Patent Office revokes third patent; (fwd)

[David Farber <farber@central.cis.upenn.edu>]

[ the following cointains the comment


"half of all software patents reference NO non-patent prior art "


so whats new, most of the software journal articles cite  no prior art :-)
seems the sign of a broken field.


Dave






Date: 9 Dec 1994 07:16:24 -0400
From: "Mike Ammann" <ammann@umich.edu>


Thought you would be interested in the revocation. May effect other areas
such as software and biotechnology.


Mike


!120894  Patent Office revokes third patent;




    Last week the Patent and Trademark Office notified Agracetus that it had
canceled two patents on genetically engineering cotton.  Agracetus had been
awarded two broad patents that left unchallenged would have allowed Agracetus
to demand royalties on virtually any type of cotton with gene modifications
along the lines of what is in Agracetus' claims.


    However many in the industry, including scientists at the Department of
Agriculture, argued that many other scientists contributed important
innovations to genetically modifying cotton seeds (as well as other plants
for which broad patents have been issued such as soy beans).  These gene
modifications usually are for increasing the plant's resistance to disease
and pests.


    The re-examination was ordered by the Patent Office in April, and the
rejection of the claims is not final.  All of the claims were rejected on
prior art grounds.  Agracetus can first appeal to the Patent Office, and if
unsuccessful, to the Federal courts.  If ultimately unsuccessful, the value
of Agracetus is expected to greatly decrease.


    The revocation once again raises the question of how well the Patent
Office can deal with prior art/novelty issues in rapidly evolving domains
(such as biotechnology) and/or in multitudinous domains (such as software,
with millions of programmers).  At some point, the Patent Office is going
to have to seriously examine the reasons behind the miniscule number of
non-patent prior art references that are cited in issued patents.  When
half of all software patents reference NO non-patent prior art (and not to
pick on software because other technologies are equally poorly cited),
when there are ample Dialog-referenceable/examiner-accessible prior art
references, one wonders whether or not the workflow process of prosecuting
patent applications has to be reengineered, as opposed to playing musical
administrative chairs.




Internet Patent News Service
(for subscription info, send 'help' to   patents@world.std.com )
(for prior art search services info, send 'prior' to patents@world.std.com )
(for WWW patent searching, try  http://sunsite.unc.edu/patents/intropat.html
)






------------------ Enclosed/Nested Letter Follows ------------------
!120894  Patent Office revokes third patent;   Mexico joins PCT


    Last week the Patent and Trademark Office notified Agracetus that it had
canceled two patents on genetically engineering cotton.  Agracetus had been
awarded two broad patents that left unchallenged would have allowed Agracetus
to demand royalties on virtually any type of cotton with gene modifications
along the lines of what is in Agracetus' claims.


    However many in the industry, including scientists at the Department of
Agriculture, argued that many other scientists contributed important
innovations to genetically modifying cotton seeds (as well as other plants
for which broad patents have been issued such as soy beans).  These gene
modifications usually are for increasing the plant's resistance to disease
and pests.


    The re-examination was ordered by the Patent Office in April, and the
rejection of the claims is not final.  All of the claims were rejected on
prior art grounds.  Agracetus can first appeal to the Patent Office, and if
unsuccessful, to the Federal courts.  If ultimately unsuccessful, the value
of Agracetus is expected to greatly decrease.


    The revocation once again raises the question of how well the Patent
Office can deal with prior art/novelty issues in rapidly evolving domains
(such as biotechnology) and/or in multitudinous domains (such as software,
with millions of programmers).  At some point, the Patent Office is going
to have to seriously examine the reasons behind the miniscule number of
non-patent prior art references that are cited in issued patents.  When
half of all software patents reference NO non-patent prior art (and not to
pick on software because other technologies are equally poorly cited),
when there are ample Dialog-referenceable/examiner-accessible prior art
references, one wonders whether or not the workflow process of prosecuting
patent applications has to be reengineered, as opposed to playing musical
administrative chairs.


                              ====================


    The United States Patent and Trademark Office received notification from
the World Intellectual Property Organization (WIPO) that Mexico deposited its
instrument of accession to the Patent Cooperation Treaty (PCT) on October 1,
1994.  Mexico will become the 74th Contracting State of the PCT on January 1,
1995.  Consequently, nationals and residents of Mexico are entitled to file
international applications under the PCT on and after January 1, 1995, and
from the same date it is possible to file international applications
designating and electing Mexico (country code: MX).


                              ====================
Greg Aharonian
Internet Patent News Service
(for subscription info, send 'help' to   patents@world.std.com )
(for prior art search services info, send 'prior' to patents@world.std.com )
(for WWW patent searching, try  http://sunsite.unc.edu/patents/intropat.html
)




------------------ End of Enclosed/Nested Letter ------------------
Michael S.  Ammann                                   email: ammmann@umich.edu
Director Economic Development                phone:  313-747-0037
& Commericalization                                     fax:  313-747-0036
Office of Technology Transfer
College of Engineering
University of Michigan
Ann Arbor, MI 48109-2016
Organizational Home Page URL:
http://www.engin.umich.edu/~stuit/otthome.htmlome.html





--


Rollie Cole
rjc@iti.org