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Patents on New Uses for 'Old' Inventions: The Struggle in the Federal Circuit
While a chemical compound, such as a drug, cannot be patented twice based on the discovery of a new property of the compound (no matter how important), the patent statutes explicitly authorize patents on new uses for 'old compounds.' While such method-of-use claims can be difficult to enforce, they can be extremely valuable, both to society and to the patent owner. AZT, a failed anti-cancer drug, earned millions and extended lives, after Burroughs Wellcome patented its use to treat HIV/AIDs. While a patent on a new use of an old compound can seem unfair, nothing is taken from the public domain. The patent often only confers the right to prevent others from advertising that the drug can be used to treat condition X as well as its 'old use' to treat condition Y. The public remains free to use the 'old drug' for any unpatented purpose.
Recently, two different three-judge panels of the Court of Appeals for the Federal Circuit came to opposite conclusions as they grappled with the question of whether or not a claimed use for an old compound was in fact new or 'novel,' or whether it was unpatentable as subsumed by, or legally 'inherent' in the 'old use.'
In Perricone v. Medicis, 423 F.3d 1368 (Fed. Cir. 2005), the patent claimed the use of a vitamin C derivative to treat sunburn. The majority of the panel found the claims valid in view of prior art that disclosed the use of the same compound as a 'skin benefit' ingredient in a cosmetic composition. The majority dismissed arguments that the use of the compound to treat sunburn was unpatentable as inherent in its former use to benefit normal skin. The majority held that the claimed use was a new use even though a certain percentage of users of the cosmetic would have necessarily applied it to sunburned skin. Judge William Curtis Bryson dissented, and argued that the compound was being used for the same purpose in both cases, to improve the skin, so that no patentable new use has been discovered.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.