Subject
Author, Title Vol. Iss. Pg. Year
Summary of Article
Conflicts of Interest in Representing IP Clients
Dolak, Lisa, Risky Business: The Perils of
Representing Competitors 30 4 413 2002
This article addresses the risks involved when lawyers and law firms represent multiple clients in intellectual property matters involving related technologies. Several recent malpractice actions against intellectual property practitioners involve allegations of injury to clients as a result of a firm’s simultaneous or consecutive representation of competitors. In addition to minimizing malpractice exposure, firms representing competitors must also consider the obligations imposed by the rules of professional responsibility—both the applicable state ethics rules and the rules of the U.S. Patent & Trademark Office. As the demand for experienced and sophisticated intellectual property practitioners grows and the trend toward law firm consolidation continues, potential "subject matter conflicts" present new challenges.
Copyrights - Computer Code
Gomez, Eduardo, "Pure Speech or
Expressive Conduct?": The "DeCSS Saga" and the
Inconsistent Treatment of Computer Code
Under the First Amendment 31 2 231 2003
This article addresses the inconsistencies in First Amendment jurisprudence regarding computer code under the Digital Millenium Copyright Act ("DMCA"). One California appellate court held that computer code was "pure" speech and therefore deserved full First Amendment protection. The Second Circuit, on the other hand, employed a functionality analysis and held that the code was expressive conduct. Therefore, computer code did not enjoy the full scope of First Amendment protection and regulations need only meet intermediate scrutiny to pass constitutional muster. This article concludes that the most appropriate test for copyright infringement relating to computer code is the functional analysis test used by the Second Circuit.
Copyrights - Software
Cosovanu, Catalin, Piracy, Price Discrimination, and
Development: The Software Sector in Eastern
Europe and Other Emerging Markets 31 2 265 2003
This article analyzes how the strengthening of intellectual property regimes in Eastern Europe and other emerging markets has failed to deliver on the much-touted promises of increasing high-technology foreign investment and faster development of homegrown information-intensive industrial sectors, especially with respect to the software industry. Considering the economics of developing and marketing software products, local programmers have little to gain from stronger copyright protection in their domestic markets, and this situation is not likely to change soon. The technological level of foreign investment and its global pattern (advanced research and development in the core, unsophisticated and low margin work in the periphery) is also unaffected by the local level of copyright protection. At the same time, piracy has become a necessary evil for the diffusion of software that is legally priced beyond the reach of most local users. Price discrimination could have provided a solution for this conundrum, but there are important economic and political factors that support the status quo, although the much-feared parallel imports are less of a problem than expected. Nevertheless, significant technological and cultural developments should make the actors involved less comfortable about the status quo. These problems clearly require more innovative thinking. Open source software is likely to be a significant part of the answer, but implementing this solution will require serious efforts to change the current approaches of governments in developing countries and of international organizations involved in development assistance.
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Criminal Counterfeiting
Peterson, Debra, Criminal Counterfeiting and
Component Parts: Closing the Perceived
"Label Loophole" 30 4 457 2002
This article analyzes the failure of the criminal trademark infringement statute, 18 U.S.C. § 2320, to address a modern counterfeit trend whereby criminals traffic trademarked component parts of a host product without fear of criminal liability. The article illustrates this point by examining the decision of the Tenth Circuit in United States v. Giles and argues that the court’s narrow interpretation of § 2320 encourages counterfeiters to traffic unassembled products to the disadvantage of trademark owners. The article states that a proper reading of § 2320 would consider unassembled parts of a complete product as "goods," thereby affording trademark owners the necessary protection for their products.
Miscellaneous
DiGrazio, Jeanne Andrea, A Method for
Comparing One to a Summer Day
(Dedicated to the Efforts of Patent Lawyers Everywhere)
Inventor: Mr. William Shakespeare 30 2 161 2002
This sonnet recites claims for a method for comparing one to a summer day.
Patents - Industry Standards
Cowie, Michael & Joseph Lavelle, Patents
Covering Industry Standards: The Risks to
Enforceability Due to Conduct Before
Standard-Setting Organizations 30 1 95 2002
This article reviews the applicable law and case decisions relating to the enforcement of patents covering industry standards. The article reviews the applicable legal theories that have been raised in this context, including patent laches, estoppel, and misuse, as well as violations of the antitrust laws, RICO, fraud, and other common law theories. The article also addresses the case law relating to the question of what constitutes a reasonable, non-discriminatory license in cases where the standards organization requires such licensing. The article attempts to review objectively the current state of the law rather than to advocate any particular view as to the direction the law should take.
