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5 Questions for David Casimir
In the fall of 2020, longtime patent attorney David Casimir started a non-profit organization called Porta Sophia along with co-founder Bill Linton to fight what they consider to be “bad” patents on psychedelics. The two men met during a long-running patent battle: Promega, a Wisconsin-based biotech company where Linton was founder and president, was trying to fight off a lawsuit from the pharmaceutical giant Roche over alleged patent violations related to PCR tests used in genomic testing, and, of course now in Covid-19 testing.
Nearly two decades later, Linton and Casimir were still in touch. In 2014, Linton founded Usona Institute, a non-profit that supports and conducts clinical trials on psilocybin and other psychedelic drugs, and as he and Casimir chatted about his work, he described some recent psychedelic patents that had been granted by the U.S. Patent and Trademark Office. Casimir was intrigued, and began reading about it himself — and they agreed that some of the granted patents seemed “overly broad,” as Casimir puts it. The two decided to find a way to preempt future bad patents.
By January 2021, Casimir and Linton had assembled a team of volunteers and an intern to create a “prior art library,” a database of psychedelics patents, papers, and articles that patent examiners (and anyone else who wants to challenge a patent) can draw on to determine whether a submitted patent application is truly novel and inventive.
Porta Sophia now has two full-time employees, a handful of part-time workers, and a volunteer team of around a dozen data curators, software engineers, professional archivists, and attorneys who meet weekly to keep the database growing. The Microdose spoke with Casimir about the role Porta Sophia might play in the psychedelics patent application process.
What does the name Porta Sophia mean, and why did you choose it for this organization?
It means “Doorway to Wisdom” in Greek and Latin. The premise of Porta Sophia is to bring the wealth of information that exists out there about psychedelic technologies and practices across history into a form that the public can easily find. We're a doorway; we're providing this portal to information, wisdom, history, and knowledge in this field.
What is prior art and how does that affect the likelihood a patent will be granted?
Prior art refers to what information existed prior to someone filing a patent application. That counts against whether that application should be granted or not. For a patent to be granted, it needs to meet a number of requirements. Two of those are that it has to be new, meaning no one's done it before, and it has to be non-obvious, meaning that even if no one's done it before, it's not a simple derivation of something that would be obvious based on what came before. And so how do we know what's been done before? That’s what prior art is all about.
It's defined legally in the United States by statutory language; there's a law written down, it's U.S. Code 35, Section 102 and 103 that defines “prior art.” It's quite a few words, but it gives the categories of things that count: things like publications, public knowledge, prior commercialization, offer for sales or sales of a particular technology, use of a technology. And they actually changed it in 2011, when they threw in this catch-all phrase: “...or otherwise publicly known.” There are lots of legal fights about what are the exact boundaries but what it comes down to is any information that is accessible to someone in a particular technical field, if they can find it, that counts as prior art. It has to be available before the patent application is made and generally accessible to someone in the technical field looking for that information.
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Why would it be useful for a database like Porta Sophia to make that prior art more easily available and searchable?
If you look at how the patent office tends to review prior art, they typically use a series of internal databases at the patent office. Primarily what they're looking for is scientific literature — typically peer reviewed literature — and prior patents. In the field of psychedelics, a lot of the work, especially historically, did not appear in peer-reviewed literature. There’s a big gap in the 1900s where there wasn't any peer reviewed literature because the drugs became illegal; research went silent. Likewise, hardly anyone filed patents on psychedelics, because typically, you file patents if you're going to commercialize something, and you couldn't commercialize these compounds because they were not legal. So we have this huge knowledge gap in the traditional sources of prior art that the patent office would look at.
But there's not a gap in public information; it's just found in nontraditional places. So the idea behind Porta Sophia is to collect it in all of its locations and bring it together.
Do you know if patent examiners are actually using Porta Sophia in their work?
We've done a lot of research into this. We try to be very analytical about what we're doing, and try to be as efficient as possible to make the tool useful — and used.
To look at how examiners have been using prior art, we looked at their reviews; if we saw a bad patent get granted, we'd look at the history of the patent. All of the information about what the examiner searches is public as part of the patent, so we looked at the searches they did. In some cases, they did literature searches and didn't find anything; we repeated them as a sort of double check, and they were correct that information was not there. But in some cases, we had it in our database, because we have info from nontraditional sources. [Editor’s note: Some examples on “nontraditional sources” include collections of personal papers in university archives, articles previously published in small, now-defunct magazines, TED talks, and newsletters from MAPS.]
So we tried to figure out, how do we get the patent office to use this info? We identified every single patent application in the field. There are hundreds of them; we isolated all of them, and we analyzed them for which ones were granted but maybe shouldn't have been granted, and what technology areas do they touch on, and what examiners are reviewing those? It turns out there's a fairly small number of patent examiners handling most of these cases.
We’ve reached out to the patent office directly to get Porta Sophia incorporated into their internal databases. That has not happened yet. That's something we'll continue to try to do. There's a certain amount of bureaucracy to it, but we quickly determined that because we're talking about a finite number of examiners and a finite number of patents and patent applications, we can actually look at all of them, so the most effective approach is going to be a targeted one. What we've been doing recently is what are called third party comments; for patent applications in the queue that we think have the potential to generate an overly broad patent, we are compiling all the prior art ourselves, and we're actually directly submitting it in written form to the patent examiner handling that case. It's in our database as well, so anyone can look it up, but we're making it so they don't even have to go to Porta Sophia to do the search, if they don't want to. We've done the search for them and are serving up the information for them.
After one of the first third party submissions we filed, we saw direct action a week later. After our submission was received by the patent office, the patent owner was notified that it was filed, and right after, they filed an amendment to narrow their claims. It’s perhaps still too broad, but we'll see how that pans out.
Beyond bringing this information directly to patent examiners, what else is Porta Sophia working on in coming months?
We don't have all of the information that's out there in the system yet, so we’re continuing to grow and expand. So far, we've focused on certain areas that seem to be the hottest areas of patenting to start off with, drug classes like psilocybin. We've also focused on key medical indications that people are targeting in their patents: applications for PTSD, depression, addiction, headaches, allergies, the types of things that have caught some attention in the news based on things people are trying to patent.
But we have a long list of additional information we want to gather and get onto the site, like information about the dozens of drugs that might be less famous. And if people know of other medical benefits that they're aware of, maybe because they've had a personal experience, load that up on us! Especially if they're aware of some prior art. Basically, we’ve started with big picture stuff and eventually we want to capture everything.
We're also looking at making our searches easier to use and more flexible, and we're going to be compiling information in different ways: we're looking at potentially putting together some graphical information like timelines that make it really easy to sort of visualize some of the history. So we've got a lot of new stuff coming that's going to make the site more informative and easier to access.
This interview has been edited and condensed for clarity and length.