An invention is not a thing, 7

Here we start to get at this problem of an invention not being a thing. The instance of an invention that might get one a patent is not necessarily the instance that one would build as a prototype. Furthermore, the instance that justifies the patent might be easy to describe but when built is not suitable for extended use or has such side effects or difficulties that even though it technically meets the requirements for a patent, it is not the instance that anyone wants. Or, the instance that justifies a patent may be easy to build but crappy for extended use or for mass production. Even if people want the benefit offered by the instance, they see that they will not get it. The hype is not reality.

“To the point of practical application,” then, does not have to do with actual reduction to practice or to building a prototype and testing it. Instead, it has to do with finding an instance of the invention that, when used, provides a benefit reasonably accessible to the public. The public (i.e., most any company or practitioner with ordinary skill, with sufficient financial resources) can benefit from the use of the instance. That is not the case, for these inventions that have some post-patent difficulty, without some form of “development.”

There’s one further aspect to this development of inventions made in a hole. Not only may it be expensive, risky, and difficult but also it may require further invention. One might have invented a new material for 3d printing, but to use the new material, one might have to invent improvements to a hot head to deliver the material for construction. This inventive development suggests that inventions can show up as patentable and still not be in a condition to use. The development that’s needed is not merely building an instance, or even adapting that instance for mass production, but rather that one has more inventing to do to get from an initial invention to the set of inventions necessary to realize any use or benefit from the original invention. Indeed, the “more inventing” invention might be the crucial one and a patent on the “basic” invention might serve to suppress work on that crucial one. In such cases, “development” becomes fancy word cover for “preventing others from discovering something crucial, even if you can’t.”

Inventions in an invention-hole may “work,” may be patentable, and may require inventive “development” that no one has the slightest idea how to accomplish. If an invention has value only if it can be mass produced, and no one knows how to make the equipment for such mass production, one can get a still get a patent–but there’s no way clear to bring the invention “to the point of practical application.” This is a huge problem. Inventions made by inventors who are not embedded in a design and making framework can invent stuff that requires huge effort to make useful. Call it “out of order” inventing. Or inventing out of context. Or inventing in a hole. Companies with current markets and production capabilities tend to invent with much less of a “hole” than inventors lacking context. One might ask, then, whether federal research support for “basic science” might end up with lots of inventions “in the hole,” lacking context, out of order for industrial use, requiring substantial “development” effort–that is, building a technical and production infrastructure to serve the invention rather than introducing an invention into an existing technical and production infrastructure.

It’s possible that some instances of an invention are “in the hole” and other instances of that invention are much closer to ready to for use. It’s just that the instances that one might be fixated on at the start may be those that are easy to imagine–and also possibly deepest in the hole. “If only technology was different, markets were different, people were not already committed to something else, and we had enough money to somehow buy change, then this invention would be the greatest thing ever. As it is, it is in one heck of a deep hole. But, um, oh yea, technology transfer.”

Development in the context of bringing an invention (already reduced to practice, patented) to the point of practical application means–somehow–inventing, building, supressing, and buying one’s way out of the invention hole. In such cases, the patent on the invention does not “protect” the invention–the problem is not free-riding on the invention since no one can use the invention in any practical way. The problem is solving the invention hole problem. If someone else–not the patent holder–solves this problem (or any part of it) and obtains a patent on this solution, then the patent holder is faced with a barrier to its own “development” of the invention. The patent holder on the solution can simply block the patent holder on the original invention from using the development invention–and it may be in the solution-holder’s interest to keep the original invention off the market. Or, the patent holder of the original invention and the patent holder of the solution invention work a deal and cross license, so then there’s no exclusive patent position for either one of them. The patent monopoly gets used up in the transaction, and the monopoly meme fails, and the patent does not “protect” the invention–patent rights is a currency that is exchanged only because it exists at all.  If there were no patent, then there would be no need to cross-license. And if patents were used only to create or augment a technology commons, then there might be incentives to collaborate: the sooner an invention hole got filled, the sooner anyone could gain the benefits of using the invention.

This discussion highlights how skew patentability is from what needs to be done (if anything) to get an invention out of an invention hole. The deeper the hole, the less likely any single person or company or even government has the resources to get out of the hole, and especially to buy one’s way out of the hole, as if access to vast amounts of wealth could solve the problem.

We might argue, then, that for inventions that aren’t in a hole–new and distinct plants that have been asexually reproduced, or research tools, or software methods–there’s no need for development or private capital to bring them to the point of practical application. They are already there. They were invented at the point of practical application.