De Vellis, James, Patenting Industry Standards:
Balancing the Rights of Patent Holders with the
Need for Industry-Wide Standards 31 3 301 2003
This article analyzes the tension that arises with the application of patented technology in industry standards and suggests an existing policy approach to balance these opposing interests. The article examines the broad scope of the incentive-based U.S. patent system, highlighting the need for exclusivity as a key factor in the ultimate goal of motivating further technological development, and illustrates the benefits of industry standards while demonstrating how they clash with a patent holder’s right to exclude. The two prevalent policies guiding the incorporation of patented technologies into industry standards: royalty-free ("RF") and reasonable and non-discriminatory licenses ("RAND") are discussed with the author concluding that the RAND policy approach is the most beneficial to the two competing interests by encouraging the industry to adopt a more advanced standard while preserving a patent holder’s incentive to foster additional development.
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Patents - Pharmaceutical
Allen, Nadja, When Does the Clock Begin
Ticking? Interaction of the Hatch-Waxman
Act of 180-Day Generic Abbreviated New
Drug Application and Food and Drug
Administration Modernization Act Pediatric
Exclusivity Provisions – A Significant Issue
in Elli Lilly & Co. v. Barr Laboratories, Inc. 30 1 1 2002
This article examines when the 180-day generic ANDA period of market exclusivity begins and its usefulness in light of the pediatric exclusivity period using Eli Lilly as a case study. The pediatric exclusivity period is a six-month patent extension to drug manufacturers that conduct FDA-approved pediatric research. This article argues that the exclusivity periods should run consecutively, keeping with the original spirit of the Hatch-Waxman Act, to reward generic companies with 180 days of market exclusivity for successfully challenging innovator patents. In addition, the article (1) highlights important aspects of the Hatch-Waxman Act and the pediatric exclusivity provisions; (2) briefly summarizes Eli Lilly & Co. v. Barr Laboratories, Inc.; (3) explains the timing and policy issues surrounding the interaction of the two provisions; (4) explores the considered outcomes and scenarios of the generic/pediatric exclusivity timing problem; (5) reviews existing Hatch-Waxman case law, which overwhelmingly suggests a narrow reading of the Hatch-Waxman provisions; and (6) discusses the solution advocated by this article.
Patents - Remedies
Epstein, Roy, The Market Share Rule with Price
Erosion: Patent Infringement Lost Profits
Damages After Crystal 31 1 1 2003
This article presents an economic analysis showing how to prove lost profits with price erosion in light of the Federal Circuit’s 2001 decision in Crystal Semiconductor. The main requirement is to account for the effect of "price elasticity," because the higher but-for price generally reduces the quantity sold. This article modifies the conventional market share rule from State Industries v. Mor-Flo with a price elasticity adjustment to provide an integrated calculation of lost sales damages and price erosion. In addition, the article presents an economic model to predict the amount of price erosion. The analysis indicates that a reasonable royalty in addition to market share damages (i.e., a split award) is not appropriate when price erosion damages are awarded, and provides examples of methods based on several actual price erosion cases.
Guttag, Eric, Laches and Estoppel: The Patentee
Who Procrastinates in Filing Suit May Be Lost 31 1 47 2003
This article argues that, in view of several recent Federal Circuit cases, it is now very important for patentees to know when laches and estoppel can come into play. Laches will bar recovery by the patentee of any damages prior to the filing of the suit, while estoppel can act as a complete bar to recovery by the patentee, including the denial of an injunction against further infringement. Some problematic laches and estoppel issues include (1) whether another pending lawsuit will excuse laches; (2) when silence and inaction by the patentee can create estoppel; and (3) when the patentee has "knowledge" of infringing activity such that the clock for laches begins to tick. The patentee can also learn five Rules of Thumb from these recent Federal Circuit cases for minimizing the risk of laches and estoppel.
Shi, Qin, Reexamination, Opposition, or Litigation?:
Legislative Efforts to Create a Post-Grant
Patent Quality Control System 31 4 433 2003
This article argues that a non-judicial forum alternative to civil courts is needed to safeguard the integrity of U.S. patents and the confidence of the investors. It observes that competitors with limited financial means are less inclined to bring a declaratory judgment action to invalidate a patent. While litigation as a screen to weed out dubious patents becomes increasingly impracticable due to increased cost, post-grant quality control is assuming more importance given the sheer number of patents issued in the PTO based on insufficient prior art data. This article summarizes legislative activities over the past decades in devising and revising reexamination procedures as an alternative to litigation. It concludes that, although the newly amended inter partes reexamination procedure has removed some significant barriers for competitors to challenge validity of patents in the PTO, additional changes—both in form and in substance—are desirable to make reexamination proceedings a true rival of litigation in resolving patent validity disputes. Patent infringement trials are in the ITC today. This article proposes that a PTO proceeding—one that is likened to the ITC action in form and that marries inter partes reexamination to inter partes opposition in substance—would constitute a robust post-issuance quality control system for U.S. patents.
