Articles

Stopping Improper Patenting of Traditional Knowledge

Law360
December 10, 2010

Article

Nov. 23, 2009, marked the U.S. Patent and Trademark Office's watershed announcement that the government of India had granted that agency's patent examiners access to India's "Traditional Knowledge Digital Library" (TKDL), a digital repository of traditional Indian knowledge. USPTO 9-30 Press Release. Several years earlier, during a meeting of the World Intellectual Property Organization in Geneva, the USPTO had professed its support of proposals designed to protect traditional knowledge and folklore and its agreement with the Indian government seemed to show that the USPTO was taking action to back up its words.

In this article, the authors first discuss how such information-sharing partnerships have the potential to go a long way toward preventing the improper patenting of traditional knowledge by helping expand the class of patent-defeating “printed publications” under 35 U.S.C. §§ 102(a)-(b), and further consider the extent to which the USPTO's newfound access to databases such as the TKDL may give rise to more validity challenges under a sister provision of the U.S. code, i.e., the "inventorship" condition for patentability that is codified in Section 102(f).

"Traditional knowledge" may generally refer to a country's indigenous methods and products, such as an Amazonian tribe's treatment for an illness using a combination of endemic flora. Even though such treatments may be centuries old, their use in the Amazon will not alone bar a U.S. patent covering the same treatment given the "in this country" language of 35 U.S.C. §§ 102(a)-(b) that excludes such extraterritorial uses from the "prior art" that can be considered in assessing patentability.

Presumably, the TKDL and other such new digital libraries of traditional knowledge will help close such geographic loopholes by providing content that may qualify as patent-defeating "printed publications" under those code provisions (or point to where such publications can be found). Several questions remain, however, as to whether databases like the TKDL will present any real hurdle to someone in the U.S. who seeks to patent another country's traditional knowledge.

While instances of individuals attempting to get a U.S. patent on some foreign-sourced traditional knowledge seem relatively uncommon, several notable cases have received international attention.

For example, in 1995, two Indian-American scientists from the University of Mississippi obtained a patent covering the "use of turmeric in wound healing." See U.S. Patent No. 5,401,504. They did so even though the uses that they laid claim to had in fact been used for centuries in India, including in the preparation of certain cosmetics and as insect repellants. A subsequent re-examination provided the USPTO with information on such ancient uses in the form of published references that it had not considered during the original prosecution, leading to the cancellation of all of the patent's claims. See Reexamination Certificate for U.S. Patent No. 5,401,504.

That such patents even issue in the first place is not necessarily surprising, given for example that Section 102(a) is triggered only if the prior knowledge or use was "in this country." Section 102(b) features a similar geographic limitation, expressly restricting the universe of relevant prior public uses capable of preventing the issuance of a U.S. patent to those done "in this country." Such gaps do not exist in every patent system. The European Patent Convention (EPC), for example, defines prior art to include oral disclosures and use without geographical limitation. Article 54(2) EPC (2000).

Those code sections, however, treat "printed publications" differently, allowing consideration of those types of items whether from "this or a foreign country." Thus, at least in the U.S., the success of such new electronic sources of information like the TKDL in preventing the improper patenting of traditional knowledge depends in large part on whether what they contain constitutes a "printed publication" for purposes of Section 102. See, e.g., SRI Int'l Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194-95 (Fed. Cir. 2008) (discussing the "printed publication bar" of Section 102(b), noting its public accessibility aspect).

In addition, in order to qualify as prior art under Section 102, the information relied upon must provide an enabling disclosure, even though not written in the English language. See, e.g., Orion IP LLC v. Hyundai Motor America, 605 F.3d 967, 974-75 (Fed. Cir. 2010). Those requirements might hamper the TKDL from fulfilling its primary objective. To be most effective, storehouses of traditional knowledge should feature original teachings that pass muster under Sections 102(a) and (b).

