Legal Question in Intellectual Property in New York


The company I work for, a non-profit bone marrow donor center, is interested in developing and patenting software for a kiosk machine that would allow people to register as a bone marrow donor. The person using the machine would enter all their personal information via the kiosk, and then later be sent a swabbing kit in order to swab their cheek to then be put on the national registry. My understanding is the software used in kiosk machines is patentable, but would such a patent also prevent other bone marrow donor centers from using the same technology to register donors for their center? In other words, would they be allowed (legally) to use the same method for registering bone marrow donors (via a kiosk) or would a patent protect that specific method of registering bone marrow donors? Thank you!

Asked on 10/11/11, 11:22 am

2 Answers from Attorneys

Roman Fichman Esq. Law Practice of Roman Fichman Esq.

It is impossible to answer the patentability of this without first going through a detailed analysis of the claims that are made by the developers and searching for other similar patents. This is a process that an attorney is best suited to undertake.

It is important to note that recently patent law has been changed. Whereas in the past one could publicly unveil an invention and have a grace period of 1 year to officially patent it, under the new law an invention must first be registered, either through a patent or a provisional patent application. Otherwise the invention will likely not be patentable.

Feel free to contact my office at your earliest convenience to begin the process.

Roman R. Fichman, Esq. │ @TheLegalist

email: Info (@) TheLegalist (dot) com

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Disclaimer: This post has been written for educational purposes only and was not meant to be legal advice and should not be construed as legal advice or be relied upon. The post may contain errors, inaccuracies and/or omissions. You should always consult an attorney admitted to practice in your jurisdiction for specific advice. This post may be deemed as Attorney Advertising.

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Answered on 10/11/11, 11:34 am
Gerry Elman Elman Technology Law, P.C.

Mr. Fichman is correct that the U.S. patent law was recently amended. Namely on Sept. 16, 2011, Pres. Obama signed the Leahy-Smith America Invents Act. However, let me correct some inaccuracies in his (perhaps hastily written) post.

First is that the change from the present practice of "first to invent" to a "first to file" regime won't take place until 18 months from the date of enactment. The second is that the 12-month grace period from an inventor's disclosure until it's too late to file won't be removed even by the new "first to file" regime when it takes effect. It is true, however, that there is ambiguity in the language of the statute that leads to questions as to whether the grace period would continue to apply to such things as an "offer to sell" an embodiment of the invention.

I wouldn't assume that "the software used in kiosk machines is patentable." It's a question that can't be determined without examining the "prior art" and knowing whether the subject matter of a proposed patent claim would be identical to or obvious from pertinent references in the prior art.

On the other hand, it's virtually certain that freshly written programming to run the kiosk machines would be protectable by COPYRIGHT and that anyone who duplicated such software without authorization would violate the copyright of the owner.

The other question you raise seems to be whether a claim that's broadly drawn to a method of registering bone marrow donors via a kiosk would prevent other centers from using a kiosk running similar but differently programmed software to register donors for their center. There are a few different facets to this gem of a question.

Facet 1: Would a claim that recites the steps of providing a kiosk to allow a prospective bone marrow donor to enter personal data, and then sending the prospective donor a swabbing kit, and then receiving the sample and processing it for a bone marrow registry be patentable?

Perhaps the subject matter of the claim(s) would be found to be obvious from the prior art, but for discussion purposes, let's assume that the prior art wouldn't make such subject matter obvious to a person having ordinary skill in the art.

Next, we'd need to consider whether this method would be deemed a mere abstract idea, pursuant to the Supreme Court's decision last year in Bilski v. Kappos. Visit our blog at for an explanation of that case.

For good news, see the case of Prometheus v. Mayo, where a medical diagnostic procedure was held by the Court of Appeals for the Federal Circuit last December to be patent-eligible subject matter, despite the holding in Bilski. Yet that won't be the last word on the subject, as the Prometheus case is scheduled to be argued before the Supreme Court this December. Stay tuned.

Facet 2: If such a claim were validly granted, would a U.S. district court grant an injunction preventing an unlicensed donor center from performing the patented method?

Before granting such an injunction, a court would apply equitable principles to decide the question. If it were not in the public interest to allow a single donor center to monopolize the kiosk technique, then a judge should take that into consideration. The 2006 Supreme Court case of eBay v. MercExchange would guide.

Also the judge should consider whether the claimed invention would be deemed a medical procedure that, pursuant to an amendment to U.S. patent law enacted in 1996, prevents enforcement of a patent claiming a medical procedure against a health care provider.

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Answered on 10/11/11, 12:44 pm

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