Government and Law

Patents can be ‘gray area’

Supreme Court decision made securing patents for computer-related inventions more difficult, but not impossible, IP lawyer says.

May 26, 2017
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A local intellectual property lawyer is celebrating today after helping a company secure a patent for a medical device that allows patients to go through withdrawal from opioid drugs in 20 minutes instead of a week.

Jeff Michael, a partner in the Grand Rapids office of Barnes & Thornburg and a member of the firm’s intellectual property and technology practice group, said he assisted Versailles, Indiana-based Innovative Health Solutions in obtaining a patent for its Neuro-Stim System Bridge, or Bridge device, effective today (May 30).

Michael said the device, “a really, really cool invention,” stimulates the nerves in the brain associated with pain and fear, shortening the period of sickness and motor tremors opioid-dependent adults typically experience during withdrawal.

“The exterior part of your ear … has all sorts of neurovascular bundles in there that, if you can tap into them, it acts as a USB connector to your brain,” he said. “If you can tap into those neurosignals, it can turn down the pain sensors in your brain.”

According to an article published in The American Journal of Drug and Alcohol Abuse, St. Louis, Missouri-based addiction specialist Dr. Arturo Taca conducted a study on 73 patients at outpatient drug treatment clinics in five states, and 64 percent were able to transition successfully to medication-assisted therapy after five days of wearing the device. Most were pain-free after one hour.

“The question I get a lot is, ‘What’s the coolest invention you’ve worked on this year?’” Michael said. “As a practitioner, you live for these kinds of things.”

But the road to patent procurement isn’t always easy.

Michael concentrates his IP practice mainly on electrical and computer patent preparation and protection. A 2014 Supreme Court decision, Alice Corp. v. CLS Bank International, or Alice, narrowed the scope of patentable subject matter in the area of computer-related inventions, determining that many times, inventions in that category fall under the “abstract ideas” judicial exception.

Translation: If a claimed invention consists of “mental processes and mathematical algorithms,” according to the U.S. Patent and Trademark Office, it is not eligible for a patent, because those are abstract ideas rather than machines or physical, utilitarian items.

While the abstract ideas exception is not new, as technology proliferates, the Supreme Court has seen more cases fall into gray areas and sought to narrow the scope in the Alice decision.

“In recent times, the Supreme Court has said software falls into the abstract idea exception,” Michael said. “We’re all trying to figure out what is and is not patentable.

“Sometimes software is patentable and sometimes not. It’s context-specific. There will be cases where computer-related inventions will be something that rises to the level of there is some usefulness or utility to it, and other times, there is not that level of usefulness. It’s a gray area for us practitioners.”

Michael said he thinks the restrictions placed on software inventions in the Alice case already are loosening.

“Patent holders and patentees are petitioning the court, and it’s creating a paper trail, so we can follow those who have been successful in getting and keeping patents,” he said.

But he believes the courts will need to ease restrictions even more in the future.

“You look at the history of consumer goods, and for a long time, things were purely mechanical. Look at furniture, for example — the furniture in your house. It does not have too much in the way of electrical components. But I think we’ll be looking at that in the not too distant future, where your devices will be hooked up to your furniture.”

Michael said watching shows like “Shark Tank” makes him “nervous.”

“People bring their inventions to get someone to invest in them — or usually not. I guess it’s good TV, but it makes practitioners like me nervous. You really shouldn’t go public before you secure your patent.”

He said patent seekers should educate themselves by reading about patent laws set forth by the Office of Patent Legal Administration in the U.S. Patent and Trademark Office.

“The best way (to learn) is to use the internet and start looking around for patent firms to help you,” he said. “Another way is if you happen to already have a lawyer, most lawyers have a good idea and can get you to other patent lawyers.”

Despite the gray areas Michael navigates, he said the work is all worth it when moments like today roll around and he gets to see devices approved that might change lives.

“On the best day, (patents) can really help people, and this one does.”

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