The Interface Between Physics and Patents: Theories, Facts and Frictions
Francis H. Lewis
[This essay is a drastically abridged version of a longer paper. The reader is invited to contact the author for the longer, and hopefully more coherent and readable, version. This article is copyrighted, 1993.]
When one mixes one or more lawyers with a roomful of scientists, a spontaneous exothermic oratorical reaction nearly always occurs (especially when catalyzed with alcohol), producing much rhetoric beyond the usual lawyer jokes. What makes these discussions so fascinating is that both species use the same words, words like proof, evidence, laws, and experts, but with entirely different meanings. For example, "truth" might seem to be a simple notion to a person of ecclesiastical outlook: Truth is revealed by the Almighty through divine inspiration, sometimes with the aid of God's Church. To a scientist, however, truth is discovered by observation and analysis, reinforced by corroboration by other scientists, and abstracted from emotion and other non-observational forces. Lawyers think of "truth" as something hammered out in the crucible of zealous advocacy before an impartial adjudicator. Clearly these are three different concepts riding on the same term.
These differences in language are not merely semantic, but are born of differences in attitude and philosophy. For example, lawyers often define themselves as people who "think like lawyers." To a lawyer, this is perfectly understandable. To a scientist it is an illogical tautology.
This difference in attitude toward logic is one factor that instills confusion and mistrust in scientists who encounter the legal system. Scientists use logic as a tool to arrive at new findings. Logic in the legal system is rather a means for organizing and systematizing already-found results. To quote one commentator: "The law, of course, never succeeds in becoming a completely deductive system. It does not even succeed in becoming completely consistent. But the effort to assume the form of a deductive system underlies all constructive legal scholarship" (1).
Another example of philosophical differences is attitudes toward problem-solving. Scientists (2) seek to answer questions about the world. While the questions asked are ever-changing and occasionally ambiguous, the answers are enduring and specific. Through rigorous use of logic, the answers can be organized to yield "laws of nature."
Lawyers solve problems too, but from a completely different point of view. Lawyers think of "laws" as ever-changing and ambiguous creations conjured up by legislatures and courts. The focus is rather on the questions, which endure over the years, immune to politics and social change. Basic terms such as "due process of law," or "jurisdiction," really denote questions that always arise in addressing legal problems: What is fair? What are the limits of a tribunal's power?
Keeping in mind these differences, we turn to the topic of this essay--the interface between physics and patents. Why would physicists want to know anything about patents? Answer: because the patent system is the mechanism provided in our legal structure, and those of most other developed nations, for rewarding researchers for their labors. Physicists may well wish to know what these rewards are and how to reap them.
New developments in patent laws
In years past, patents have been held in low esteem by many researchers. The commonly held view, supported by statistics, was that most litigated patents (about 80%) were held invalid by the courts. The usual perception has been that patents are expensive to obtain (since it often means hiring a lawyer), difficult and even more expensive to enforce (since it means hiring another lawyer to go to court), and therefore simply not worth the time, effort, and expense.
The situation has changed drastically over the past decade. Patents are now perceived to be more valuable to their owners. Ten years ago the Court of Appeals for the Federal Circuit was created and given exclusive authority to decide all patent appeals. Furthermore, there continue to be major improvements in the patent laws themselves. We are seeing a definite trend toward vigorous enforcement of patent rights, and far fewer holdings of invalidity on microscopic technicalities. The result is that inventors, academic institutions and research organizations are much more aggressive about obtaining patents on new technologies.
This pro-inventor philosophy is partly the product of the American ethos. The lone inventor slaving away in the laboratory, who shouts "Eureka!" after years of selfless labor and sacrifice, is a kind of American folk hero. The Inventor's Hall of Fame in the US Patent and Trademark Office is lined with the icons of Edison, Marconi, de Forest, etc.
Recently the media have published several stories of inventors who have filed patent applications which have meandered through the Patent and Trademark Office (PTO) for a number of years, while large corporations have invested in similar technologies and developed and marketed products based on these innovations. When such a patent is finally issued, the inventor is then in a position to threaten the company with a patent infringement suit, and to be handsomely rewarded either in the form of royalties or in damages awarded by the court. This phenomenon has become so common that these patents are known as "submarine patents."
So to the physicist who is accustomed to a life of peonage, toiling like an indentured servant while his or her masters profit from the fruits of his or her labors, we bring good tidings. We have a patent system that works! In other words, scientists and engineers can receive major money for quality research.
There is a second piece of good news. Patent lawyers are not like "real lawyers." The suits and brief cases are part of a disguise. You can talk to patent lawyers about calibrating a detector or diagonalizing a matrix without getting the glazed look that such topics create at Sierra Club cell meetings. You can communicate with them as if they were normal people.
