Comment by notlob | Hacker News Reader

Comment by notlob | Hacker News Reader

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Berkeley applied for a patent on tennis balls, an application still pending. Harvard/MIT later applied for a patent on yellow tennis balls and paid a fee to accelerate the review of their application. The Harvard/MIT patent was issued first. The recent PTAB trial found that the Berkeley patent application did not interfere with the Harvard/MIT patent, but this does not mean that the Berkeley application will not issue, nor does it mean that one could practice yellow tennis balls (CRISPER/Cas9 in eukaryotes) without licensing both from Berkeley and Harvard/MIT.

As to how Harvard/MIT won, part of the PTAB decision relied on general statements made by one of the Berkeley inventors as to the challenges in dyeing tennis balls yellow (getting the CRISPER/Cas9 system working in eurkaryotes) and so demonstrating that the Harvard/MIT inventors had to made an inventive step. That is a pretty profound and worrying development with respect to academic freedom.

Why is it a worrying development with respect to academic freedom? I think I'm getting the sense -- statements you make about how difficult some piece of work is can be used as evidence that the work is difficult, and thus as evidence that someone who does that work has done something inventive. But it doesn't seem like a particularly unusual revelation. Sometimes true things will be to your adversary's advantage. That's always been true.

I presume parent is worried that this will lead to less open exchange on the academic marketplace - you would not want to have public discussions about anything related to the work you are planning to patent, out of fear you might sabotage it.

That cuts both ways, in that open academic exchange can also be evidence that strengthens your own case. Although I guess the real risk is that lawyers would get end up involved in that process.

If something is "difficult" to do, it likely requires considerable capital investment. Shouldn't the commercial returns go to the entity that made said investment? It is important not to mix up the concepts of discovery, invention, and patent, in this case. It's worth noting that, per my other thread here, this all has been heavily adjudicated by the Supreme Court, with much resting on the "expectations of success." It seems that in such matters the nitty gritty details of the particular situation matter, and it can be hard to discern innovation from discipline. In actuality, courts appear to have sided more often with parties that have "reduced to practice" the claimed IP.

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