| Author | Message | ||
     Erik Skibsted |
Hi I was wondering about NIR and patent issues. Some of my managers have "seen the NIR light" and are now curious about if it is possible to patent a NIR based method. My personllay opinion is that I dont like patents, I'm a researcher and think that it is not logic to patent nature constants i.e. band frequencies. Also to facilitate the widespread use of NIR and the development of the technique patents are not a good thing. I would like to hear about your experience with this matter. Both pro and cons are appreciated. Off course I understand that a company will keep a competitive advantege towards competitors e.g. by manufacturing smart at a lower cost, meaby helped by NIR, but I still find it a little unlogically to patent an analytical method.. Looking forward to hear your comments. Erik Skibsted University of Amsterdam Novo Nordisk, Denmark | ||
| Christian |
Hello Erik, I know that Akzo have patented lots of nir-methods concerning chemicals in paper. Hej fra Christian | ||
| Erik Skibsted |
so that means that no-one is allowed to use NIR to measure chemicals in papers using the setup? or wavelenght numbers? | ||
| Bruce H. Campbell (Campclan) |
Erik, There recently was an extended discussion on patenting of NIR methods. If you check the archives you should be able to find it. Bruce | ||
| Tony Davies (Td) |
Hello Erik, It was 10th November. If you use the keyword search (utilities on your left) you will get there in seconds. Please come back when you have read it. I am still hoping to find a way of making progress with this important issue. Tony | ||
| Gabi Levin |
Hi Erik, My best suggestion to handle your management's desire to spend money on patents is to do a thorough search on the use of NIR for the purpose that you are going to try to patent, and once you can show them that is sufficient prior art and that there is no new invention here, it is possible they will drop it. Besides, from the little that I understand, even if they get a patent, they can not stop companies from using NIR, for their own purposes, not selling the technique to others, without having to worry about the patent. I am not a patent lawyer, and I am not up to speed on many patent procedures, is there a way for the NIR discussion group to become a sort of advisory group to the patent office whenever there is a NIR patent applied for? Thanks, Gabi | ||
| Erik Skibsted |
I have read some of excellent comments about patents here on the forum now and I have an addition. One of the arguments from my managers is that Novo sometimes take patents on analytical methods to have "freedom of operation" i.e. we want to use the methods and make sure nobody stops us from using them,but we will NOT stop others from using a simmilar technique or bring them to court. Though pharmaceutical industry is a highly competitive buisness it is very difficult to detect and "attack" competitors using simmilar measuring techniques, and in my oppinion a waste of time because I can see so many ways to defeat a patented NIR method using other wavelengths/chemometric models/preprocessing etc etc. So for "freedom of operation" reasons I think that NIR patents can have a value but not for other reasons... Erik Skibsted PhD stud. University of Amsterdam Novo Nordisk | ||
| Gabi Levin |
Hi Erik, While we have no objection to someone spending his money for such purpose, we as a community of promoters and users of NIR techniques also would like to have the freedom of opearting the technology without someone stopping us. That's why the patent office should protect us from any future possibility that some one in Novo, or for that matter anyone else, will have a change of mind and start pursuing a different venue. With all due respect, the community's right for peace of mind is just as important ad Novo's. Gabi | ||
| hlmark |
Erik - the bottom line in the previous extended discussion was written by Bob Rosenthal, although I don't recall if he posted his final message publicly or just sent it to me. But after much public argument against restricting patents, even he admitted that if someone simply uses an off-the-shelf instrument in conjunction with commercially avialable software to perform the calibration calculations, and does nothing unique or different than that except to specify a particular wavelength set for a particular application, there is nothing in that process that would be considered an "invention" (at least under US patent law). That is not to say that people can't or haven't obtained just such patents, but that is due to the limitations in the expertise, time and resources avialable to the patent office examiners and the difficulty and expense of fighting a patent once it's granted, not because those patents are legally valid. Howard \o/ /_\ | ||
| Bob Rosenthal |
In reading Erik's and Howard's e-mail concerning patents, I thought the following example might be helpful to describe how "wavelengths" might become part of a patent application. The example is from the first commercial NIR patent. That patent was submitted by Neotec Corporation (the ancestor of Foss NIR Systems) in 1969. The inventors were Don Webster and Gene Ganssle. Approximately one or two years before this patent, Karl Norris demonstrated that protein and moisture could be measured in ground wheat using a light source, six interference filters at specific wavelengths between 1600 and 1950 nm, a lead sulfide detector measuring the light reflected off ground wheat, when calibration was performed using Multiple Linear Regression Analysis. Karl's discovery was never patented, and thus, it became available for anyone to use. The Webster/Ganssle patent specifically incorporates all features of Karl's discovery (i.e., use of an optical source, narrow bandpass filters at specific wavelengths, lead sulfide detector, etc.). They added one additional item: a glass or quartz window pressed against the ground wheat. The patent taught that by using such a window, the measurement precision was improved by almost a factor of three, and just as important, the possibility of grain dust being "splashed" on the Optical Standard was eliminated. In summary, although this patent did specifically name the exact wavelengths that Karl used and the specific method of measurement (except for the window) that Karl demonstrated, the patent was granted because the addition of the known technology of a window was a major improvement over and above the previous techniques. Obviously, this patent does not stop anyone else from using the identical wavelengths, light source, detector, etc., that Karl had specified. It is only the unique combination of adding that with the window that was patented. Five years later, to end the Neotec/Technicon "Patent wars," Neotec agreed to allow anyone to use their "windows" patent (royalty free), and Technicon agreed to allow anyone to use their "NIR Optical Standard" patent (i.e., the Coors ceramic disk) royalty free. I hope this example is helpful. Bob Rosenthal | ||
| Tony Davies (Td) |
