Intellectual Property Law Commons^™

Comment: Perceptions Of Chief Patent Counsel At Large Corporations Of The Effects Of Patent Term, Products Liability And Government Regulations On Firm R&D, Thomas G. Field Jr.

Law Faculty Scholarship

Last summer, over 300 members of the Association of (chief) Corporate Patent Counsel were surveyed concerning their attitude toward and experience with arbitration and mediation (ADR). Seventy-five responded. Subsequently, tabulations of the survey data were sent to the same people with four additional questions, two of which had nothing to do with ADR. Forty-one responded. This comment reports responses to the two questions unrelated to ADR.

The Effect Of New Rule 56 On The Law Of Inequitable Conduct, R. Carl Moy

Faculty Scholarship

This article discusses Rule 56 of the Patent and Trademark Office. Part II discusses changes from the old to the new Rule 56, and examines the former’s relationship to the law of inequitable conduct. Part III elaborates on the current status of the PTO’s rulemaking efforts, and Part IV is focused on the new Rule under the APA. Parts V and VI are about new Rule 56 as a hortatory statement and common-law jurisprudential limitations, respectively. The author ultimately concludes that the PTO could have chosen to approach the Federal Circuit as an amicus without a prior rulemaking proceeding. That …

The Impact Of The Deposit Requirement For Patenting Biotechnology: Present Concerns, Proposed Solutions, Brandi L. Wickline

Vanderbilt Journal of Transnational Law

Patenting the fruits of biotechnological research often involves problems unique to that scientific field, especially when the resulting inventions employ micro-organisms that cannot be described easily because of their novelty to the field. The importance of satisfactorily resolving these problems increases because most developed states now allow biotech inventors to patent the novel organism itself. In response to the concern that words are often inadequate to identify completely these microbes, states began allowing biotech patent applicants to deposit a sample culture of the novel micro-organism as a supplement to the written description. This Note addresses the shortcomings of the deposit …

Book Reviews, Thomas G. Field Jr.

RISK: Health, Safety & Environment (1990-2002)

Reviews of the following books prepared by Thomas G. Field, Jr., Editor-in-Chief of Risk:

Stephen D. Sugarman, Doing Away with Personal Injury Law, (1989).

Chet Fleming, If We can Keep a Severed Head Alive, (1988).

Pharmaceuticals And Intellectual Property: Meeting Needs Throughout The World, Thomas G. Field Jr.

Law Faculty Scholarship

To the extent that most people think about patents and other forms of intellectual property at all, they tend to be aware that the owners of such property may have the legal capacity to limit market entry--without fully appreciating the extent to which products or processes that can be easily copied might otherwise be unavailable. Focusing on their function in recouping risk capital, this article will survey the types and functions of intellectual property. Then it will attend to the situation in developing countries, particularly the role of intellectual property in meeting their needs for medical products.

Compulsory Patent Licensing In The United States: An Idea Whose Time Has Come, Cole M. Fauver

Northwestern Journal of International Law & Business

This Comment will consider several of the more common grounds justifying compulsory licenses, particularly as they affect international transactions. After analyzing the dynamic between each theory's practical economic effect and general economic philosophy, the Comment will then question whether the current United States policy against general compulsory licenses remains viable in today's economic markets.

Law And Fact In Patent Litigation: Form Versus Function, Thomas G. Field Jr

Law Faculty Scholarship

Recently, the Supreme Court sent Dennison Mfg. v. Panduit Corp. back to the Court of Appeals for the Federal Circuit (CAFC). It remanded with explicit directions that the lower court consider the extent to which Rule 52(a) governs appellate review of determinations of obviousness.

