Use of an Invention: 'Anticipating'?
September 01, 2003
Under U.S. patent law, an inventor is entitled to a patent if the invention is useful, novel, and nonobvious. The "novelty" prong of this tripartite test is controlled by 35 U.S.C. '102, which defines the "prior art" (<i>ie,</i> already existing technology) that can "anticipate," or render non-novel, the invention. In general, an invention sought to be patented is anticipated when it already exists in the prior art, having been placed there either by a third party or through the inventor's own actions. Under '102, prior use of the invention can anticipate a patent in certain circumstances. Specifically, the statute states that: "A person shall be entitled to a patent unless (a) the invention was ... used by others ... before the invention thereof by the applicant ...; or (b) the invention was ... in public use ... more than one year prior to the date of the application.
Analyzing Provisional Rights for Patent Applicants
September 01, 2003
With the passage of the Domestic Publication of Foreign Filed Patent Applications Act of 1999, the U.S. Congress instituted a pre-grant patent publication system. As a result, the USPTO must now publish domestic utility patent applications filed on or after November 29, 2000 within 18 months of their earliest priority date, unless conditions for preventing publication are met.
Work for Hire Agreements Do Not Provide Beneficial Copyright Ownership
September 01, 2003
In order to sue for copyright infringement, it is necessary for the plaintiff to be either the legal or beneficial owner of the copyright in the infringed work. The U.S. Court of Appeals for the Ninth Circuit has found that the creator of a work made for hire cannot be either a legal or beneficial owner of a copyright in such a work.
IP NEWS
August 26, 2003
Highlights of the latest intellectual property news and cases from around the country.
Fraud in Procurement of Registration Concerning Use of Mark Taints Entire Trademark Application for Stents
August 26, 2003
In <i>Medinol Ltd. v. Neuro Vasx, Inc.</i> (Cancellation No. 92040535), the Trademark Trial and Appeal Board (TTAB) agreed to enter summary judgment in favor of Medinol canceling Neuro Vasx's trademark registration for NEUROVASX based on fraud on the PTO. In August 2000, Neuro Vasx, was granted a registration for the mark NEUROVASX for 'medical devices, namely neurological stents and catheters.' As a result of this registration, Medinol's application for registration of the mark NIROVASCULAR for 'medical devices, namely stents' was refused.
The Paxil Case: Composition of Matter Claims, Polymorphs and 'Follow-on' Patents
August 26, 2003
The growth of the pharmaceutical industry over the past 20 years has been driven by the R&D investment in discovering new compounds, which can be protected by composition of matter patent claims. There are notable exceptions to this rule, <i>eg,</i> an unexpected and lucrative use for an old compound, like topically-applied minoxidil for hair growth (Rogaine'). But composition of matter patent protection on the active product itself is always a primary plank in protecting a drug franchise, and increases the value of the technology significantly.
Contributory Copyright Infringement and Peer-to-Peer Networks
August 26, 2003
The second labor of Hercules was to kill the monstrous nine-headed Hydra. When Hercules struck off one of the Hydra's heads, two new ones grew forth in its place. The entertainment industry's fight against its modern menace, peer-to-peer file sharing networks, presents no lesser task. The record companies successfully shut down Napster (<i>see A&M Records, Inc. v. Napster, Inc.</i>, 114 F. Supp. 2d 896 (N.D. Cal. 2000), <i>aff'd in part, rev'd in part</i>, 239 F.3d 1004 (9th Cir. 2001)) and Aimster (<i>see In re Aimster Copyright Litig.,</i> 2002 U.S. Dist. LEXIS 17054 (N.D. Ill. 2002)) only to witness the instant emergence of Gnutella, Grokster, Kazaa, Morpheus, and similar services (as well as the re-emergence of Aimster, now known as Madster). We know, of course, that Hercules completed his second labor after figuring out that he could prevent growth of the new heads by burning the wound. However, unlike the Hydra, peer-to-peer file sharing technologies evolve quickly and swiftly adapt to changed circumstances. Thus, Hollywood's plaintiffs are likened more to Sisyphus (who was condemned to an eternity of pushing the rock up the mountain only to have it fall down again) than to Hercules. The most recent example is the decision in <i>Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.</i>, 2003 U.S. Dist. LEXIS 6994 (C.D. Cal. April 25, 2003).
Application of the Reverse Doctrine of Equivalents to Amgen v. Hoechst Marion, Inc.
August 26, 2003
In the previous issue, we discussed the principle of the Reverse Doctrine of Equivalents and provided several illustrations of cases that have addressed the same. In this issue, we apply the principle to the <i>Amgen, Inc. v. Hoechst Marion, Inc.</i> case, wherein the defendants Hoecht Marion and Transkarayotic Therapies (collectively 'TKT') were found liable for infringing several of Amgen's patents. <i>Amgen, Inc. v. Hoechst Marion, Inc.</i>, 126 F. Supp. 2d 69 (D. Mass. 2001). Although the Reverse Doctrine of Equivalents defense was not raised, this article discusses how this doctrine might have relieved TKT of liability.
Furthering Insolvency?
August 15, 2003
What was Enron's Board thinking? Where were the Tyco directors while Dennis went shopping? Had MCI's directors been invited to Scott's new Florida mansion? This stuff makes the headlines, but all across the country, decisions are made by boards of directors that don't come close to this scale and will never see the light of day, much less a courtroom. However, these decisions are no less questionable and susceptible to attack, leaving a director in litigation for years. This is particularly true should the company end up in bankruptcy with creditors having been harmed.
Bankruptcy: What Happens to the Royalty Payments?
August 01, 2003
In a decision interpreting for the first time certain provisions in the Bankruptcy Code, the Third Circuit Court of Appeals concluded that royalty payments belonged to the estate of the bankrupt debtor/licensor rather than to the new owner by assignment of the underlying intellectual property covered by the licenses. <i>In re CellNet Data Systems, Inc.,</i> 327 F.3d 242 (3d Cir. 2003). The Third Circuit held that the debtor/licensor was permitted to sever the right to receive the remaining royalty payments due on the license from the transfer of the underlying intellectual property rights.