This means that patent lawyers are much easier to deal with than those other lawyers. Even though they have wing-tip shoes, blow-dried hair, and offices in bank buildings, they secretly yearn for acceptance. Treat them kindly. When you are introduced to them, don't just throw your preprints at them and abandon them to fend for themselves. Take them to your lab and show them the raw data, let them twiddle some knobs, invite them to your in-group coffee sessions. Let them get excited over your scoop. In fact, some patent attorneys get so enthusiastic that they become co-inventors.
Problem areas in PTO practice
Patent examiners are modern day heroes of a unique sort. The patent examining corps is a linchpin of the whole system. Every working day the patent examiner is called upon to make evaluations and decisions at the interface between law and technology, and to cope with the conflicts in philosophy that we have considered above. Patent examiners regularly perform literature searches on a mind-boggling database.
When new technologies are created, the patent searches for the first applications are difficult because the classification of the prior art does not yet have the guidelines that facilitate searches on more mature technologies. Often the only relevant literature is whatever has been published in the research journals, and these are not noted for their readability and searchability from the patent application standpoint.
Recent advances in technology have highlighted this issue. Some of the earlier patents on high temperature superconductors included citation of references considered by the examiner that some researchers might regard as unusual. Computer software was generally thought to be unpatentable until a few years ago after some significant court decisions. As a result, it is often difficult to perform a patent search for software patent applications because there is a very large amount of prior art that is not not patented, and thus not organized to facilitate these searches.
The PTO is constantly striving to keep examiners abreast of new technologies, and actively solicits the assistance of outside institutions and individuals. The Software Patent Institute has been formed to organize computer software literature to facilitate patent searches. The PTO provides educational programs for examiners in new technologies as they develop.
The 16 March 1993 issue of the Official Gazette of the PTO announced an invitation to individuals and organizations to present technical seminars at the offices of the PTO in Arlington, Virginia, as part of the Examiner Education Program. The announcement states that the PTO is particularly interested in having seminars presented in the following areas: advanced computer architecture, heat resistant materials, artificial intelligence, neural networks, fuzzy logic biotechnology, imaging technologies and computer graphics, medical devices and diagnostics, semiconductors, superconductors, high-density data storage, high-performance computing optoelectronics, sensor technology, computer communications networks, massively parallel processing systems (mpp), reduced instruction set (risc) computers, database management systems, audio processing systems, object oriented programming, trends in software development compilers, integrated dissimilar computer systems, recent developments in computer emulation and simulation, agrochemicals, polymer technologies, pharmaceuticals, liquid crystals, nanostructured matter, membrane technology, high definition TV, telecommunications, conductive compositions.
These categories abound in basic physical phenomena. The PTO is asking for the assistance of the scientific research community, including physicists, in maintaining technical integrity.
Cold fusion: a case study
A few years ago the media were filled with reports about cold fusion. Because the commentary also included a substantial amount of patent lawyer-bashing, this story provides a good illustration of the clash in values between the scientific and legal communities.
In his book Too Hot to Handle: The Race for Cold Fusion , Dr. Frank Close describes the decision of the University of Utah to delay the submission of research results to scientific journals: "Getting in first with the patent application was what the university authorities regarded as the top priority" (p. 100). Describing the entire episode, Dr. Close comments: "The scientists at the center of the action became entrapped; patent attorneys and eventually legal issues seemed to play a central role" (324). Quoting Professor Martin Fleischmann: "The key is that we had written a number of patents by that stage and the view of the university was that we should announce this by a press conference. It was really the patents that were driving this" (329).
These criticisms of the role of the patent attorneys do not take into account the priorities that our legal system imposes on the exploitation of technological development. In the scientific community, peer review and independent verification of research results play an important part in maintaining the integrity of scientific discoveries. Scientific attitudes place a high value on a free exchange of ideas to foster research quality.
However, if research results are to be commercially exploited, the inventor or developer must call upon the patent system, with its different values. The patent laws of most countries, including the US, impose strict deadlines within which a patent application must be filed. If an invention is disclosed to others before the application is filed, certain patent rights may be lost. The loss of such rights can mean that the fruits of some discoveries may never be harnessed for useful purposes. If nobody can acquire patent rights in a new technology, it may be simply economically unfeasible to invest in this technology. In other words, there are strong pressures to encourage early filing of applications, before the research results have been independently verified.