It is by no means certain that obviousness determinations should be treated as questions of law. Nevertheless, there is ample evidence that courts seek to review findings of obviousness (or nonobviousness) more intensely than would be appropriate under the "clearly erroneous" or "substantial evidence" standards. If the courts are inclined to persist in more intense review …

The Interpretation Of Means Expressions During Prosecution, R. Carl Moy

Faculty Scholarship

This article briefly explains how the scope of a claim including a means expression is determined both under the PTO view and a strict application of the statutory language. The lack of consensus and current state of the law in the area are illustrated through an analysis of several recent decisions of the Federal Circuit. The policies underlying the PTO and statutory methods of interpreting means expressions during prosecution are examined in an effort to demonstrate that the statutory method more effectively furthers the policies underlying the patent system.

Tax Policy: Copyrights And Patents, Madelyn Shohen Cantor

Villanova Law Review (1956 - )

No abstract provided.

Patent Infringement: Redefining The "Making" Standard To Include Partial Assemblies—Paper Converting Machine Co. V. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984), Stuart Watt

Washington Law Review

In Paper Converting Machine Co. v. Magna-Graphics Corp., the Federal Circuit rejected the traditional operable assembly standard for determining a "making." In its place, the court adopted a more flexible standard that included partial assemblies that have no significant noninfringing purpose. This test for infringement significantly broadens patent protection and further restricts the permissible activity of competitors allowed during the patent term. The court's standard grants the patent owner a de facto monopoly beyond the expiration date by restricting competitors from making preparations to enter the market after the patent expires. The decision represents a movement by the Federal Circuit …

Patent Infringement: Redefining The "Making" Standard To Include Partial Assemblies—Paper Converting Machine Co. V. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984), Stuart Watt

Washington Law Review

In Paper Converting Machine Co. v. Magna-Graphics Corp., the Federal Circuit rejected the traditional operable assembly standard for determining a "making." In its place, the court adopted a more flexible standard that included partial assemblies that have no significant noninfringing purpose. This test for infringement significantly broadens patent protection and further restricts the permissible activity of competitors allowed during the patent term. The court's standard grants the patent owner a de facto monopoly beyond the expiration date by restricting competitors from making preparations to enter the market after the patent expires. The decision represents a movement by the Federal Circuit …

Brief Survey Of And Proposal For Better Reconciliation Of The Options In Patent, Trademark, Copyright And Related Law, Thomas G. Field Jr

Law Faculty Scholarship

Taking up trademarks, patents, copyrights, and trade secrets (in that order), [this article] will attempt to summarize briefly the ways in which such rights arise, are perfected, and are enforced. It will also discuss a hypothetical in which all of these options will be discussed in a comparative way. Finally, it will suggest that basic improvements in the area could be realized by dispensing with the often confusing and arbitrary subject matter distinctions which characterize the various subparts of the present intellectual property system.

Litigating The Validity And Infringement Of Software Patents, William L. Anthony, Jr., Robert C. Colwell

Washington and Lee Law Review

No abstract provided.

Patent Arbitration: Past, Present And Future, Thomas G. Field Jr

Law Faculty Scholarship

Most attorneys have heard of arbitration, but few have more than a vague idea of what it is or have any experience with it. Patent attorneys are no exception, and many are no doubt wondering about the implications of §294. It was enacted in August of 1982, and went into effect in February 1983: Why was it needed and passed, and what does it mean?

Diamond V. Diehr, Lewis F. Powell Jr.

Supreme Court Case Files

No abstract provided.

Diamond V. Bradley, Lewis F. Powell, Jr.

Supreme Court Case Files

No abstract provided.

Combination Patents And Synergism: Must 2 + 2 = 5?

Washington and Lee Law Review

No abstract provided.

International Patent Licensing Agreements And Conflict Of Laws, Giovanna Modiano

Northwestern Journal of International Law & Business

The choice of law rules applicable to disputes involving patent li- censing agreements was a subject that attracted considerable interest among prominent legal scholars in the 1950's.' During the following decade the attention of European scholars concerned with patent li- censing shifted to more substantive issues.2 In recent years, however, an interest in choice of law problems relating to patent licensing agree- ments has been revived.

