Re: Patent Details. Please read!

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From:Abizar Lakdawalla <>
To:Tim Morken <>
Content-Type:text/plain; charset=us-ascii

Tim, thanks for one of the best write-ups on patents that I have ever seen!

Tim Morken wrote:

> 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 <>  Save Address Block Sender
>                 Subject: A patent primer
>                 To:
>                 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:
>           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.
>          This is an IBM site where one
>                 can search for patents and view the entire document (it tends to be slow
>                 though).
>          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:
> 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, wrote:
> >> >The recent discourse on the Histonet concerning Catalyzed Reporter
> >> Deposition technology, commercially known as Tyramide Signal ....>
> >>
> >>         Dear,
> >>
> >>         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
> >> www
> >
> >
> >
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