Does this mean that the patent system totally disregards scientific integrity? In fact, the patent statutes provide that in order to obtain a patent, the invention must be "useful;" it must actually work as described in the patent. Furthermore, the patent statutes were amended in 1980 to provide for a reexamination procedure in the PTO, which is a kind of peer review of issued patents. Under this procedure, an issued patent can be attacked by anybody on grounds that it describes an invention that does not satisfy the usefulness criterion, and reexamined in the PTO.
But the real answer to this question goes back to the contrast in attitudes between the legal and scientific communities. Twenty years ago, who would have guessed that a certain type of material composed of yttrium, barium, copper and oxygen atoms arranged in a specific layered structure would have superconducting properties at high temperatures? In the scientific world, the rewards for such a discovery go to the researcher whose results are first verified by the independent investigations and confirmations of others. The legal system, however, gives priority to the researcher who carries out his investigations without telling anyone else, to the point where the discovery is "reduced to practice," and then files his patent application before disclosing his results to others. These rules are very strict, and they are absolutely necessary to allow the equitable allocation of legal rights in new technology.
Therefore, when a physicist comes rushing into my office, flushed with excitement, and announces that when he puts two electrodes into a beaker of heavy water and connects them to a battery he measures more energy emitted than absorbed, that at the same time his neutron counters and gamma detectors start clicking, and that his lab assistant noticed stray tritium atoms, my reaction will depend on whether I am thinking like a scientist or an attorney. If I am wearing my scientist's hat, I will first have to regain my self-control and stop rolling on the floor with laughter. Then I will tell my colleague to go back to the lab, recalibrate the detectors, add more shielding, and get the lab assistant's eyes examined. Next I will remind him of at least five textbooks that explain in impeccably logical detail why this phenomenon can't occur. Finally I will call his family and put the psychiatric paramedics on red alert.
On the other hand, if I am his patent attorney (3), I will first advise my wild-eyed physicist to tell this to absolutely no one until I instruct otherwise. Next I will cross-examine him as to what exactly he has measured, and force him to write down a complete account of what happened in the lab. Then we will draft a patent application, which he will read and sign after I have warned him that any falsehoods can lead to federal felony charges against him. Only after the application has been filed will I let him talk to the press and anybody else about his results. The point is that when a person swears under oath that he has observed this phenomenon of energy generation, that in itself is "proof" in the legal sense. The person is entitled to file a patent application based on his own experiences, and does not need the corroboration of his peers (although it can certainly help in some cases).
My thesis is that some of the criticisms that have been leveled at the patent profession in the accounts of the cold fusion saga are misplaced. These gentlemen are not trying to compromise the integrity of the research community. They are just doing their jobs. The confusion arises from the conflicts in philosophy between the legal and scientific communities.
Conclusions
For over twenty-five years the physics research community has suffered through an employment crisis. Almost every issue of Physics Today contains some comment about the tight job market. Responsible academic institutions now routinely warn entering graduate students in physics that upon graduation their reward will be membership in one of society's hard-core unemployable classes, unless they choose to learn some kind of viable trade like computer programming. This stigma used to be reserved for students in English, art history, and chemistry. We live in an egalitarian society in which there are no sacred professional cows.
One purpose of this essay is to call the reader's attention to a fresh wind that seems to be blowing stronger, called technology transfer: the process by which technological research is transformed into money, including money for researchers. The patent system is an intimate part of this process. Many academic institutions have come to realize that the process offers a way to realize financial rewards from the results of scientific research, and have established technology transfer offices. Some institutions are also giving financial awards to scientists as an incentive to participate in technology transfer programs. These programs did not exist twenty-five years ago.
The American Physical Society appears to be going through a transition phase, a period of self-examination and a search for new missions. It is believed that the technology transfer trend and patent developments offer new opportunities for the APS to revitalize the calling of its members. It will be interesting to see to what extent these opportunities are exploited.
- Morris Cohen, Harvard Law Review vol. 29, p. 622-625 (1916).
- "Scientist" is used here in its modern sense. For centuries, "science" was treated as co-extensive with its Latin root, which encompassed all knowledge. It was only in the middle of the 1800's that the term "scientist" began to be used to differentiate, from philosophers and intellectuals in general, those who used scientific methodology to find and explain regularities in nature. See Ross, Ann. of Sci. vol. 18, p. 65 (1962).
- The "inventor's patent attorney" is not the same person as the patent attorney for the institution that employs him or her. Question: How can you tell when an attorney is representing your interests, rather than your employer's interests? Answer: When you have paid him or her.
The author has been an attorney for the past 18 years. He is in private law practice in San Mateo, California, specializing in technological cases and intellectual property law (patents, trademarks, and copyrights). Formerly he as a research physicist for 18 years. His address is 155 Bovet Road, Suite 400, San Mateo, CA 94402.