Category Archives: patents

Landslide Article

I recently co-authored an article with Professor Brad Desnoyer and Janet Fries discussing superhero-related intellectual property topics, both real and fictional.  Last month the article was published in Landslide, the magazine of the ABA section of IP law, as the cover story!  You can read the article for free online. Thanks to Brad and Janet for their excellent work on the article and to David Postolski for putting everything together.

ABA Annual Meeting Panel Tomorrow

Just a reminder for anyone attending the ABA Annual Meeting in San Francisco this week: I will be presenting “IP and the Comic Book Superhero” with Brad Desnoyer and Janet Fries tomorrow, Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!

And Now a Shameless Plug

Pardon the slightly off-topic post (I promise we’ll be back with more superheroes and supervillains soon), but an article I co-wrote with F. Scott Kieff was just published in the Emory Law Journal: James E. Daily & F. Scott Kieff, Anything Under the Sun Made by Humans: Patent Law Doctrines as Endogenous Institutions for Commercializing Innovation, 62 Emory L.J. 967 (2013).  You can find the full article for free here.  Scott and I wrote the article as part of our work with the Stanford University Hoover Institution’s Project on Commercializing Innovation.  To give you an idea of what it’s about, here’s the abstract:

This Essay outlines a comparative institutional analysis among various doctrines in patent law to show how they can have different impacts on the way inventions are commercialized. It builds on a prior body of work about the positive role that property rights in patents can play in commercializing innovation to show how recent shifts in approaches to the particular legal doctrine known as patentable subject matter can be expected to have different effects on the commercialization of inventions than prior approaches. It concludes that, to the extent society wants to increase the overall rate of invention commercialization and increase overall competition as reflected in diversity in firm size among participants in the markets for commercializing innovation, society should consider reversing course on the law of patentable subject matter and return to an approach that is closer to the “anything under the sun made by man” view that was championed by the Supreme Court in the 1980s and by Congress through most of the second half of the twentieth century, updating only its gender biased language.

As you might guess, it’s a little denser reading than our usual material, but I thought some of our readers might be interested.

Law and the Multiverse Retcon #6: Genetiks and Human Gene Patents

This is the sixth post in our Law and the Multiverse Retcons series, in which we discuss changes in the law (or corrections to our analysis) that affect older posts.

Today I have a quick post about a recent Supreme Court case that was under consideration when I wrote this post about the graphic novel Genetiks.  As mentioned in the post, the Supreme Court had recently heard the case of  Association for Molecular Pathology v. Myriad Genetics, Inc., which was intended to answer the question “are human genes patentable?”  Since then the Court has handed down its decision, which many news outlets summarized as “no.”  The truth is a little more nuanced than that*, but in any event the Court’s decision doesn’t change the ultimate conclusion in my original post, which was that what the company in Genetiks was portrayed as doing would not be possible under US law.  If anything the Myriad decision has only cemented that.

Relatedly, I’ve gotten some questions from readers about the series Orphan Black, which apparently deals with some similar issues as Genetiks.  I’ve heard good things about the series and intend to review it at some point in the future.

* Tempted as I am to delve into the minutiae of patent law, since that’s my area of interest, I will limit myself to a brief(-ish) summary.

Essentially, the Court held that DNA molecules cannot be patented if they are the same as a DNA molecule (or part of one) that occurs naturally in the human body, even if the patent claims only isolated, purified DNA molecules, which do not occur naturally.  The Court based its decision on the fact that isolation and purification do not change the information content of the genetic sequence, which was the actual invention as far as it was concerned rather than the DNA molecule in a chemical sense.

However, the Court also held that cDNA molecules can be patented, even if the cDNA molecule is nothing more than an unpatentable DNA molecule run through a standard biotech process.  According to the Court, that process takes an unpatentable product of nature and makes it into a patentable manufacture or composition of matter in a way that isolation and purification do not.  This is evidently true even though the information content of the DNA molecule and its corresponding cDNA molecule are the same.  It is difficult to reconcile these results on their face.

It is worth noting that the Patent Act itself says nothing about products of nature.  The list of “inventions patentable” contains no exceptions at all, only an affirmative list.  The Court arrived at its conclusion by reading in / creating an exception that is not at all present in the statute but is instead derived only from prior Supreme Court cases.

The practical upshot of all this is that Myriad will lose its right to exclude others from performing clinical testing for the BRCA1 and BRCA2 mutations.  More broadly, single-gene testing is now anybody’s game.  But Myriad and other biotech companies will retain other, less-valuable patent rights associated with human genes.

That’s about all I can say without getting too soapboxy.  For more on this kind of thing, see my forthcoming paper, James E. Daily & F. Scott Kieff, Anything Under The Sun Made By Humans: Patent Law Doctrines As Endogenous Institutions For Commercializing Innovation, 62 Emory L.J. (forthcoming July 3, 2013).

ABA Annual Meeting

In other convention news, I will be presenting at the ABA Annual Meeting in San Francisco with Brad Desnoyer and Janet Fries.  Our panel on “IP and the Comic Book Superhero” will be Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!

Law and the Multiverse Online CLE Programs

For many attorneys it will soon be annual CLE reporting season.  If you need CLE credits, we may be able to help.  We have partnered with Thomson West in the past to produce four online, on-demand programs with CLE credit available in most states:

What Superheroes and Comic Books Can Teach Us About Constitutional Law

Real-Life Superheroes in the World of Criminal Law

Everyday Ethics from Superhero Attorneys

Kapow! What Superheroes and Comic Books Can Teach Us About Torts

For a 20% discount on any or all of these programs, use code KABLAM2013.

And if you missed the IP and the Comic Book Superhero program presented by the ABA IP Section, it is available for pre-order as an audio CD for delivery on May 17th.  It may be available as an on-demand program later, I’m not sure.

Finally, if you’ve already taken these courses or are looking for something different, keep an eye out for a new program (presented by Thomson West) to be announced soon.

Genetiks and Human Gene Patents

(This post was the subject of Retcon #6, which addressed the Supreme Court’s decision in the Association for Molecular Pathology v. Myriad case.)

No, that’s not a typo in the title.  I’m referring to Genetiks, the graphic novel from Archaia Entertainment.  The protagonist of the book works for a genetic research company (the titular Genetiks), which requires each of its employees to submit a symbolic cell to the company.  The protagonist’s cell is used in a human DNA sequencing project, reminiscent of Celera Genomics’s private competitor to the Human Genome Project.  Apparently it is the first of its kind in the fictional world of the book, and after the protagonist’s DNA is completely sequenced he is told that, because the company now owns his genetic sequence, it now effectively owns him and everything he will ever do or produce.

This immediately raises a host of questions.  Can an employer commercially exploit the genetic information of its employees without further compensation?  Does sequencing someone’s DNA mean that you own it, in some sense?  Does owning that DNA sequence confer any rights over the person?  And can DNA sequences be owned in the first place?

I. Commercial Exploitation

The answer to the first question is a pretty straightforward yes.  To begin with, people don’t have a property right in their own body parts.  Moore v. Regents of Univ. of Cal., 51 Cal.3d 120 (1990).  Once an employee gives up a cell to the employer, that employer can pretty well do what they want with it, including exploit it for commercial gain, and the employee is not entitled to a cut.  But what’s more, the employee almost certainly signed a contract indicating that the cell and any resulting intellectual property rights or income were being exchanged for employment with the company.  Similar contracts are signed all the time, whereby employees agree to assign rights in creative works or inventions to their employers in exchange for employment.

II. Gene Patents

Genetiks makes a pretty broad leap from “sequenced DNA” to “ownership.”  In reality, there’s a bit more to it than that.  There is no property right in a bare DNA sequence.  Such a sequence is simply a fact.  But if a sequence is observed to be new, useful, and nonobvious, then it may qualify as a patentable invention (NB: in the United States inventions are defined as both inventions and discoveries under 35 U.S.C. § 100(a)).  This might be the case if, for example, the sequence is the sequence for a particular gene, which is what so-called “gene patents” are about.  But that still requires applying for a patent; it’s not automatic the way copyright protection is.

III. The Scope of Gene Patents

What gene patents definitely don’t do, however, is confer any inherent rights over the person that the gene was originally sequenced from or any person that the gene is found in.  First, such patents typically claim isolated DNA molecules with a particular sequence, which don’t exist in human beings, even humans with the genes in question.  Second, it has long been Patent Office policy—now codified in the law—that no patent may claim an invention “directed to or encompassing a human organism.”  Third, even if all that failed, the 13th Amendment would almost certainly have something to say about it.

IV. Are Human Genes Patentable?

But all of this may be a moot point.  The Supreme Court is current considering that question (“are human genes patentable?”) in the case of Association for Molecular Pathology v. Myriad Genetics, Inc.  The oral arguments were heard earlier this month, and the case has the potential to upend the biotechnology sector in the United States.  I won’t try to read the oral argument tealeaves, but I will say that—in general—recent Supreme Court patent cases have not been especially favorable to inventors and patent owners.

V. Conclusion

Genetiks is a good read, even though it rests on an extremely shaky legal premise.  You pretty much have to assume that it takes place in an alternate universe with a very different legal system, despite its apparent similarity to our own world and overall realistic tone.

IP CLE Reminder

This is a reminder of the live 90 minute CLE program this Friday, “IP and the Comic Book Superhero.”  The program starts at 10am Pacific / 11 am Mountain / noon Central / 1pm Eastern. The program will cover many aspects of IP law, including patents, trademarks, copyrights, publicity rights, and their tax implications with examples and inspiration drawn from both fictional superheroes and real-world superhero-related IP.  We hope you can join us!

