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Quarterly Journal Volume 39 Number 3

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Reconciling On-Sale Bar and Patent Exhaustion locked.gif

Shubha Ghosh & Lucas Divine
The Supreme Court held in Quanta v. L.G. Electronics that patent law's first sale doctrine applies to process patents. This holding has implications for the treatment of processes under the on sale bar. This Article explores how process patents have been treated under the on sale bar doctrine and analyzes how pre-Quanta case law is not consistent with the application of the first sale doctrine to processes. This Article suggests ways of reconciling the two areas of law with respect to both doctrine and the underlying policies.
 

The Unintended Consequences of Stanford v. Roche locked.gif

Ted Hagelin
This Article analyzes the Supreme Court’s recent decision in Stanford v. Roche (“Stanford”). In Stanford, the Court held that initial legal title to inventions belongs to inventors and, as such, that the Bayh-Dole Act (“the Act”) does not vest in universities initial title to patents resulting from federally funded research. In so holding, the Court raised a number of complex questions regarding how the inventors’ initial legal title to inventions can be transferred to parties such as universities and private-sector employers. Based on the Stanford holding, the ownership and assignment section of the Patent Act (35 U.S.C. § 261), and the United States Patent and Trademark Office’s Manual of Patent Examining Procedure, this Article concludes that an inventor’s legal title to an invention cannot be transferred to another party until the invention is made, a patent application is filed or a patent is issued, and the inventor has executed a written assignment agreement that references either the patent application number, the issued patent number, or the name of the invention. If this conclusion is correct, an unethical employee- inventor could defeat an employer’s expectancy contract interest in an invention (e.g., an employment agreement executed at the time of hire containing an invention assignment clause) by filing a patent application in his or her own name and assigning the patent application to a third party. This gaping loophole in patent law could put tens of billions of dollars of patent ownership rights at risk.
 

Increasing Follow-On Biologics Competition  locked.gif

Mark Metzke
The Biologics Price Competition and Innovation Act (“BPCIA”) was signed into law on March 23, 2010.  Like the Hatch-Waxman Act did for generic pharmaceutical drugs, the BPCIA is intended to spur competition in the biologics market.  However, the BPCIA grants reference biologic manufacturers much longer post-patent exclusivity times than the Hatch-Waxman Act provides for brand-name pharmaceutical producers.  The BPCIA’s extended period of exclusivity may actually delay competition in the biologics market unnecessarily.  This Article proposes a new biologics statute called the Follow-On Biologic and Biologic Innovation Act (“FOBBIA”).  The FOBBIA calls for decreased regulatory exclusivity for reference biologics to incentivize earlier and more frequent entrance of follow-on biologics to the market.​
 

The America Invents Act and its Restriction on Judicial Recourse locked.gif

Charles E. Miller & Daniel P. Archibald

Since the early days of our Republic, and as currently enshrined in the Administrative Procedure Act, judicial review has been a direct recourse against unlawful government action.  In the field of intellectual property, de novo judicial review by civil action in D.C. Federal district court is expressly and specifically enabled by the patent and trademark statutes and has long been recognized as an important option among the two avenues of judicial recourse for those aggrieved by adverse rulings of the Patent and Trademark Office (“PTO”).  But, like most government agencies, the PTO is averse to being sued, especially in the District of Columbia.  That aversion was manifested eight years ago in ultra vires rulemaking aimed at foreclosing district-court review of PTO decisions adverse to patent owners in ex parte patent reexaminations requested post-November 28, 1999.  It has now resurfaced, this time more bluntly in provisions governing PTO post-patent-grant proceedings currently embedded in two Senate and House bills, S.23 and H.R. 1249, collectively dubbed the Leahy-Smith America Invents Act.  Several sections of both bills will strip patent owners of their long-standing, fundamental, statutory right to challenge adverse PTO decisions in ex parte reexaminations by civil action in district court irrespective of when the request for reexamination was filed.  Similar restrictions preclude district court review in two new statutory post-patent-grant procedures – “inter partes review” and “post-grant review”.  Finally, sections of the bills will de-optimize district court review of PTO decisions in all other cases by relocating the venue to a district (E.D. Va.) in a circuit remote from that of the present forum (D.D.C.).  None of the foregoing changes will do anything to help meet the challenges currently facing the U.S. patent system, least of all the PTO’s present operational difficulties.  Instead, they chip away at the rights of those who need to rely on PTO procedures that are fair, balanced, and just in order to protect patentable inventions and promote investment leading to innovations.  Blue-penciling these misbegotten provisions out of the America Invents Act would have had no adverse impact on the rest of ‘patent reform’ legislation and would be universally welcomed by the invention and innovation communities.

 
STUDENT NOTES 

Mark Shiqian Zhai

This Note argues that the Chinese utility model patent is a mode of technology acquisition that is now more harmful than beneficial because it undermines innovation in China, contrary to its intended purpose. As a developing country, Chinese industries benefitted from a weak IP system because its industries lacked the ability to innovate independently. However, the weak protection offered by the utility model patent does not fit within China’s newest IP policy, which emphasizes the strengthening of China’s patent laws. Although the utility model patent may still provide fast and inexpensive access to patent protection, this Note advocates that any initial savings do not outweigh later-arising transaction costs.

Using the Chinese patent infringement case Chint v. Schneider as a case study, this Note concludes that the proliferation of utility model patents in China has the real potential to slow progress and may even deprive prior inventions of their value or utility. Accordingly, the utility model patent should be abandoned.


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