There are, however, other patentability conditions recited in Section 102 that may help protect traditional knowledge from improper patenting. Beyond Sections 102(a)-(b) lies Section 102(f), which states that a person can be awarded a patent unless "he did not himself invent the subject matter sought to be patented." In announcing its access to the TKDL, the PTO stated that “[i]f a patent application attempts to claim an invention within the existing traditional knowledge, a patent examiner will reject the application provided they can find evidence proving the prior existence of that knowledge." USPTO 9-30 Press Release.

In the authors' eyes, it stands to reason that "evidence proving the prior existence of that [traditional] knowledge" puts inventorship into play. The question, however, is whether databases like the TKDL have what the law requires to establish that an applicant for a U.S. patent that would cover traditional knowledge is not the proper "inventor" of the subject matter at issue.

The requirements of Section 102(f) stand independent of what Sections 102(a)-(b) require. Thus, traditional knowledge that may not constitute a "printed publication" for purposes of Sections 102(a)-(b) may still be considered for purposes of Section 102(f). For example, Section 102(f) "does not require an inquiry into the relative dates of a reference and the application." MPEP § 2137.

However, as promising as all that may make Section 102(f) sound as a viable tool for protecting traditional knowledge through inventorship challenges, decisions from both the USPTO and the Federal Circuit raise some noteworthy obstacles to databases such as the TKDL making any real difference. Well-settled precedent establishes that "most, if not all, determinations under section 102(f) involve the question of whether one party derived an invention from another." See, e.g., Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981).

In other words, even though a member of the aforementioned Amazonian tribe may be the real inventor of using endemic flora to treat an illness (Inventor A), Section 102(f) will not bar someone else (Inventor B) from obtaining a U.S. patent on the same flora-based treatment absent sufficient proof that Inventor B derived his "invention" from Inventor A. And "derivation," says the Federal Circuit, requires not only proof of 1) a prior conception of the invention, but also 2) communication of that invention to the applicant. See, e.g., Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577 (Fed. Cir. 1997).

Loosely stated, Section 102(f) poses no hurdle to Inventor B absent proof that Inventor A thought of it first and shared it to some extent with Inventor B. Even though Section 102(f) applies to derivations that "may never become public" (see OddzOn Products Inc. v. Just Toys Inc., 122 F.3d 1396, 1401-02 (Fed. Cir. 1997)), the requirement of proving that there was some some "communication" between Inventor A and Inventor B may not be an easy one to satisfy (even under a broad definition of that word).

Moreover, the Board of Patent Appeals and Interferences requires "strong evidence" that an applicant is not the "sole inventor" before it will sustain a rejection under Section 102(f). See, e.g., Ex parte Kusko, 215 USPQ at 974 ("Where an applicant by oath or declaration states that he is the sole inventor of a particular invention, strong evidence is required to reach a contrary conclusion.").

It is of course the applicant's burden "to provide a satisfactory showing [that] would lead to a reasonable conclusion that he is the sole inventor" which can be satisfied through, for example, an affidavit or declaration that he is the “sole inventor of the subject matter described and claimed in his application." In re Katz, 215 USPQ 14, 18 (CCPA 1982).

The guardians of traditional knowledge can at least take some comfort knowing that the relevance of Section 102(f) information is not limited to determinations of novelty. The Federal Circuit squarely addressed that issue in OddzOn Products Inc. v. Just Toys Inc., 122 F.3d 1396 (Fed. Cir. 1997), in the context of considering whether disclosures that constituted patent-defeating subject matter under Section 102(f), but were confidential (nonpublic), could still be relied upon with other prior art for purposes of an obviousness challenge. The court concluded that "subject matter derived from another not only is itself unpatentable to the party who derived it under Section 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of Sections 102(f) and 103." OddzOn, 122 F.3d at 1403-04.

In sum, databases like the TKDL will provide examiners with a powerful new tool for referencing traditional knowledge, including information and documents that were previously inaccessible, as prior art under Sections 102(a)-(b). Such databases may also provide new grounds for rejections under Section 102(f), but the evidentiary requirements (proving conception and communication) seem to favor the U.S. patent applicant over the Amazonian tribesman.

Originally printed in Law 360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws.  This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.