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Patents - Representing Clients
Hricik, David, Trouble Waiting to Happen:
Malpractice and Ethical Issues in
Patent Prosecution 31 4 385 2003
This article argues that attorneys who prosecute patents face a greater challenge in guarding against malpractice than other attorneys. The article reviews the ABA Model Code of Professional Responsibility, the ABA Model Rules of Professional Conduct, state disciplinary rules, the PTO Code of Professional Responsibility, applicable regulations, and substantive law. The article then examines conflicts of interest between practitioners and clients, particularly when practitioners take interests in patent applications or become unnamed co-investors. The article suggests preventative measures that practitioners can take to guard themselves from unnecessary risk including: (1) clarifying duties to prospective clients; (2) warning investors that they are not clients; (3) developing a policy for concurrent client conflicts of interest; (4) notifying current clients of the end of representation; and (5) considering when a "substantial relationship" or a "possession of confidences" occurs with clients.
Patents - Terminal Disclaimers
Reiss, Steven, A New Use for the Old Double
Patenting Rejection and Terminal Disclaimer 31 1 101 2003
This article argues that a patent infringer may use the patentee’s filing of a terminal disclaimer in the process of obtaining a patent to successfully raise the defense of obviousness where the patentee tries to enforce patents related through the terminal disclaimer. The article notes that a terminal disclaimer is generally used to overcome obviousness-type double patenting rejections when the patentee seeks the issuance of broader claims after an original narrower set of claims has issued. Therefore, the infringer may use the terminal disclaimer "as a mechanism for bootstrapping the prior art which invalidates the [later,] broader patent into an invalidity argument against the earlier issued, narrower patent, even though that prior art would not invalidate the narrower patent on its own." This is because the terminal disclaimer does not overcome the fact that the later, broader claims are not patentably distinct from the narrower claim, but merely removes the objection to double patenting. This article reviews the two existing Federal Circuit cases in this area, finding that the court was unclear and inconsistent in its determination that a terminal disclaimer did not concede double patenting and obviousness. Stating that the determination did not resonate with the expectations of patentees in filing terminal disclaimers, public policy concerns of double patenting, and the current judicial environment, the article concludes that the potential new use of the terminal disclaimer at the very least "demonstrates a fundamental flaw in the double patenting rationale."
Patents – Utility
Patents – Written Description
Kass, Lawrence & Michael Nitabach, A
Roadmap for Biotechnology Patents?
Federal Circuit Precedent and the PTO’s
New Examination Guidelines 30 2 233 2002
The United States Patent and Trademark Office has recently issued guidelines relating to the patentability requirements of "utility" and "written description." These guidelines are intended to assist patent examiners in making the difficult determination of whether a particular patent application satisfies these statutory requirements. While the guidelines themselves are not specifically limited to the examination of patent applications for biotechnology inventions, many of the comments and responses that were published with the guidelines address biotechnology-specific issues. This article presents a review of the relevant statutory provisions, Federal Circuit precedent, and the recently-issued guidelines and analyzes the legal and conceptual relationships between them in the context of biotechnology patents.
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Patent Valuation
Barney, Jonathan, A Study of Patent Mortality
Rates: Using Statistical Survival Analysis
to Rate and Value Patent Assets 30 3 317 2002
This article describes an objective, statistical approach for comparatively rating and valuing patent assets based on reported abandonment rates of patents sharing statistically similar attributes. The article presents two main concepts: (1) patent value can be accurately estimated on a macro-scale using statistical survival analysis of Patent and Trademark Office ("PTO") maintenance fee records and (2) individual patent assets can be comparatively ranked or rated based on objective characteristics or "metrics" statistically linked to either high or low maintenance rates.
Hagelin, Ted, A New Method to Value
Intellectual Property 30 3 353 2002
This article analyzes different concepts and methods of valuation, including the cost, market, and income methods. Other valuation methods developed especially for intellectual property law are also examined, including the 25 percent rule, industry standards, ranking, surrogate measures, disaggregation, Monte Carlo, and option methods. The article also introduces a new valuation method called Competitive Advantage Valuation ("CAV") and discusses how the CAV method will contribute to the field of intellectual property law.