For inventions that are in a hole, furthermore, we might argue that there is a depth beyond which an invention so lacks context and connection with existing technological and practice infrastructure that it will not get out of the hole within the time frame of a patent–twenty years. For inventions below this recoverable depth, it is worthless to use patents to suppress use because, well, there can’t be any meaningful use. To use patents to suppress “development” also works against development–rather than development taking place in parallel (whether competitively or collaboratively), isolating development for twenty years with only a patent holder makes little sense.

In the Kennedy patent policy, this recoverable depth was put at three years from the date of a patent issuing on an invention:

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

Beyond three years, make the invention (in all its instances) available to others for development–to get it out of the invention hole (or make a case why giving others access won’t serve the public good). And of course, if there was no hole in the first place, then all that three year window has done is delay public access. In a sense, the Kennedy patent policy allows contractors to use the patent system to delay public access for no more than three years. If in that time, a contractor can use the invention, then that’s the time frame in which the contractor can realize whatever value it feels it needs–and given that the invention has arisen in work supported by public funds, whatever that value is is gravy because the risk capital to support the research has come from the public, not from investors. The investment risk is very different–it is in the attempt to profit from the three year window of opportunity (if it is) in holding exclusive rights and then extending the opportunity to profit beyond this window, even without holding exclusive rights.

Even in this development, the Kennedy patent policy cannot resolve the problem that an invention is not a thing, that a patent does not in the general case claim only a single thing but rather claims a category of things–and that category could run to tens of thousands of things in the case of a category of chemical compounds, multiplied further by hundreds or thousands of applications, or methods of delivery, or functional equivalents.

Consider two definitions in the Kennedy patent policy:

Made–when used in relation to any invention or discovery means the conception or first actual reduction to practice of such invention in the course of or under the contract.

Here, the first actual reduction to practice of an invention is an instance. The invention (a category, in general) gets actual reduction to practice in the form of an instance. In the case of In re Eddie L. King, the inventor, King, conceived of a new coupling device for air transported pallets, built a prototype, and described the invention in a draft patent application. But King waited for the Air Force to test the new coupling on its crates before filing his patent application. The patent commissioner found that it was the Air Force’s testing that first actually reduced the invention to practice because it was the Air Force’s use that King had conceived as the function of the invention. Say what you will. But prototype instance King had built was not tested and the Air Force had tested plenty of candidate couplers and none had performed acceptably. Thus, even though testing was not necessary to obtain a patent–King filed his application without Air Force test data and was awarded a patent on his invention–the first actual reduction to practice was the instance of the invention involved in the Air Force’s test of the coupler. That was enough for the Air Force to claim it had a license to practice the invention–because it had provided the funding for the testing that demonstrated first actual reduction to practice prior to the filing of a patent application.

While instances of an invention may trigger the opportunity to obtain a patent and may alter the scope of interest in the invention, the instances are not the invention. Now look at this second definition in the Kennedy patent policy:

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 definition is directed at instances. Manufacture a product, to practice a process, to operate a machine. The invention (a category, a set) is brought to the point of practical application when any one instance of the invention is made, practiced, operated. Two distinctly different things are potentially going on here.

The point of the definition could be that if a contractor brings an instance of an invention to the point of practical application within three years, the contractor can retain exclusive rights to that instance for the duration of the patent. Or it could be that if the contractor achieves practical application for any one instance of the invention within three years, then the contractor retains exclusive rights over all instances of the invention claimed by the patent. The Kennedy patent policy does not appear to notice that these are significantly different possible interpretations.

In one, whatever instances the contractor can demonstrate that it has used within three years with benefits available to the public, the contractor can continue to have exclusive rights to just those instances–provided that the public continues to have reasonable access to the benefits of its use.

In the other, if the contractor achieves practical application for any one instance of the invention within three years, then the contractor can exclude the practice of all other instances of the invention for the remaining life of the patent.

In the first instance, the contractor gets exclusive control after three years only for those instances the contractor has made accessible to the public. In the second instance, making the benefits of any one instance reasonably accessible to the public allows the contractor to exclude–at its discretion–all other instances from public access.

The ambiguity of the usage here is not so much a flaw in drafting as a policy-based indifference to the distinction. There is no effort to distinguish retaining exclusive control over one instance in one area of application that meets the definition and retaining exclusive control over all instances because one instance in one area of application meets the definition. There’s not much point in asking what was intended–the answer is, nothing apparently was intended, other than to supply the contractor’s retention of principal or exclusive rights with an apparatus with the appearance of oversight. The apparatus was not intended to be used, and so no one spent any time working through what it meant. What contractor would sue the federal government because a federal agency had not properly marched in and required non-exclusive licensing?

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