The Patentability Of Living Matter: Hey Waiter, What'schakrabarty's Pseudomonas Bacterium Doing Backin The Supreme Court's Soup?, G. Scott Rayson

Washington and Lee Law Review

No abstract provided.

Purging The Misuse - Suggestions For A Reasonable Balance Of Conflicting Policies, Alan J. Statman

William & Mary Law Review

No abstract provided.

Diamond V. Chakrabarty, Lewis F. Powell Jr.

Supreme Court Case Files

No abstract provided.

A Three Country Conundrum In Conflict Of Laws Or Who Gets The Patent?, Marcus B. Finnegan, Thomas L. Irving

Maryland Journal of International Law

No abstract provided.

Post Hoc Evaluations Of Obviousness: Preliminary Report Of An Attempt To Identify, Empirically, The Characteristics Of A Superior Evaluator, Juanita V. Field, Thomas G. Field Jr.

Law Faculty Scholarship

Over a century and a quarter have passed since the Supreme Court in Hotchkiss v. Greenwood held that more than mere novelty is necessary to support a valid patent. Congress, after 100 years of experience with a concept which came to be called "invention," attempted to improve the situation by requiring that an invention not be "obvious" if it is to be patented. It seems safe to say that in the intervening time the doctrine of non-obviousness has not developed into a foolproof yardstick for measuring the quality of cerebral or other effort necessary to make an advance over the …

Parker V. Flook, Lewis F. Powell Jr.

Supreme Court Case Files

No abstract provided.

Case Digest, Journal Staff

Vanderbilt Journal of Transnational Law

1. ADMIRALTY

ILA Collective Bargaining Agreements Affecting Containerized Cargo Held Invalid as "Work Acquisition" Measures

Damages from Successive, Independent Injuries may not be Cumulated to Determine "Constructive Total Loss" where Vessel has been restored to Seaworthy Condition between Injuries

Shipowner is Entitled to Lost Profits Measured by the Prevailing Market Rate During Off-Hire Extension Period

2. CUSTOMS

Trading with the Enemy Act Authorizes Treasury Regulations Prohibiting Import of Cuban Assets when the United States Interest Arises after the Effective Date of the Regulations

Standing to Protest Imposition of Dumping Duties Denied where Plaintiff unable to prove by Substantial and Convincing …

Dann V. Johnston, Lewis F. Powell Jr.

Supreme Court Case Files

No abstract provided.

Patent Law Reform: A Legislative Perspective Of An Extended Gestation, Hugh Scott, Dennis Unkovic

William & Mary Law Review

No abstract provided.

Licensee Estoppel And Royalty Payments After Lear: Inconsistencies Within The Lower Courts Circumvent Lear Rationale, Henry P. Doggrell

Vanderbilt Law Review

Article I of the Constitution' expressly provides Congress with the authority to grant inventors exclusive rights to their discoveries for limited periods to promote the development of new ideas and innovations. By according the inventor-patentee the seventeen-year right either to exclude all others from making, using, or selling his invention or to contract for its limited use in the form of assignments or licenses, Congress has attempted to provide the initiative and incentive necessary to encourage the continued progress of science and the arts.' Moreover, statutory safeguards, which presume the validity of the patent until a contesting party establishes its …

Intellectual And Industrial Property In A Nutshell, Thomas G. Field Jr.

Law Faculty Scholarship

First, intellectual and industrial property is property--extremely valuable property at that. However, this is not a subject that gets more than passing attention in many curricula, and none in most. Consequently, few lawyers, aside from the specialists, know much about it. Moreover, unlike most areas of legal specialization, such as tax, labor, and anti-trust law, the basic principles of which are known to most general practitioners, if a generalist knows anything about literary or industrial property, it is apt to be wrong. Furthermore, because clients tend to approach generalists first, substantial and incurable injury may result from a generalist's mistaken …

Constitutional Law - Patent Clause - States May Afford Trade Secret Protection Without Infringing Upon Federal Patent Power, Joseph A. Eagan Jr.

Villanova Law Review (1956 - )

No abstract provided.