Science and society

You had the Right to Remain Silent

February 12, 2017

Editor’s Note: Silence is Golden, isn’t it? After reading #ClubSciWri’s Sunday Blog from Syam Anand, you will realize how the complications in the patent war on CRIPSR-Cas9 have resulted from the statements made by parties whose vested interests are at stake. So next time when you have a plan to cash your intellectual crop, look before you speak! –Abhinav Dey

The patent system adopted by the constitution of the United States of America, is a pursuit to protect the rights and liberties of the individual vis-à-vis the interests of the state and the community it serves. It puts down common sense rules and laws to bestow privileges called patents to rightful inventors for a limited amount of time. Is it perfect? No. Is it good? Yes. Can it be improved? Certainly! Are the concerned people working to improve it? Yes.

Before the patent system, one should understand that we mostly had monopolies bestowed upon individuals based on the whims and fancies of the royals or whoever ruled. That was hardly democratic. The idea of the patent system (Venice had one of the oldest) was to put in place a democratic setup with weights and balances. Further, it meant to incentivize inventions and spur economic activity by stating rights and liabilities in commerce. From time to time, weights piling up on one side upset the balance. That is a natural consequence and the system usually adapts. It is a pursuit and not a static state.

One of the ways the changes for the better (at least that is the idea) happen is through amendments to old laws and passing new laws that replace old ones. Most of the wisdom that drives changes is derived from case law. Patent rights are often fought hard in the USPTO after a patent is granted and beyond that in the judicial system. Why? Because the outcomes have huge economic consequences- real jobs, real lives and real advancements in science and technology are at stake. There are aspects of the patent law that the USPTO can rely on to decide rights. For the aspects of the law beyond the USPTO’s gambit, the judicial system helps to decide rights and liabilities.

The title is a quote taken from Miranda rights, legally required to be read to any person in the United States of America by law enforcement personnel before they are interrogated to preserve the admissibility of their statements against them in criminal proceedings. The full version is

“You have the right to remain silent.

Anything you say will be used against you in a court of law.

You have the right to an attorney during interrogation;

if you cannot afford an attorney, one will be appointed to you”.

Much like criminal law, things that you say and do before and after filing a patent can affect your case. This could be anything- interviews, opinions, articles, conference talks, abstracts, emails…anything of which there is a record that can be accessed. Having a record can be as good or as bad as having no record. To top it all, you do not have a right to an attorney, when it comes to patent law. You will have to afford one yourself. Many of these aspects are technology-neutral. That is the key here- the technology and the finer details matter, but not in the way one would normally think.

In that sense, the CRISPR patent war that is going on currently in the USPTO (United States Patents and Trademark Office) is not unique. There are many cases prior to this that asked whether inventive step(s) were involved in taking something from one system and making it work in another?

The tests are simple:

Can an ordinary person skilled in the art (in this case a molecular biologist) have taken the system that Doudna disclosed in her patent application be practiced in the system that Zhang ALSO disclosed in his application without further experimentation?
Are there admissions that Doudna made (anywhere in any form of which there is a record) that incriminates herself in the sense that the invention was just an idea and the enablement (guarantee that it will work as described) was not present at the time of application?
Did Zhang enable the invention before Doudna did although she described the idea first?

If Doudna incriminated herself, making statements that it is not easy to move the system from prokrayotes to eukaryotes, but still has proof that she none the less did this successfully in eukaryotes, before Zhang did, she wins.

Does this mean that everyone has to license from the winner in this case? Not really. They have to license only in the countries were Broad Institute or UC Berkeley has pursued patents and obtained rights. Elsewhere, everyone can have fun with CRISPR-Cas9 and make money or go broke. Probably, even more so in countries where patent protection is lax.

About the author:

Authored by Dr Syam Anand, PhD (Indian Institute of Science, IISc; Post-Doctoral research, University of Pittsburgh School of Medicine; Faculty, University of Pittsburgh School of Medicine, Founder and US Patent Agent, Mainline Intellectual Property LLC, Ardmore, Philadelphia USA). Syam has over 20 years experience in diverse areas of Science with domain knowledge in Life Sciences and Intellectual Property. Dr. Anand is also an inventor and budding entrepreneur. A rationalist, Dr. Anand enjoys science at all levels and advocates the use of scientific methods for answering all questions and solving all problems and make common people curious and interested in understanding their worlds.

https://www.linkedin.com/in/syamprasadanand

About the illustrator: