PAST FEATURE ARTICLES
Patent Enforcement During The Global Economic CrisisBy Bruce Haas and Christopher BeckmanOctober 2010
A version of this article was printed in the March 2010 issue of the European Pharmaceutical Contractor (EPC), on pages 22, 24 and 26. You can visit the website to view the digital edition of this issue in our archives.
Intellectual property procurement and enforcement have gained even greater prominence during the global economic downturn. Large and small companies alike are more aware of the value that can be derived from intellectual property. In the most recently released figures, both international and U.S. patent filings grew to new heights, with many originating countries, including China, South Korea and Sweden, seeing double-digit growth rates. Emerging economies in Asia and the Middle East are beginning to show more appreciation for intellectual property by increased enforcement. More...
IP's Role in Providing Clean Water
By Alana M. Fuierer
Reprinted with permission from Heslin, Rothenberg, Farley & Mesiti PCOriginally published in the August 17, 2010 edition of The Daily Record, Rochester, NY
Until recently, a sentence that used the words “water”, “centrifuge” and “Kevin Costner” would exist only as a punch line. The Gulf of Mexico oil spill, however, brought the issue of novel water technologies into every home in the nation. Arguably the top news story for 2010, the Gulf of Mexico oil spill forced mainstream America to consider a new realm of environmental concerns, turning water technology and innovation into hot, water cooler topics. More...
File, Protect, Update, Defend: Building a Biotech Patent Portfolio in the Changing Patent LandscapeBy David J. Dykeman and Joanna T. BrougherJune 2010
Reprinted with permission from the May 2010 edition of Corporate Counsel © 2010 ALM Media Properties, LLC.
To respond to this rapidly evolving patent environment, biotech companies need to develop an effective strategy for building high-value patent portfolios. Strategically building and maintaining a strong patent portfolio is critical for life science companies because the portfolio is often the driving force for important events in the company's life cycle, including venture capital investment, mergers and acquisitions, public offerings, strategic collaborations, joint ventures, and litigation. A strategic patent portfolio that is broad and flexible to withstand changes in the patent landscape ensures the greatest coverage of these assets. More...
By Michael S. Kramer
“Obviously” a Challenge: Patent Survival Statistics & Tips
By Steven C. Carlson and Willy ChangMay 2010
Reprinted with permission from Biotechnology Law Report 2007 published by
Mary Ann Liebert, Inc., New Rochelle, NY
Patents are a key to product life cycle management. Successfully using patents to extend a product line often boils down to the legal question of obviousness. This is because an attempt to patent a modified technology is likely to be faced with the question of whether the newly proposed claims are “obvious” in light of the prior technology. What it takes to make a modification “nonobvious” over the prior art is one of the most important legal questions facing pioneering companies. It is the key to product life cycle management. And it is not an easy question. More…
Patent Licensing in the Display Industry: A Primer
By Song Jung and Adrian Mollo
This article was originally published in Information Display 2/10, and is reprinted here with permissions by The Society for Information Display.
The display industry is a good model for a discussion of patent license agreements. First, the industry has multiple categories of companies, each with different, and often divergent, business interests. As discussed below, those interest may vary for a number of reasons, including both business concerns (e.g., the natural disinclination to enforce patents against potential customers) and legal issues (e.g., the fact that the new patent exhaustion doctrine limits the ability of a patent owner to implement a multi-tiered licensing program). Further, the electronics and display industries are very competitive. More…
Angel on Board: Challenges of Early-Stage Funding
By Stephen M. Goodman
Reprinted with permission from Pryor Cashman LLPFirst appeared in Securities and Corporate Finance Law 360 on September 8, 2009
It has become a cliché that capitalism is a process of “creative destruction”, a phrase first coined by the economist Joseph Schumpeter. While the economic carnage of the current recession clearly demonstrates the “destructive” part of this phrase, turmoil such as this frequently fosters entrepreneurial “creativity”, giving rise to new business ideas and models. But new ideas can only become real businesses if the entrepreneur can get financing. For example, suppose an entrepreneur wishes to develop a prototype for a new Web-based screening method for identifying children with certain congenital genetic conditions. She has statistics for the estimated patient populations of the various conditions and some marketing data showing how likely the demand would be to use the service at various price points. Now, she wants to raise $1 million to test a prototype for her service. How much of her company does she have to offer to potential investors in order to raise the money? The answer is a direct function of what the investors think her company is worth. More…
Antitrust: In Hard Times, Companies Look to Joint Ventures
By Robert A. Lipstein, Wm. Randolph Smith and Shawn R. Johnson
Reprinted with permission from the November 2, 2009 edition of The National Law Journal (www.nlj.com) 2010 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382, email@example.com or visit www.almreprints.com.
The U.S. Federal Reserve reports that manufacturing output and capacity utilization this past summer were at their lowest levels in more than 60 years. These unprecedented economic pressures have forced executives to examine every available option to restore profitability, at a time when raising prices is an unlikely path forward. In response, strategic deal-making has increased, with greater focus on joint ventures—rather than complete takeovers—as a solution to the current economic conditions. Joint ventures (JVs), or competitor collaborations, can cover a range of activities, from research and development (R&D) at one end to all-in JVs at the other. These different forms of collaboration and consolidation pose a range of antitrust issues that need to be fully understood to assess the total costs and benefits of any planned restructuring. More…
Stem Cell Law, Regulation and Intellectual Property:
A Fundamental Pillar of Success
By Samuel S. Woodley, Ph.D., Esq. and S. Peter Ludwig, Esq.
Reprinted with permission from Darby & Darby P.C.Originally printed in 2009 World Stem Cell Report
Stem cell research has the potential to transform healthcare and offer revolutionary new treatments for a variety of disorders. Hoping to recover their investment through acquisition of intellectual property rights to their discoveries, biotechnology companies and research centers are putting significant resources into stem cell research. As with any new revolutionary technology, fundamental patenting issues can take on increased importance. Moreover, controversies that surround stem cell research, especially embryonic stem cells, can also come into play when patenting discoveries. Inventors filing applications in Europe, for example, may find themselves restricted by ethical regulations that ban patenting inventions that make use of human embryos for industrial or commercial purposes. The U.S. Patent and Trademark Office rarely rejects applications on such public policy or morality grounds, leaving such regulation to other areas of law. However, stem cell related discoveries are still subject to the same requirements for patentability as other inventions. As with inventions from other fields, stem cell inventions must be both new and non-obvious, and useful in a potential “real world” application, to merit the award of a U.S. patent. More...
The Impact of Patents on Smart Grid Objectives
By Jeffrey E. Young
Originally printed in the Smart Grid Newsletter at www.smartgridnews.com
Following the federal government’s lead under the Energy Independence and Security Act of 2007 (EISA) to create a national Smart Grid, a host of players will come together to seek the common good. Some will assume that private patent rights will not impact this effort, or that patents will be swept aside or deactivated. In fact, patent rights will create challenges to overcome before the Smart Grid becomes a reality.
Light at the End of the Tunnel. Participants no doubt will succeed in balancing the important function of patents in stimulating needed innovation against the need for nondiscriminatory access to technologies, as their predecessors have in many previous efforts to create technical and business standards. This article makes the case for a broad understanding of “open standards” as including technologies open to all via royalty-bearing reasonable and nondiscriminatory (RAND) licensing. More...
Effectively Developing & Managing Patent Portfolios
Reproduced with permission from BNA's Patent, Trademark & Copyright Journal, 78 PTCJ 445 (Aug. 7, 2009). Copyright 2009 by The Bureau of National Affairs, Inc. (800-372-1033) <http://www.bna.com>
Despite challenging economic conditions, it is still essential that established and nascent businesses continue to develop and appropriately manage their intellectual property portfolios. Pursuing protection for innovation and even maintaining existing rights might be considered a discretionary expense in the current economic climate. However, disregard of an organization’s patent portfolio now has the potential to generate significant lasting effects that may undermine fiscal success under positive economic conditions. Engaging in strategic shaping of an organization’s patent portfolio during the present downturn is important to achieving long term success in protecting innovation and avoiding patent portfolio holes that could leave a business vulnerable to market competitors down the road. Yet, like most business decisions today, the development and maintenance of a patent portfolio deserves heightened scrutiny to ensure that the greatest potential benefit is achieved consistent with limited or reduced organization resources. More...
The Why, When and What of IP Due Diligence InvestigationsBy John W. Boger Esq.October 2009
Reprinted with permission of Heslin Rothenberg Farley & Mesiti P.C.
