Why Biotech Patents Are More "Scientific."

You may have noticed, while reading through the patent literature, that some patents read like magazine articles (well, almost) and some are nearly indecipherable, even to experts. Biotechnology patents fall into a third category—"scientific"—meaning they are extensively referenced to journal articles, government reports, and other non-patent documents. In other words, these patents read like the introductions to journal articles.

I recently noted my interest in a patent claim, involving the use of sperm, where the length of claim 1 was fairly short while citing a large amount of non-patent prior art. A patent lawyer sent me the following explanation of why this might be:

"The short-claim-long-prior-art patent reflects a few differences in practice [between biologists and other patent-seekers].

"First, biologists have Medline, a relatively thorough and inexpensive electronic index of the chemical and biological literature. As far as I know, no analogous electronic index of the mechanical/electrical/computer arts exists. Also, inventors in the chem/bio field generally are well-read in the literature, inventors in the mechanical/electrical/computer fields are not. Thus, it's easy for a chem/bio patent application to present much relevant prior art; it is difficult and disproportionately expensive to develop good prior art lists for a mechanical/electrical/computer application.

"Second, this reflects a difference in the practical patent law between the mechanical/electrical/information arts vs. the bio/chemical arts. Because many examiners in the chem/bio groups have real experience in the field, they want patent applications to "look like" the literature articles they grew up on—long background surveys. The mechanical/electrical/computer fields face a different group of examiners (and a different group of infringers' litigators), and thus a long background does nothing to help, and much to hurt the patentee.

"Recall that the Background is not mentioned, let alone required, in the Patent Act nor in the Rules of Practice. It's only a recommendation from the editor of the MPEP. As a practical matter, whenever the Background becomes a factor in a litigation, it is always to the detriment of the patentee. Thus, my backgrounds are always very short, often only one or two sentences."

Greg Aharonian takes a critical—often cynical—look at patents and patent policy in his Internet Patent News Service.

For more information: Greg Aharonian Publisher/Editor, Internet Patent News Service. Tel: 415-981-0441.