Can an Internet Reference Be a “Printed Publication”?
Joanna Toke Much of the information to the public is provided by the Internet today. The Internet has also become increasingly popular among researchers who now turn to it for articles, journals, and online databases. Therefore, the question of whether an Internet reference is a “printed publication” is critical for today’s inventors, patent attorneys, and judges. It is important for inventors and patent attorneys because they decide whether to pursue a patent based on the existing prior art. It is likewise important for judges because judges may be asked to resolve a dispute where the party challenging a patent’s validity...
Utility Models and Their Comparison with Patents and Implications for the US Intellectual Property Law System
Hans-Peter Brack European Patent Office (EPO) practice, guided by the European Patent Convention (EPC) is in many aspects very similar to Europe’s national patent practice, such as the German patent law. In this article, the US practitioner is briefly reminded of some of the considerable differences between US Patent and Trademark Office (USPTO) patent prosecution practice and its European counterparts, primarily the EPO. The utility model is highlighted and discussed using the patent laws of Germany as a case study for comparison. Additionally, this paper examines the potential benefits of utility model protection in the US, as well as what...
Shopping for Expedient, Inexpensive & Predictable Patent Litigation
Kevin A. Meehan Intellectual property has experienced an explosion in recent decades as the value of American corporations has become increasingly reliant on intangible assets. This explosion is reflected in the massive increase in patents issued by the United States Patent and Trademark Office (“USPTO”) and the corresponding spike in patent litigation. Moreover, patent litigation has become a high stakes game that is time consuming and unpredictable. Faced with a system of patent litigation that most people agree is too expensive, too time-consuming, and too unpredictable, plaintiffs frequently attempt to capitalize on their virtually unencumbered choice of venue to shop...
Inequitable Results in Transnational Patent Infringement Liability: Closing the Method Loophole
Alejandro Valencia A set of recent patent infringement cases are primed to have major impacts and, some argue, inequitable effects on the current patent scheme in the United States. A problem has arisen concerning what kind of patent protection, or lack thereof, method and process patents should receive when certain steps of those methods or processes are implemented outside the U.S. Read literally, as the courts have, current law requires a method to have taken place in the U.S. for protection. But what results when a method or process patent is infringed partially in the U.S. and partially abroad? Should...
Was the FDA Exemption to Patent Infringement, 35 U.S.C. § 271(e)(1), Intended to Exempt a Pharmaceutical Manufacturer’s Activities in the Development of New Drugs?
Paul Wiegel Esq. The FDA exemption was not created to assist in the generation of new drug candidates, which are included in the broad interpretation of the “reasonably related” language by the Supreme Court in Merck. Applying the Supreme Court’s interpretation to the facts of Merck means that a pharmaceutical manufacturer may use the patented products and methods of another manufacturer to identify new drug candidates and not infringe. In fact there is almost no limit to what can be considered “reasonably related” to the development of information for submission to the FDA since a great deal of the research...
Remembering the Public’s Interest in the Patent System – A Post-Grant Opposition Designed to Benefit the Public
Eric Williams The problems associated with the existence of bad patents and the need for an effective, inexpensive vehicle for challenging them are nothing new. Over the past twenty-five years, several laws were proposed and passed intending to remedy these ills. Most recently, Congress introduced a bill aimed at curbing the adverse effects of bad patents, and prominent policy organizations and commentators advocated for, inter alia, the adoption of a new post-grant opposition as an antidote to the poison of bad patents. While these recent developments are certainly promising, without due attention given to the “advancement or social benefit gained...
Repairing the Bayh-Dole Act: A Proposal for Restoring Non-Profit Access to University Science
Aaron Miller The United States government invests billions of dollars every year in scientific research. Government agencies such as the Department of Energy, NASA and the Pentagon directly employ legions of scientists and engineers. The National Institutes of Health (NIH) funds a tremendous amount of biomedical research. Besides running its own labs, the NIH gives generous grants to hundreds of universities and medical schools, and to the thousands of research professors who fill them. The federal government today provides about 60% of the total research funding for America’s many prestigious research universities. In addition, the government pays private, for-profit contractors...
The Disruption of the U.S. Constitutional Symmetry of Intellectual Property to Gain Conformity with an International Property Framework: A Road to a Global Market or a Tripping Point to the Gradual Collapse of the U.S. Economy?
John C. Hughs In a spectrum of governments that range from totalitarian (dictator or communism) to tribal (without any central government), there is a unique form that provides a symmetrical balance between the government and the independent inventor; this symmetrical balance produces technological advancement. Once this symmetrical balance is discovered, it allows independent inventors to have secure and unchangeable protection from the federal government that facilitates the courage and mentality to take risks of time, effort and wealth. The willingness of free inventors to take a chance on the free market without government intervention but with inventor controlled government exclusionary...
Foreseeability as a Bar to the Doctrine of Equivalents
Jeremy T. Marr Several opinions in these cases suggest that a patentee should not be able to invoke the doctrine of equivalents to obtain protection from equivalents that one skilled in the art would have reasonably foreseen before the patent issued. Federal Circuit Judge Rader, in particular, is a strong advocate of such a “foreseeability bar.” The United States and the Institute of Electrical and Electronics Engineers (IEEE) also advanced the idea in their amici briefs to the Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyu Kabushiki Co., the Court’s latest case involving the issue. The Court’s opinion in...