2 ms·

> If it takes significant work to reverse engineer the invention, that quid quo pro hasn't been met, the patent should be considered invalid. So, company A pat

by mlyle 5y ago

> If it takes significant work to reverse engineer the invention, that quid quo pro hasn't been met, the patent should be considered invalid. So, company A patents something and discloses how to make it. It's an enabling patent, best-mode, etc. Company A then makes significant further improvements needed to make the thing at scale. You're saying they should have to disclose this subsequent work?

gpm 5y ago
Taking this article at face value, the company has not disclosed how to make the thing at all, not just how to make it at scale. I would not suggest that the most efficient way to make it must be disclosed (if you want to patent the finished good but not the efficient manufacturing process), just a way.
- JumpCrisscross 5y ago
  > the company has not disclosed how to make the thing at all, not just how to make it at scale They’ve also not patented everything, choosing to retain some of the most sensitive techniques as trade secrets. If this persists, we’ll see more pharmaceutical companies taking a Muskian approach to patents.
- dctoedt 5y ago
  From the USPTO's Manual of Patent Examination Procedure: (quoting the patent statute): "The specification. . . shall set forth the best mode contemplated by the inventor of carrying out his invention." And the Manual's explanation: "The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves." https://www.uspto.gov/web/offices/pac/mpep/s2165.html https://www.uspto.gov/web/offices/pac/mpep/s2165.html
  - mlyle 5y ago
    Note that all the teeth are gone from best mode, though. You're now "required" to disclose best mode, but don't face invalidation of a patent for failure to disclose best mode.
    - dctoedt 5y ago
      Agreed — but I'd imagine that intentional failure to disclose best mode could still be a basis for an inequitable-conduct holding. (It's been a few years since I did patent work; a quick search in scholar.google.com didn't reveal any case law on point.) And in a close case, in jurors' minds, evidence of a best-mode failure might help tip the balance against validity on other grounds.
- hcknwscommenter 5y ago
  The very act of providing the product to the market place is a sufficient disclosure of "how to make the thing at all" for anyone with a modest level of skill in this field. Moreover, there are plenty of detailed descriptions in Moderna's patent filings and other publicly available sources on how to make the thing at all. The issue is very much one of scale and I would wager that Moderna doesn't quite have the expertise either to reproduce their manufacturing pipeline at will. I have have personally witnessed a massive project failure in moving a therapeutic molecule from one manufacturing site to another, presumed identically equipped, manufacturing site. These things are not easy. It may be that this South African startup actually cannot use much of the information Moderna has on how to manufacture at scale because it only reproduces in Moderna's hands at Moderna's sites. This would be the expected outcome really.
tshaddox 5y ago
They should have to disclose the subsequent work if they want patent protection for that subsequent work, right?
- frenchy 5y ago
  Well lets say you have a process that requires stage A and then stage B to make product C, but stage B can't be done without A, and the result of B isn't useful by itself. Then you patent stage A and keep stage B secret. I'm not a patent expert, but this seems to break the social contract of patents. Perhaps there is something in the patent law that prevents this?
  - hcknwscommenter 5y ago
    Stage A must be provably useful, provably non-obvious, and provably new.
  - virgilp 5y ago
    [edit] Apparently, I'm wrong, "utility" is an explicit requirement. But let me tell you, nobody ever asked me to justify the utility, not even a little bit. I think it's just assumed that if you're willing to pay the patent fees, it's likely to have some utility. ---- AFAIK there's isn't. You can patent a leash for rodents, and PTO is not going to say "it's not acceptable, nobody wants to put rodents on a leash". The only questions are whether your invention is novel and non-obvious, not whether it's useful. As such, if you can patent stage A that produces <unuseful stuff B>, nobody will tell you that it's unacceptable because B isn't useful. The usefulness is a completely separate question, to be decided by the market.
  - tshaddox 5y ago
    A company could do that, but what advantage is there to doing that over simply keeping stage A a secret? By patenting stage A, you are awarded a temporary monopoly over stage A but also giving competitors a head start to reverse engineer stage B. By not patenting stage A, you don't get the temporary monopoly, but you also don't publicize anything about stage A that would give competitors the head start on stage B. So it's the same tradeoff that always exists with patents.
dctoedt 5y ago
> It's an enabling patent, best-mode, etc. It'd be interesting to dig into the inventor's and patent attorney's files on that score.

by mlyle 5y ago

gpm 5y ago

Taking this article at face value, the company has not disclosed how to make the thing at all, not just how to make it at scale. I would not suggest that the most efficient way to make it must be disclosed (if you want to patent the finished good but not the efficient manufacturing process), just a way.

