Law and the Multiverse Retcon #1

This post is the first in an occasional series we’re calling Law and the Multiverse Retcons.  We’ll be using these posts to discuss changes in the law (or corrections to our analysis) that affect older posts.  Today we’re going to discuss the America Invents Act, which was recently passed by Congress and is expected to be signed into law tomorrow.  The AIA is a patent reform act, and among its many changes to US patent law are two that affect topics we’ve written about here on the blog.

I. Batman, Patents, and Absolute Novelty

Way back when the blog was first started we wrote about Batman and patents.  In that post we talked about two related issues.  First, how Batman could use gadgets based on Wayne Enterprises technologies without preventing Wayne Enterprises from filing, and second, how Wayne Enterprises could patent those technologies without revealing it to Batman’s enemies, who might replicate it or exploit its flaws.  In short, the answer was for Batman to use the technology no more than one year before Wayne Enterprises filed a patent application (thus avoiding the “on sale bar“) and for Bruce Wayne to use his Department of Defense connections to have the technology classified so that the Patent Office would not publish the application.

The America Invents Act changes the answer slightly.  With the AIA there is no longer a one year grace period during which an invention can be sold, offered for sale, used, or published before the inventor has to file for a patent. This means that the US joins Europe in requiring what is called “absolute novelty.”  The practical upshot for Batman is that he needs to make sure that Wayne Enterprises has filed for a patent before he uses a new gadget in public. Without the one year grace period even a single public use would be enough to destroy Wayne Enterprises’ patent rights.

(Edit: Technically the AIA preserves a grace period for disclosures made by the inventor or by someone who obtained the technology from the inventor.  The problem is that Batman is usually not the inventor of technologies ‘borrowed’ from Wayne Enterprises, and it would be difficult for Wayne Enterprises to prove that Batman got the technology from them.  With very few exceptions, nobody at Wayne Enterprises knows where Batman gets his gadgets, and those that do know (e.g. Lucius Fox in the movies) aren’t going to tell.)

II. Spider-Man and Gene Patents Redux

Another post that the AIA affects is this mailbag post on Spider-Man and gene patents.  In the 2002 movie Spider-Man, Peter Parker becomes Spider-Man after being bitten by a genetically engineered spider (as opposed to the traditional radioactive one).  In a post on the subject we discussed various reasons why Parker likely wouldn’t be liable for patent infringement if the genetically modified spider were covered by one or more gene patents.

The AIA makes this even simpler.  The Act flatly prohibits any patent that is “directed to or encompass[es] a human organism.”  In order for Parker to be liable the patent’s claims would have to encompass a human organism (namely Parker), and thus the patent would be invalid under the AIA.  We can pretty firmly shut the book on that one, then!

If there are any posts that you’d like us to revisit, let us know by emailing us at james@lawandthemultiverse.com and ryan@lawandthemultiverse.com.

19 responses to “Law and the Multiverse Retcon #1

  1. What does the AIA say regarding gene patents? I can’t claim “Peter Parker”, but can I claim Scott Summer’s X-Gene, seperate from the rest of him? (Or is that covered under “directed to”? What if I extract the gene from Scott, and offer it for implantation on it’s own?)

    • To add to that question the wording seems to have covered that with “directed to or encompass[es] a human organism.” but could you patent stuff FROM a human but not FOR a human – to put it another way if i take a blood sample and use it to create sharks with frickin laser beams for eyes is that covered? Suppose i am asking is the destination more important than the source?

      • Unfortunately the law does not define “human organism”, “directed to”, or “encompassing” anywhere, so nobody is sure exactly what it means. I suspect, however, that it’s more about the destination than the source, to use your terms. Any claim that a human being could infringe simply by existing would probably be invalid. Merely involving a human in the process, however, (e.g. being a source for genetic material or a target for a medical therapy) probably isn’t enough. But at this point nobody knows.

    • Interesting point, there – the courts may have to decide if mutants count as human (not sure if this has been resolved in the comics, legally, but it would seem an argument could be made either way).

  2. Under the new law, can a non-human naturally occurring genetic code be patented? Could a company identify naturally occurring spider genes that are used to make webbing and use a patent to block other companies from researching the genetic sequence?

    • The changes in the AIA are specifically about humans, but the Association for Molecular Pathology v. Myriad case is still percolating through the appellate courts and may yet invalidate (or validate) large categories of gene patents.

