Science in the Wild: Episode 32
The role of the law in the business of science and technology
Click here to listen to the interview on UR Business Network
In this episode, Gary and Nathan explore the relationship between science and business in the context of patent law. Their guest is Beverly Hjorth, an intellectual property attorney at McLane, Graf, Raulerson & Middleton. Her practice includes the prosecution of U.S. and foreign patent applications, U.S. and foreign trademark prosecution, and related matters such as opinions, licensing, audits and occasional copyright matters. She practices particularly in the fields of mechanical engineering, environmental engineering, materials, medical devices, optics, manufacturing, and structural and civil engineering.
Beverly has written and prosecuted hundreds of patent applications for clients of all sizes, from individual inventors and small and medium sized enterprises to large corporations and universities. Prior to attending law school, she was a Patent Examiner with the U.S. Patent and Trademark Office examining patent applications in a mechanical art unit. Beverly received her B.S. in Civil Engineering from Lehigh University, her M.S.E. in Civil Engineering from Princeton University and her J.D. from Boston University School of Law.
Beverly talked with us about the differences and interrelationships between the roles of patent examiners, patent agents, and patent attorneys as well as the education and licensing required for these positions. She explained the fundamental concept of prior art, common in discourse among these intellectual property professionals. This led to a fascinating discussion about the notion and practices of abstraction in patent law. Evidence about prior art is central in assessing novelty and nonobviousness, two essential criteria for patentability of subject matter. Even if an invention is novel, it also must be the case that it can’t be obvious from a combination of other prior art. We discussed the resulting acumen that is required in the law in dealing with abstraction. We considered the similarity between the law and science in this regard.
As in science, the law harnesses abstractions over time by exploring similarities and differences among more concrete concepts across different situations (putative precedents). Abstractness itself is an object of such iterative re-examination insofar as abstract ideas are an exception to what is patentable. Beverly talked about a recent U.S. Supreme Court case that addressed abstractness in the context of computer software. She mentioned the precedent in the U.S. Supreme Court case that addressed products of nature and the patentability of gene sequences. The intersection of the law with scientific understanding and technical innovation clearly is a lively area of collective advancement of knowledge that is extremely relevant to contemporary business. We will continue to explore these intersections on Science in the Wild.
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Key Terms and Concepts
· Patent examiners
· Patent agents
· Patent attorneys
· Prior art
· Patentable subject matter
· Usefulness
· Novelty
· Nonobviousness
· Abstractness