PTO Guidelines
Bird, Joseph, Cognitive Neuroscience as a Model
for Neural Software Patent Examination 31 3 273 2003
This article argues that the present classification system employed by the U.S. Patent & Trademark Office ("PTO") is insufficient for neural software patent examination. Neural software, also known as neural computation or artificial intelligence ("AI"), is software that performs functions analogous to the central nervous system—rather than those normally performed by machines as is the realm of conventional software inventions. The intangibility of neural software makes categorization especially difficult within the present PTO system of classification. A new set of categories would help the PTO and practitioners keep track of important similarities and distinctions among neural software inventions. This new classification system, to be used in addition to the existing application-specific classifications of the PTO, should be created based on cognitive neuroscience. The PTO, as well as the court system, can easily use the ready set of categories provided by the actual functions of the central nervous system to improve the quality of prior art searches, and the application of novelty, obviousness, and § 112 principles in both the examination and validity contexts.
Kass, Lawrence & Michael Nitabach, A
Roadmap for Biotechnology Patents?
Federal Circuit Precedent and the PTO’s
New Examination Guidelines 30 2 233 2002
The United States Patent and Trademark Office has recently issued guidelines relating to the patentability requirements of "utility" and "written description." These guidelines are intended to assist patent examiners in making the difficult determination of whether a particular patent application satisfies these statutory requirements. While the guidelines themselves are not specifically limited to the examination of patent applications for biotechnology inventions, many of the comments and responses that were published with the guidelines address biotechnology-specific issues. This article presents a review of the relevant statutory provisions, Federal Circuit precedent, and the recently-issued guidelines and analyzes the legal and conceptual relationships between them in the context of biotechnology patents.
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Prior Use Right
Hollander, David, The First Inventor Defense:
A Limited Prior Use Right Finds Its Way
Into U.S. Patent Law 30 1 37 2002
This article examines the state of prior use rights in United States patent law as a result of the passage of the American Inventors Protection Act of 1999. Although the right is limited to those accused of infringing a patented method of doing or conducting business and may not have a significant impact on patent law in the United States, the article proposes that the Act and its impact are worthy of analysis for two reasons. First, the Act represents the only legislative response to the controversial judicial decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., which overruled prior use rights. Furthermore, the Act can serve as a model for future prior use rights legislation.
Remedies
Ware, Donald, Research Tool Patents: Judicial
Remedies 30 2 267 2002
This article examines judicial remedies available through litigation with regard to the licensing and distribution of research tools. The article examines the calculation and measure of damages and the availability of equitable relief and explores patent damages generally, lost profits, and reasonable royalties by analyzing recent Federal Circuit decisions. The article also considers the scope of injunctive relief available to prevent future infringement.
Trademarks - Internet
Rajapakse, Mimi, Domain Names as Protected Speech:
A Reexamination of the Fourth Circuit’s Decision
in People for the Ethical Treatment of
Animals v. Doughney 31 3 353 2003
This article scrutinizes Cliff’s Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, Inc. and Rogers v. Grimaldi, and concludes that domain names act as titles—and as titles are worthy of First Amendment protection when the underlying website expresses a parody. A close examination of these two cases reveals that courts must look to a work as a whole in determining whether it is a parody, and that titles of these parodies deserve First Amendment Protection where the title is artistically related to the underlying work. This article applies this revelation to the use of domain names related to website expressing parodies. The domain name acts as the title to the contents of the website and, so long as the domain name is artistically related to the website expressing a parody, that domain name deserves First Amendment protection. The article concludes by analyzing the decision in People for the Ethical Treatment of Animals v. Doughney for its error in failing to accord First Amendment protection to an Internet parodist.
TRIPs
Bowers, Steven, Location, Location, Location:
The Case Against Extending Geographical Indication
Protection Under the TRIPs Agreement 31 2 129 2003
This article addresses the current argument for extending protection of geographical indication under Article 23 of the Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPs") to products other than wines and spirits. The article analyzes positions for and against extension and argues in favor of maintaining the status quo. Extending Article 23 would have negative effects on consumers, the public, producers, and traders, most notably in the form of higher economic costs. There is no evidence that the current agreement has not provided sufficient protection, and national measures are the more effective route to better geographical indication. Finally, the article concludes that the status quo should be maintained in order to preserve the delicate balance of compromises that underlie the TRIPs agreement.
WTO Dispute Settlement
Felgueroso, Jose, TRIPs and the Dispute
Settlement Understanding: The First Six Years 30 2 165 2002
This article examines how the World Trade Organization (WTO) dispute-settlement institutions have applied the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) since the foundation of the WTO. The article examines the WTO Dispute Settlement Understanding (DSU) and the relevance of trade sanctions under the TRIPs Agreement, compares the DSU institutions to other international courts, and looks into cases decided by DSU institutions involving the TRIPs Agreement. The article concludes that although the TRIPs Agreement has revealed weaknesses, it has proved to be an effective instrument for the protection of intellectual property rights.
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