An invention is not a thing, 6: Invention holes, practical application, and development

An invention is a collection of things, a set, a door of opportunity and whatever an inventor and others see through that door. A patent is an inventor’s claim to exclusivity in what the inventor, perhaps with help from others, sees through that door of opportunity.

Let’s look then at how federal research invention policy treats inventions. Thing? or Set? or sometimes, Both?

Here is a bit from the Kennedy patent policy from 1963.

Where the principal or exclusive (except as against the government) rights in an invention remain in the contractor, unless the contractor, his licensee, or his assignee has taken effective steps within three years after a patent issues on the invention to bring the invention to the point of practical application or has made the invention available for licensing royalty free or on terms that are reasonable in the circumstances, or can show cause why he should retain the principal or exclusive rights for a further period of time, the government shall have the right to require the granting of a license to an applicant on a non-exclusive royalty free basis.

In the situation described here by the Kennedy patent policy, there’s an invention and there’s a patent on that invention. In the general case, there will be multiple ways to practice the invention, multiple ways claimed by the inventor and controlled by the contractor. If the invention has been made available for licensing, it’s clear that the entire collection of possibilities that comprise the invention are made available. Public release of the invention (the collection of inventive bits) on non-discriminatory, reasonable, non-exclusive terms provides access to all. The contractor may collect payment for the license, and may impose other reasonable terms, such as regarding risk, but overall, public access on reasonable terms is the purpose.

But what do we do with the “bring the invention to the point of practical application.” This usage is very different, once we have the mental discipline to stop thinking that an invention is just a thing. It is possible for an invention to be a single thing, and certainly it is possible for a patent to be drafted to claim only a single thing. But those cases, unless there really is only one possible way to do something, if one did claim only a single instance of the invention, it would be (in the general case) likely easy to design around the patent and do something similar, but with a different combination of elements–that is, practice within that area of opportunity opened up by the inventive door, but owe nothing to the inventor for having published in the patent literature about what might be there.

One can see, then, that a patent on an invention–the area beyond the door claimed by the inventor–has to do with what we (in the form of government) decide is appropriate for an inventor to receive in exchange for publishing an invention that otherwise might be held as a secret or through indifference not disclosed. The patent law’s answer is along the lines of “anything the inventor can reasonably define in writing as the area of opportunity that can be reasonably taught so one with ordinary skill in the art without undue experimentation can practice.” Beyond this, there is no working requirement in US patent law. An inventor does not have do anything in the patented area of invention–does not have to use any part of the invention, does not have permit others to use any part of the invention. The inventor’s right is to exclude all others, for whatever reason or for no reason at all–call it indifference–for (now) twenty years from the date of filing the patent application.

The argument is that such indifference is no loss to the public because the invention represents something the public never had anyway, so it’s all good if they have to wait two decades to gain access. Yes, it is a strange argument. The Kennedy patent policy, however, introduces a working requirement if the invention has been made under a federal contract. The contractor has three years to either release the invention non-exclusively, bring it to the point of practical application, or make a case to the government why the public should be denied access for a longer time.

Here’s the Kennedy patent policy definition of “to the point of practical application”:

To the point of practical application–means to manufacture in the case of a composition or product, to practice in the case of a process, or to operate in the case of a machine and under such conditions as to establish that the invention is being worked and that its benefits are reasonably accessible to the public.

This is a strange definition–and one that has been in federal research invention policy for over fifty years. The gist appears to be using an invention so the public benefits. But the definition gets all caught up in itself. First, it breaks up inventions into types–but doesn’t follow quite the patent law identification of forms of patentable subject matter, which 35 USC 101 gives as

process, machine, manufacture, or composition of matter

And ignores patents on distinct and new asexually reproduced plants at 35 USC 161

cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state

Apparently there is no need to bring distinct and new asexually reproduced plants to the point of practical application. Apparently asexually reproducing one is good enough. But the absence of plants from the Kennedy definition of “to the point of practical application” raises the question of just what it is that the policy envisions that must take place from the point that a patent issues–conception and reduction to practice have been documented and demonstrated–to “the point of practical application.”

Let’s consider some possibilities.

First, we have the case of plants. There is apparently no need for any further action from the point that a distinctive and new plant has been asexually reproduced. Apparently just asexually reproducing a plant brings it “to the point of practical application.” Other inventions, too, must be in this condition. Think of software-based algorithms. If the code operates as expected, then not only is there actual reduction to practice, but also we are at the point of practical application.

Next, consider inventions that have been constructively reduced to practice. There’s still the matter of actually reducing such inventions to practice. Sure, there’s a complete description of the invention–a patent has issued, after all–but there still is no prototype and the prototype hasn’t been tested for everything else, such as manufacturing methods, quality control, interfaces with other products, and the like.

