Killing inventions with timing

This will be a quick post.

It is funny how work flows in cycles. Sometimes all I'm doing is working on deals... Sometimes it's all dealing with various patent applications and responses to the patent office... Sometimes it is all meetings and networking...

This last week has been all about "technology evaluation" and it's led to an interesting observation.

What does "public disclosure" really mean?

Probably lots of folks understand the basics of the impact of publications on the ability to patent inventions.

"Once you publish your invention, you will not be able to patent your invention outside the United States where 'absolute novelty' is required, but you will still be able to file patent applications inside the U.S. during your one-year grace period."

We all know this mantra, but it really isn't very helpful because it treats inventions as if they are discrete units that are either disclosed or they are not disclosed. It isn't an binary event. Inventions are disclosed in small chunks.

I love analogies, so compare the innovation that the inventor wants to show off to a pretty woman getting read for a date. The saying above makes it as if her clothing choices for the evening are limited to (a) a burka and (b) naked. That's it. She is either clothed or she is not; the invention is either disclosed or it is not. Period.

In truth, it is much more complicated and the pretty woman has a whole range of pants, skirts of varying lengths, blouses, strapless dresses, etc. that all can be used to present herself the way she chooses. Just because you've seen a pretty woman's calves and shoulders doesn't mean that you've seen her naked, but that's kinda how the conventional wisdom about disclosing an invention works.

Importance of timing...

The trouble with public disclosures comes in how the patent office tends to view them and how you can get caught in a trap.

Imagine that you have the basic inkling of an idea. For example, you have a gene that you think is somehow involved in Alzheimer's Disease. You want to look at known mutations of the gene to see which are correlated with AD. No one has ever suggested that this gene is correlated with AD, much less the correlation of specific mutations. Back in the 1990's, this was a cake-walk because they patent office would let you issue a patent claim for detecting any mutation (even undiscovered mutations) in the gene to determine a predisposition to AD.

Now the patent office simply doesn't allow those claims. They want to know exactly what mutations you are looking at. But, you don't know that information right now....you just know that you want to study that gene (probably based on some in vitro studies you or others have done). And...you want to talk about your plans at a future meeting because you think it will help you to get funding to do the work.

Chances are you might be screwed by the timing!

You're going to talk about the basic idea of the gene and its relationship to AD. You simply don't have anywhere near enough data to file a patent application right now. You could file a provisional application but you better have the data in the next year, but that isn't likely in an academic environment.

The problem is that when you DO file a patent application in 3-4 years on the actual mutations and their relationship to AD, the patent office is going to beat you about the head and shoulders with your old presentation. They will say that your old presentation teaches the association of the gene with AD and that since the mutations you are studying are known mutations of the gene, that your entire invention is obvious. I personally find this preposterous..... Going back to the pretty lady example, it is like saying a woman who wears a burka too short such that he ankles are showing means that everyone knows what she looks like naked because pictures of naked women are well known on the internet.

And...all you can do about this is try to somehow convince the patent examiner that they are wrong. You might have some success, but when are starting the conversation at this point, you are likely to end up with some severely damaged patent claim such as a limitation of your patent to not AD, but some weird and specific sub-type of AD making your patent worthless.

What a shame...

My observation is how many innovations fail due to some kind of timing snafu. It isn't that the invention is bad or that the science is suspect or that the market isn't big enough.....it's purely because of the fact that the inventor had some legitimate reason to talk about the innovation during its embryonic stages.

Happens every day to academic inventions and it's very hard to communicate this hard truth to a frustrated inventor.

- Dean Stell