Dear Erik et al. I should have said it earlier but I think it is still worth saying. The way for Novo and other companies to have "peace of mind" is to publish in the scientific literature (J. Near Infrared Spectrosc. comes to mind). This is what Heinrich Pruffer and Heike Bull were advocating in their NIR news (9(3),10 (1998)) article. This route comes with at least two bonuses. 1) Enhanced scientific prestige and 2) it does not cause other companies to avoid areas where they might be challenged for patent infringement. They do not know that the wavelengths have been added for �peace of mind�! (I got Ian to move Bob�s contribution to the discussion � it was in �Clusters�; so now I can comment on that also). Hello Bob, I am not sure if I ever knew of this patent but is it the source of our problems? Did this early (1969) patent become the model for subsequent NIR patents? Thus, wavelengths were included without the agents knowing that the original wavelengths had been disclosed before the original patent? It certainly shows the potential danger of their inclusion. Best wishes Tony | ||
| Bob Rosenthal |
Hi Tony, Your conclusion is incorrect. Perhaps the reason for your conclusion is a misunderstanding of the U.S. Patent Law. Under U.S. Patent Law, the patent application must provide a clear and complete description of the prior art. Obviously, in the prior art (i.e. art either in public domain or in other prior patents), it included a description of Norris's research that defined the wavelength and the methods of doing near-infrared quantitative analysis. Under U.S. law if such prior art is not disclosed, the courts would quickly invalidate the patent as being fraudulent by not including the prior art. Another requirement under U.S. Patent Law is that the patent application "allow anyone ordinarily skilled in the art" to be able to replicate the invention. This means the invention must be described in explicit detail. If "someone ordinarily skilled in the art" is not able to replicate the invention, that is clear grounds for having the patent declared invalid. In summary, the patent law defined in the U.S. Constitution allows the inventor to "make a deal" with the government. Provided that the inventor describes all the pertinent background art, and clearly describes the invention so that someone skilled in the art could duplicate it, then in return the government gives an exclusive monopoly right for approximately seventeen years. In return, the government gets the right to publish the invention so that anyone else could see the invention, learn what its prior art and be able to replicate the invention. This allows anyone to "leapfrog" (jump ahead) of the invention with a new invention. This approach has worked quite well for the past 200 years. Editorial comment: I have never seen a U.S. patent that precludes anyone from making NIR measurements in any part of the spectrum on any type of material for any application. Conversely, I have seen a significant number of patents that use specific NIR wavelengths IN COMBINATION WITH other known technology, where the combination of the NIR wavelengths and the known technology is unique and "not obvious to someone skilled in the art." Bob | ||
| hlmark |
Bob - yes, well, the question of "obviousness" is one of the biggest problem areas in the US patent system, as I understand it. What's not obvious to one person may well be obvious to someone else. How does the patent office decide how "obvious" a new device has to be before it becomes unpatentable? Howard \o/ /_\ | ||
| Bob Rosenthal |
Howard - You are of course correct. The argument of "obviousness" is a key element in obtaining any patent. I once heard that over 80 percent of patents were initially rejected by the Patent Examiner; the reason given was that "the concept would be obvious to someone ordinarily skilled in the art." However, this type of initial rejection can be via documented arguments. For example, when this type of rejection is made on one of my patent applications, I usually submit a sworn "declaration" that provides my educational background, and my experience in the field of the invention (e.g., NIR). I then normally include the pages of my lab notebook that shows the number of attempts I made to solve the problem and how they all failed. The last thing shown in the notebook is the solution that finally worked. I also include evidence that once I found the solution I did a reasonable search of the open literature as well as of various patents and found no reference to that type of solution. Thus, being an expert in the field and having had considerable number of failures before finding the solution, and then finding nothing in the literature describing a similar solution, I conclude that I was therefore entitled to be awarded a patent. In every case that I've done this, I have always been awarded the patent. Moreover, none of my patents have ever been overturned. I hope the above discussion is obvious. Bob | ||
| Bob Rosenthal |
Howard - You are of course correct. The argument of "obviousness" is a key element in obtaining any patent. I once heard that over 80 percent of patents were initially rejected by the Patent Examiner; the reason given was that "the concept would be obvious to someone ordinarily skilled in the art." However, this type of initial rejection can be via documented arguments. For example, when this type of rejection is made on one of my patent applications, I usually submit a sworn "declaration" that provides my educational background, and my experience in the field of the invention (e.g., NIR). I then normally include the pages of my lab notebook that shows the number of attempts I made to solve the problem and how they all failed. The last thing shown in the notebook is the solution that finally worked. I also include evidence that once I found the solution I did a reasonable search of the open literature as well as of various patents and found no reference to that type of solution. Thus, being an expert in the field and having had considerable number of failures before finding the solution, and then finding nothing in the literature describing a similar solution, I conclude that I was therefore entitled to be awarded a patent. In every case that I've done this, I have always been awarded the patent. Moreover, none of my patents have ever been overturned. I hope the above discussion is obvious. Bob | ||
| Erik Skibsted |
Thank you very much Tony, your comment gave me "peace in mind" :o) This was the kind of advice I was looking for. In combination with Bobs excellent comments and deep insight and practical experience in these complicated questions my conclusion is that, to have "freedom of operation" for a company we 1) publish our results as soon as possible 2) use a standard off-shelf spectrometer, not trying to invent our own instrument (which we dont want to, its not our core businees) I guess if another company have a patent for a NIR method for that specific application we want to work with, then it can be overcomed by using slightly different wavenumbers/preprocessing method, in my experience this will cause no problem to us. |