As many members of the Pierce Law community know, Professor Karl Jorda was recently inducted into the Intellectual Property Hall of Fame. What does it take to make it into the IP Hall of Fame? Professor Jorda answered a few questions about his experiences as an IP attorney in over three decades of corporate practice and 18 years in academia.
Unlike many chief IP counsels, Jorda kept his own patent docket so he would be aware of what the attorneys under his supervision were facing in dealing with the USPTO.
Jorda says the most interesting problem he worked on during his corporate practice was the protection of atrazine while at Ciba-Geigy, which required the use of patents, trade secrets, and trademarks. Because other chemicals of the same genus were prior art, Ciba-Geigy patented only atrazine's use as an herbicide, not the compound itself. This is generally considered an inferior method of protecting an invention, but during the 17-year term of the patent, none of the company's competitors were able to invalidate the patent or invent around it, despite sales levels which inspired many attempts to do so. Ciba-Geigy further patented many of the processes used to produce atrazine, so competitors could not produce it as efficiently when the patent expired. Some of these patents were on the computer programs that ran the factories used to produce atrazine, and they were granted even though computer programs were not as widely acknowledged to be patentable as they are now. Ciba-Geigy kept other portions of its processes secret, which almost became problematic when seven patents were issued to an Italian company on the processes. A prior user who kept an invention secret still has the right to use it after a patent is issued to someone else, but proving prior use can be costly and time-consuming. Rather than go through the legal battles, Ciba-Geigy simply bought the Italian company. Like all patents, the one covering atrazine eventually expired. Because atrazine was a brand name rather than a chemical name, the owner of the name would normally be the only company allowed to sell atrazine under that name. But it sold so well during the life of the patent that by the time it ended, atrazine was recognized as a generic term, so Ciba-Geigy had to invent a new trademark, Aatrex, to sell it under.
That was all in the distant past. Jorda has been a professor for the last 18 years and has given over 300 talks during that time, about 1/3 of them on licensing and technology transfer. He says his greatest contribution to IP scholarship is teaching students practical skills they can actually use. Case in point: About six weeks into a former student's career, the student contacted Prof. Jorda and told him that a partner at the student's firm had told him he was working at the level of a 3rd or 4th year associate, which he attributed to the skills taught in Prof. Jorda's classes and others taught at Pierce Law.
Unlike many chief IP counsels, Jorda kept his own patent docket so he would be aware of what the attorneys under his supervision were facing in dealing with the USPTO.
Jorda says the most interesting problem he worked on during his corporate practice was the protection of atrazine while at Ciba-Geigy, which required the use of patents, trade secrets, and trademarks. Because other chemicals of the same genus were prior art, Ciba-Geigy patented only atrazine's use as an herbicide, not the compound itself. This is generally considered an inferior method of protecting an invention, but during the 17-year term of the patent, none of the company's competitors were able to invalidate the patent or invent around it, despite sales levels which inspired many attempts to do so. Ciba-Geigy further patented many of the processes used to produce atrazine, so competitors could not produce it as efficiently when the patent expired. Some of these patents were on the computer programs that ran the factories used to produce atrazine, and they were granted even though computer programs were not as widely acknowledged to be patentable as they are now. Ciba-Geigy kept other portions of its processes secret, which almost became problematic when seven patents were issued to an Italian company on the processes. A prior user who kept an invention secret still has the right to use it after a patent is issued to someone else, but proving prior use can be costly and time-consuming. Rather than go through the legal battles, Ciba-Geigy simply bought the Italian company. Like all patents, the one covering atrazine eventually expired. Because atrazine was a brand name rather than a chemical name, the owner of the name would normally be the only company allowed to sell atrazine under that name. But it sold so well during the life of the patent that by the time it ended, atrazine was recognized as a generic term, so Ciba-Geigy had to invent a new trademark, Aatrex, to sell it under.
That was all in the distant past. Jorda has been a professor for the last 18 years and has given over 300 talks during that time, about 1/3 of them on licensing and technology transfer. He says his greatest contribution to IP scholarship is teaching students practical skills they can actually use. Case in point: About six weeks into a former student's career, the student contacted Prof. Jorda and told him that a partner at the student's firm had told him he was working at the level of a 3rd or 4th year associate, which he attributed to the skills taught in Prof. Jorda's classes and others taught at Pierce Law.
Subscribe to the Reporter