Patenting FLASH 1
While Frahm and his team were eager to share their FLASH technology with the academic world by submitting papers to scientific journals and conferences, they were also aware of the commercial value of their invention and the need to obtain patent protection for it.
What should you take into account if you want to file a patent application for your invention and disclose it in a scientific publication?
Bearing in mind the details of the case, where would you have filed the patent application for the FLASH technology?
On the day of the invention, which was made on the morning of Friday, 8 February 1985, Frahm contacted Munich-based Garching Innovation (now Max-Planck-Innovation GmbH), the IP company responsible for advising the Max Planck institutes on patent-related matters, who sent a patent attorney to visit Frahm’s team on the following Monday. A patent application was drafted on the train back to Munich and, on Tuesday, 12 February, just four days after the invention was made, the first FLASH patent application was filed at the German Patent Office in Munich. As a result, any scientific report submitted after this date would not be considered as disclosing the invention, nor would it be novelty-destroying prior art for the FLASH patent application.
The German Patent Office was chosen because of the team’s familiarity with the German patent system and the desire to secure the invention as quickly as possible. Within a year, further patent applications were filed at the European Patent Office and in the United States, Israel and Japan, all claiming priority from the German application, to get protection for FLASH in the home countries of the major MRI manufacturers (Siemens, Philips, Toshiba and General Electric) and their main markets.
The long road to commercialisation
At a worldwide MRI conference in London in August 1985, a presentation on FLASH was attended by representatives from all the medical MRI manufacturers. A few months later, the first medical MRI systems using FLASH technology appeared on the market. The FLASH patent was granted in the United States in November 1987 and by the European Patent Office in November 1989. Not long afterwards, Garching Innovation sent letters to all potential infringing parties to offer them licences for the FLASH patent in Europe and the United States.
What means of attacking the FLASH patent did the infringing parties have if they wanted to avoid paying licence fees?
In 1990, General Electric, Siemens and Philips opposed the FLASH patent before the European Patent Office and requested its revocation. At the same time, Philips started a nullification action against the US FLASH patent, followed by General Electric in 1992. The legal battle which ensued lasted until 1997, when the FLASH patent was maintained in all jurisdictions. The patent and litigation costs for the Max Plank Society totalled EUR 1.5m. However, by the end of 1997, almost all medical NMR manufacturers had acquired licences for FLASH, making it the Society’s most valuable patent, bringing in more than EUR 150m before it finally expired in 2006.
Frahm and his co-inventors were heavily involved in the litigation procedure. They assessed documents, prepared written statements and attended oral proceedings to give expert advice. Frahm even had to postpone his habilitation until it was all over. However, it was definitely worth the effort, considering that inventors at the Max Planck institutes are entitled to 30% of any income from licences.
The success of FLASH had a tremendous impact on both Garching Innovation and the Max Planck Institute for Biophysical Chemistry in Göttingen, leading to changes in practice at the Max Planck Society and in the industry:
- investment of licence revenues in further research
- establishment of an early invention notification culture
- change in perception of the Max Planck Society by industry
For example, 36.6% of the licensing income was awarded to the Max Planck Institute in Göttingen. The money was used to set up Biomedizinische NMR Forschungs GmbH as a non-profit organisation supporting Frahm’s MRI research and to invest in new buildings and state-of-the-art MRI infrastructure.
Within the Max Planck Society, the success of FLASH raised researchers’ awareness of the importance of patenting commercially promising inventions. Furthermore, in order to avoid the risk of accidental disclosure before filing, an early invention notification culture was established under which inventions are generally notified to the IP experts six weeks before public disclosure.
The long and ultimately successful litigation surrounding FLASH also changed the way the Max Planck Society is perceived in industry. Previously, companies did not expect a public research facility to defend its intellectual property rights, so they either used their power to negotiate low licence fees or intentionally infringed patents. After the FLASH litigation cases, the Max Planck Society was recognised as a strong patent licencing partner capable of vigorously defending its rights. This put Garching Innovation in a stronger position for patent licence negotiations.