We can divide further such unbuilt inventions into three categories:

1. inventions for which building of an instance is inexpensive and straightforward

2. inventions for which building is not inexpensive or straightforward

3. inventions for which introducing into use is not inexpensive or straightforward, regardless of the difficulty or cost in building any given instance

For inventions that are easy, there’s no particular need for risk capital to be attracted to the invention for the public benefit–most anyone can make or use such inventions, just as they can asexually reproduce a plant if they can get ahold of it. For these inventions, a patent does nothing to attract risk capital–instead, a patent may be used to suppress others from using the invention. If others might adopt and use such an invention faster or more effectively than the owner of the invention, that might seem unfair in the general case of someone doing a bunch of work to invent only to find others running with the invention in a manner better than they ever could. But pause–if the federal government has funded the work for public benefit, and those doing the inventing have requested that funding, knowing its purpose was public benefit, then it would appear that as a matter of public policy, it is fair that anyone ought to have access to the invention–especially those who are prepared to use the invention faster and better than those doing the inventors. The inventors–working with public money they requested–are inventing on behalf of those who would use such inventions.

The case for patents in such circumstances is weak. Yes, one could spend $10K to use the patent system to document the invention. But if the inventive work has been undertaken on behalf of the public, then there’s no good reason why inventors would withhold what they have invented as a trade secret (i.e., prevent the inventive work from becoming generally known) or be indifferent to what they have invented. If there’s a general obligation for publicly funded “basic” research, it is that the work that’s done–data, findings, inventions, tools–is disclosed. Not merely announced, but disclosed in sufficient detail that any of it can be used. In other words, taught. Using the patent system for such a purpose is pretty backward, and expensive, and mostly worthless. May as well require publication in pig latin.

A slightly better argument for patents in such circumstances is to create commons–to provide a bit of defense for open application and extension of the invention (in any of its instances). In this defense of patenting, a patent on an invention that is ready to be used without “development” might be used to limit the use of patents on applications and improvements to block continued open access. That makes at least some sense, for some situations. But that’s not how the case for patenting basic research has ever been argued in policy settings. For that, we have the persistence of the monopoly meme–that without the right to exclude all others, no invention will ever be used or developed. Nonsense, but persistent nonsense. The commons based on mutual non-assert in exchange for mutual access to inventive work prevents at least some fragmentation of the opportunity presented by an invention so that before individual advantages may be claimed by means of suppressing use by others, a technology has a chance to accumulate, to form a platform, to establish uses that might become standards. You know, like internet protocols such as TCP. The success of basic research may well be not commercial products but professional and industry standards.  The existence of a standard implies there are products and services that rely on the standard. If patents are used to exclude others before public use is established, then the patent has worked to suppress cumulative technology and to delay the development of standards.

For inventions that are expensive or difficult, the problem is not in the invention but in construction and build out of a context that makes their use possible–expensive equipment, specialized hand-eye coordination, scaling up from garage to mass-production facility, creation of ancillary equipment, tools, capabilities. In these cases, we might see that even though a invention has itself been fully specified, it is still costly to build or to apply in any meaningful way outside the garage or laboratory or patent application. The risk, then, ought not be so much that an instance of the invention won’t “work” as intended, but that it will cost too much to build for the benefit, or that the instance won’t work well enough to justify the cost, or that instances cannot be built in sufficient quantity or quality to justify the effort, or that not enough people are willing to disrupt their present activities to adopt the invention and everything else necessary to make the invention work in practice. In those cases, then, one might see a substantial gulf between constructive reduction to practice and actual reduction to practice, and a second gulf between actual reduction to practice and whatever is necessary to make the benefits of using the invention (an instance of the invention) accessible to the public.

The invention is in, as it were, an invention hole. For inventions in a hole there are one or two gulfs beyond reduction to practice that must be crossed before any instance of a given invention can be used in a manner that provides benefits to anyone, let alone the public generally. From concept to working prototype. And from prototype to an instance worth the cost to adopt. We might make this point even simpler. The development goal is to establish an ad hoc standard–the “point of practical application” is not so much a product, but rather a standard under which products may become reasonably accessible to the public.

In this, the “development” expected to get any particular instance of an invention out of its hole, as it were, is distinct from Bayh-Dole’s use of “development” in its statement of policy and objective–there, development means–this is a definition from the Federal Acquisition Regulation–the preparation of a new product based on specifications. Bayh-Dole’s definition of “practical application,” however, depends only on the use of a subject  invention (whatever that means–one instance? all instances?)  In Bayh-Dole, “practical application” clearly is not restricted to commercial product development–but it is a condition of an invention assumed to be beyond reduction to practice.

And even having built a prototype, we are only at “the point of practical application.” Actual manufacturing–which may require yet more development–is still ahead, as is actual adoption by others (what is the policy good of a contractor making new product that no one buys?) and use, training, servicing of products, and the like. In other words, “to the point of practical application” gets to the introduction of an instance that has moved beyond prototype to production use or commercial manufacturing. It is not so much a matter of “commercialization” (which suggests commodification for sale) as it is availability for making, using, or selling in a form that is worth the cost to make, use, or sell–that is, as a working standard.

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