    • The new law doesn’t directly address this, and I believe the rules about what constitute patentable genetic sequences, with the exception below, remain unchanged.

      The short answer to your question, assuming I’m right about this, is that theoretically they can’t but practically they can by claiming a “refined” version of the sequence which technically doesn’t exist in nature but which practically speaking the natural sequence can’t be used or researched without creating.

      • I hasten to add that Mr. Daily is quite correct that the current rules are being extensively litigated and may change dramatically for reasons unrelated to this new statutory enactment. It’s not like we have some crystal-clear and stable setup in place. Current statutory law isn’t much clearer on the subject and it’s mostly influenced by PTO regs and court decisions.

        My answer is an enormous oversimplification, in case that wasn’t obvious. 🙂

  3. On the batman/Waynetech issue – is there some sort of way that waynetech could claim that batman was using a diffrent device (sure batman uses a magnetic hydro condenser but its totally diffrent to OUR magnetic hydro condenser and just you prove it aint?)

    • They could certainly try to argue that, but there would be two problems. One: would the judge or jury buy it? If there’s hard evidence (e.g. a magnetic hydro condenser left at the scene of a fight with the Joker), then that’s going to be a hard sell. Two: Batman’s publicly-used device would still be prior art against Wayne Enterprises’ own patent application. As a result, Wayne Enterprises might be left with a very weak patent that only claims the improvement over Batman’s version.

  4. The question regarding genetics, I’m fairly certain that only modified genetics can be patented. Otherwise, they aren’t a newly developed “invention”. X-Genes from Cyke can’t be patented, since they are’t the company/geneticist’s creation. What could be patented is the method of extraction or implantation into another organism of Cyclops’ genetics, unless the idea is that it to be applied only to humans which as pointed out is clearly prohibited by the Act.

    • I hope that is true. Under the old law, it wasn’t.

      • It kinda was. You could claim a refined version of genetic material which didn’t exist in nature. This of course was a ridiculous legal fiction since you have to refine genetic material to identify it, let alone use it for anything, and it still basically allowed patentees to lock out competitors from doing actual useful work with naturally occurring gene sequences.

        I’m not a biopatent expert, but I foresee HUGE GINORMOUS EXPENSIVE LITIGATION over this term. This is the entire text of the provision in question:
        “LIMITATION.—Notwithstanding any other provision of law,
        no patent may issue on a claim directed to or encompassing a
        human organism. ”

        WTF, Congress? GENES ARE FUNGIBLE. Suppose I invent a genetic sequence that allows a plant to resist some new herbicide. I could, theoretically, apply that gene to a human organism. (I mean, who wants Roundup poisoning? Not me!) Does that mean the sequence is unpatentable?

        Obviously that’s a ridiculous example, but the concept is sound. WTF does “directed to or encompassing a human organism” mean? I repeat, for the third time, WTF? As a patent attorney I welcome the Patent Attorney’s Full Employment Act of 2011, but as somebody who actually tries to advise clients and get business done, my head hurts.

      • I agree with MarcW’s comment on the law. It was poor drafting not to include some kind of definition of the key terms in that part of the law. At the very least it should have been discussed at length in one of the committee reports. At one extreme it could be as simple as “you can’t patent an entire genetically modified human organism the same way you can patent a genetically modified bacterium, plant, non-human animal, etc.” At the other extreme it could mean that any patent containing a claim that recites a human being is invalid. I suspect the courts will decide it’s closer to the former (which would basically be maintaining the status quo), but only time and litigation will tell.

  5. Actually, the AIA sort of preserves the one-year grace period. You have one year after disclosure to file, but only disclosures by the inventor can be removed, not third-party disclosures. So Wayne Enterprises would have the choice of either not using the devices in public, or revealing that they are being used in public by the inventor.

    • That’s an important detail but it doesn’t help in this case. We’re assuming that Batman needs to be able to use the newest technology, so public use is unavoidable, and Batman is generally not the inventor.

      • Yep, the only way out of this is for Wayne Enterprises to acknowledge Batman as an employee or agent. Otherwise it’s a public use or disclosure by a non-inventor. Absolutenoveltywhat?

  6. Pingback: Batman and Patents | Law and the Multiverse

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