IP and the Comic Book Superhero CLE

On Friday, April 26th at 10am Pacific / 11 am Mountain / noon Central / 1pm Eastern I will be co-presenting a live 90 minute CLE program called “IP and the Comic Book Superhero“, sponsored by the ABA Section on Intellectual Property Young Lawyers Action Group, the ABA Young Lawyers Division, the ABA Forum on the Entertainment and Sports Industries, and the ABA Center for Professional Development.  My co-presenters are Brad Desnoyer, associate professor at the University of Missouri School of Law and previous guest post author here at Law and the Multiverse; Janet Fries, of counsel at Drinker Biddle & Reath LLP in DC; and Martha L. Voelz, a solo attorney in New York.  The moderator is David Postolski, a patent attorney at Day Pitney LLP in New Jersey.

The program will cover many aspects of IP law, including patents, trademarks, copyrights, publicity rights, and their tax implications with examples and inspiration drawn from both fictional superheroes and real-world superhero-related IP.  We hope you can join us!

Daredevil #17

Today’s post covers the latest issue of Daredevil, “Divide by Hero.”  Mark Waid’s run continues to be terrific, and this issue was particularly good.  Most of it is a flashback, so it’s a good issue to check out even if you haven’t been following the series (which you really should be).  A couple of legal issues stood out in this issue, including one involving my personal area of practice, patent law, which doesn’t come up terribly often in comics.  Minor spoilers ahead.

I. Invention Promotion Companies and Other Scams

Part of the flashback story involves a scientist, Elliot Pasko, who had been taken in by a company called Fortknight, which Foggy Nelson describes as “a predator corporation posing as a no-strings endowment fund.  They stake promising young inventors…then bury them with bogus ownership claims, patent infringement allegations, and worse whenever their ‘beneficiaries’ strike gold.”  As it turns out, there are quite a few scams aimed at inventors, though they usually don’t take this form.  Nonetheless, what Foggy describes could work.

The most common form of scam is the ‘invention promotion company.’  The United States Patent and Trademark Office has a useful page that details the common elements of these scams.  Basically they lure inventors with unwarranted promises of success at the Patent Office and easy money, when in reality they either deliver nothing or, at most, an often useless design patent that protects only the non-functional design of a thing.  The kinds of companies are a real problem, particularly for individual inventors, but Fortknight seems to be operating a different kind of scam.

I suspect that the way Fortknight’s scam would work is that the company would promise research funding, but hidden in the agreement would be an assignment of patent rights from the inventor to Fortknight.  Then, as soon as the research was far enough along to apply for a patent, Fortknight would pull the rug out from under the inventor, obtain a patent, and sue the inventor if he or she tried to continue their research elsewhere.  If an inventor assigns their rights, then they can be prevented from making, using, or selling their own invention just like anyone else.

As a side note (and as discussed in our review of Daredevil: Yellow), there’s no reason that Nelson & Murdock couldn’t take this case, since it involves patent litigation rather than practice before the United States Patent & Trademark Office.

II. Profit Sharing and Legal Ethics

Foggy took Pasko’s case under curious terms: “all the pro bono he required in exchange for ten percent of future profits.”  Now, pro bono doesn’t necessarily mean free; it can also mean working at a substantially reduced rate, but this isn’t pro bono work.  This is for-profit work (literally) that is effectively a kind of contingent fee, since if Pasko loses then there definitely won’t be any profits.  But is this kind of thing ethical?  The answer is a highly qualified yes.

In New York, “A lawyer may accept an equity interest in a client if the lawyer complies with the Rule of Professional Conduct governing business transactions with clients and the acceptance does not otherwise create a conflict for the lawyer or result in an excessive fee.”  NYSBA Opinion 913.  Entering into a business transaction with a client in this way brings with it several requirements, including that the transaction be fair, reasonable, and communicated in writing.  The client must also be advised of and be given a reasonable opportunity to seek independent legal advice regarding the transaction.  And the client must communicate his or her informed consent in writing.  Contingent fee arrangements likewise have their own rules, mostly to do with carefully explaining the nature of the fee agreement in writing.  See NY Rule 1.5(c).

Other jurisdictions have taken a similar approach.  See, e.g., LA County Bar Assoc. Formal Opinion No. 507; DC Bar Opinion 300.

I’ll admit that I was a bit surprised by this result.  I knew that lawyers could, under some circumstances, enter into business transactions with clients, and that lawyers could take contingent fees.  But I did not expect that the two could be ethically combined.  I would have thought that combining the risks involved would simply be too much and that ethics committees would opt for a bright line rule prohibiting the practice.

III. Conclusion

Daredevil doesn’t always get the law right, but it’s better than most comics on that score.  And despite my initial skepticism, it looks like it was right this time around as well.  Kudos to Mark Waid for combining accuracy and excellent storytelling.