyzed reporter deposition.  If
                you wish, you may look it up yourselves.  One of the patents is U.S. patent
                5,731,158, Catalyzed Reporter Deposition. As an added note, the readers should
                be reminded that patents are written in a style that is a hybrid of law and
                science (perhaps a suspension is more descriptive).

                Patent information is available on the internet.  Here is a list of some
                sites:

                http://www.uspto.gov/    This is the US Patent Office site.  You can search
                for patents here, and get some information about patents in general.  Later
                this year, or early next year, the full text and images of patents will be
                available.

                http://patent.womplex.ibm.com/searchhelp.html   This is an IBM site where one
                can search for patents and view the entire document (it tends to be slow
                though).

                http://www-sul.stanford.edu/depts/swain/patent/patgeninf.html   General patent
                information.




---
Tim Morken, B.A. EMT(MSA), HTL(ASCP)
MS-G32
Centers for Disease Control and Prevention
1600 Clifton Road
Atlanta, GA 30333

PH: 404-639-3964
FAX: 404-639-3043

other email: tim9@cdc.gov



On Mon, 22 May 2000 08:38:42   rueggp wrote:
>Rob,
>You are exactly right.  Once a method or technology has been published and sent to
>public domain cyber space, I don't see how it could be patented.  Of course it must be
>referenced if used.  I once looked into patenting a mixture of GMA which was developed
>by a Polymer Chemist I was working with, the patent lawers told us that if the mix or
>even a similar mix had ever been published we could not patent it.  My understanding
>was that you had to prove to the patent office that you invented this product, so my
>question to the company who claims to have a patent on Tyramide use, is did you not
>disclose all of the published material already out there on this substance?
>If they do have a patent I think this has been given out without proper
>consideration.  I think patents and FDA approvals are being given too easily these
>days.  We have FDA approval of  IHC methods for tests that are used in determining
>treatment for patients when these tests have little or no room for error in an
>enviroment not set up to operate without errors (histopathology).
>My opinion.
>Patsy Ruegg
>
>"R.Wadley" wrote:
>
>> At 12:14 05/18/2000 EDT, TSAGURU@aol.com wrote:
>> >The recent discourse on the Histonet concerning Catalyzed Reporter
>> Deposition technology, commercially known as Tyramide Signal ....>
>>
>>         Dear TSAGURU@aol.com,
>>
>>         I'm sorry I don't get your arguement.  Just because some company files a
>> patent means everybody else is forced to use that product? & is denied the
>> opportunity to modify/improve the idea or its purpose?  Why can't any
>> individual in any lab contribute to the body of knowledge of science
>> through the advancement of an old idea into a new one?  Lets make this
>> clear I'm saying information from a journal.  I'm not saying nip down to
>> the patent office & use the patent information.  Frankly anybody who can
>> make a method work from the information given in the Methods section of a
>> journal article deserves a medal, its the first part of a paper to be
>> minimised.
>>
>>         What is the point of publishing anything at all if the knowledge cannot be
>> used by the scientific community?  I thought the whole idea about
>> publishing was to let other scientists see what you were doing & if they
>> can, comment, improve, or disprove it.  You seem to be saying that this
>> whole process goes out the window if some commercial company claims a
>> patent.  As far as I am concerned if there is information published in a
>> journal, ie public knowledge, why can't I access & use this knowledge?  OK,
>> if I use that knowledge to create a product for my commercial benefit,
>> thats wrong.  But, if I use the idea, & acknowledge my sources, & improve
>> the idea or use the idea in a better way, whats the hassle, haven't I
>> expanded scientific knowledge?
>>
>>         My 2 cents worth
>>
>>         Regards
>>
>>         Rob W.
>> R. Wadley, B.App.Sc. M.L.S, Grad.Dip.Sc.MM
>> Laboratory Manager
>> Cellular Analysis Facility
>> School of Microbiology & Immunology
>> UNSW, New South Wales, Australia, 2052
>> Ph (BH)         +61 (2) 9385 3517
>> Ph (AH) +61 (2) 9564 0570
>> Fax     +61 (2) 9385 1591
>> Mobile  0411 874 470
>> E-mail  r.wadley@unsw.edu.au
>> www     http://www.micro.unsw.edu.au/caf.html
>
>
>


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