Patent Keys

Case Studies

Method Patent

On a cold night in Chicago, a young man was driving around his neighborhood searching in vain for a parking spot for his 1991 Toyota Previa. Everywhere he looked, empty parking lots taunted him with their "No Parking" signs at the bank, next to the grocery store, across from the post office. Finally, after parking many blocks away and trudging home through the snow, he knew he had to find a way to make parking better.

That young man, Cooper Marcus, a graduate business student, solved the problem by developing a new parking method.

He later created a business to solve the world's parking needs. Cooper's company is called Spark Parking. On March 8, 2006 Cooper applied for a Method patent for his parking innovation.

Product Patent

On a summer day, Dan Brown's son came to him looking for pliers to replace a bike tire. Dan's immediate concern was that the pliers would strip the bolt. Wouldn't it be nice if there were a tool as easy to use as pliers that would not damage a hexagonal bolt? Dan was reminded of the shape of a camera shutter closing in on a central area from all directions. He realized that a wrench could operate in a similar way.

Dan Brown founded Loggerhead Tools with the Adjustable Gripping Tool technology protected and disclosed by his U.S. Patent 6,889,579. He later successfully marketed that technology as The Bionic WrenchTM.

What happens when you don't fully disclose

In 1992 a team of researchers at the U. of Rochester led by Donald Young discovered and cloned the gene that produces cyclooxygenase-2 (COX-2). COX-2 is an enzyme that promotes inflammation. In its 1992 patent filing, the U. of Rochester described a technique for identifying compounds that suppress COX-2 and suggested they could be used as pain killers without the side effects of inflammation.

In 2000 the University obtained U.S. Patent 6,048,850. When the patent issued, the University sued drug companies Pharmacia and Pfizer, makers of the top-selling COX-2 drug CelebrexTM. The University expected to reap millions in licensing fees.

When the battle went to court, the judge invalidated the University's patent, because it failed to satisfy the enablement requirement. The patent was viewed as a reach through patent, or one that claims to obtain a result (no inflammation) without showing how the result is obtained. The University's disclosure was faulty because it never disclosed the structure of the chemical compound. The court said:

"It means little to invent a method of painkilling if one does not have possession of a substance that is essential to practicing that method."