JumpCrisscross 5y ago
> the company has not disclosed how to make the thing at all, not just how to make it at scale They’ve also not patented everything, choosing to retain some of the most sensitive techniques as trade secrets. If this persists, we’ll see more pharmaceutical companies taking a Muskian approach to patents.
dctoedt 5y ago
From the USPTO's Manual of Patent Examination Procedure: (quoting the patent statute): "The specification. . . shall set forth the best mode contemplated by the inventor of carrying out his invention." And the Manual's explanation: "The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves." https://www.uspto.gov/web/offices/pac/mpep/s2165.html https://www.uspto.gov/web/offices/pac/mpep/s2165.html
- mlyle 5y ago
  Note that all the teeth are gone from best mode, though. You're now "required" to disclose best mode, but don't face invalidation of a patent for failure to disclose best mode.
  - dctoedt 5y ago
    Agreed — but I'd imagine that intentional failure to disclose best mode could still be a basis for an inequitable-conduct holding. (It's been a few years since I did patent work; a quick search in scholar.google.com didn't reveal any case law on point.) And in a close case, in jurors' minds, evidence of a best-mode failure might help tip the balance against validity on other grounds.
hcknwscommenter 5y ago
The very act of providing the product to the market place is a sufficient disclosure of "how to make the thing at all" for anyone with a modest level of skill in this field. Moreover, there are plenty of detailed descriptions in Moderna's patent filings and other publicly available sources on how to make the thing at all. The issue is very much one of scale and I would wager that Moderna doesn't quite have the expertise either to reproduce their manufacturing pipeline at will. I have have personally witnessed a massive project failure in moving a therapeutic molecule from one manufacturing site to another, presumed identically equipped, manufacturing site. These things are not easy. It may be that this South African startup actually cannot use much of the information Moderna has on how to manufacture at scale because it only reproduces in Moderna's hands at Moderna's sites. This would be the expected outcome really.

tshaddox 5y ago

They should have to disclose the subsequent work if they want patent protection for that subsequent work, right?

frenchy 5y ago
Well lets say you have a process that requires stage A and then stage B to make product C, but stage B can't be done without A, and the result of B isn't useful by itself. Then you patent stage A and keep stage B secret. I'm not a patent expert, but this seems to break the social contract of patents. Perhaps there is something in the patent law that prevents this?
- hcknwscommenter 5y ago
  Stage A must be provably useful, provably non-obvious, and provably new.
- virgilp 5y ago
  [edit] Apparently, I'm wrong, "utility" is an explicit requirement. But let me tell you, nobody ever asked me to justify the utility, not even a little bit. I think it's just assumed that if you're willing to pay the patent fees, it's likely to have some utility. ---- AFAIK there's isn't. You can patent a leash for rodents, and PTO is not going to say "it's not acceptable, nobody wants to put rodents on a leash". The only questions are whether your invention is novel and non-obvious, not whether it's useful. As such, if you can patent stage A that produces <unuseful stuff B>, nobody will tell you that it's unacceptable because B isn't useful. The usefulness is a completely separate question, to be decided by the market.
- tshaddox 5y ago
  A company could do that, but what advantage is there to doing that over simply keeping stage A a secret? By patenting stage A, you are awarded a temporary monopoly over stage A but also giving competitors a head start to reverse engineer stage B. By not patenting stage A, you don't get the temporary monopoly, but you also don't publicize anything about stage A that would give competitors the head start on stage B. So it's the same tradeoff that always exists with patents.

dctoedt 5y ago

> It's an enabling patent, best-mode, etc. It'd be interesting to dig into the inventor's and patent attorney's files on that score.