Whether you are buying a company with cutting edge products, investing in exciting technology or licensing a single patent, the most important thing you need to do before you sign the check (the “when”) is to diligently investigate the seller’s products or the target intellectual property (IP) and ensure that the amount of the check actually equals the value (the “why”). The depth and breadth of an IP due diligence investigation will vary greatly depending on the type of business deal being contemplated (the “what”), the estimated value of the transaction, the budget allocated to perform the investigation, and the amount of time remaining before the proposed deal’s closing date. It is important to remember that not every deal or transaction is the same and, thus, not every due diligence investigation will be the same. For example, it may be important to review patents only in the U.S. and Europe for one type of deal, but for another type of deal patents and trademarks worldwide must be searched. Before any work is started, the intellectual property professional must review with the buyer or licensee all of the transaction factors to ensure that a properly defined scope of investigation will be performed in the required time frame and at the agreed upon price. More...
Patent Portfolio Strategies for Cleantech CompaniesBy Brent K. Yamashita and Alan A. LimbachSeptember 2009
Reprinted with permission from DLA Piper
Originally published in EnergyCentral.com
’s Asset Management Topic Center Newsletter
The stimulus package recently passed by Congress and signed into law by President Obama (the American Recovery and Reinvestment Act of 2009) includes billions of dollars for energy grants and loan guarantee provisions that are intended to enhance the use of renewable energy as well as energy efficiency. This includes substantial funds for R&D in "cleantech" technologies. This funding, as well as the existing global interest in reducing the use of fossil fuels and increasing energy consumption efficiency, should lead to an explosion of new cleantech products and technologies.
These forces are already creating a "land grab" scenario in the cleantech space, where players are racing to reach the market as quickly as possible. In this environment, it is critical that cleantech companies appreciate the importance of developing a patent portfolio to protect their innovations. While this is generally true for most high-tech startups, it is particularly important in a land grab situation. A similar situation existed in the computer industry in the 1960s and 1970s, where IBM amassed a huge computer patent portfolio, and reaped benefits for years in the form of licensing revenue. If history is any guide, we know that companies with cutting-edge technology and an aggressive patent strategy in a rapidly emerging market will amass an arsenal of valuable patents. More...
The Bayh-Dole Act: The Technology Revolution Shows Its AgeBy Jeffrey A. Baumel
Reprinted with permission from Sonnenschein Nath & Rosenthal LLP
First published in the Winter 2009 edition of Venture Capital Review
During the waning days of the Carter Administration, following the Ronald Reagan landslide in November of 1980, President Carter signed into law the “Government Patent Policy Act of 1980,” cosponsored by Senators Birch Bayh and Robert Dole, which became known as the “Bayh-Dole Act.” The Act allows universities and research institutions to patent and retain title to inventions developed using government funds and to license such intellectual property rights to private industry and profit from the commercialization of these inventions.
The Bayh-Dole Act changed the landscape of the technology and venture capital industry. It has been largely credited with the creation of the modern biotechnology industry. The implementation and eventual evolution of the Bayh-Dole Act, however, is not without controversy, and with increasing calls for patent reform and pharmaceutical product cost control, the Act and the role of the universities and the government in the development of new technology has come under increasing scrutiny. More...
Managing Patent Costs During an Economic Downturn
By Steven Yu and Shawn O'Dowd
Reprinted with permission from Kenyon & Kenyon LLP
Originally published in the December 2008 issue of Intellectual Property Today
Even during an economic downturn, for innovative companies, the protection of intellectual property will continue to play a key role in the company’s business strategy. However, obtaining patents can be costly and rely heavily on cash input, which may be in short supply in the current credit squeeze.
While the typical reaction in this situation is to scale back the patent filing and prosecution efforts, it is important to also make sure that the current economic difficulties do not divert you from making long-term decisions needed in creating a strong patent portfolio that is ready for the inevitable upturn in the economy. Here are seven things to keep in mind when considering ways to reduce or defer the costs of patent filings during this economic downturn. More…
Owning the Record - Whose e-Document is it anyway?
By Stephen M. Goodman
Reprinted with permission from Pryor Cashman LLP and Bloomberg Corporate Law Journal
Every successful business owner worries that the departure of a key employee may mean that critical business information is also walking out the door. Controlling confidential business information is part of building the value of a business, and losing control of that information can threaten that value.
In the past, when the information was only in paper form and making physical copies of documents was more challenging, it was easier for employers to keep the documents from being read by people outside the company. However, controlling the information has become much more difficult now that electronic media have become the primary means for creating and storing information and employers have made e-mail and electronic document systems available to all employees. More...
It Ain't Easy Being Green
By Lawrence R. Robins
Reprinted with permission from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Your company plans to introduce an exciting new product and market it as the environmentally friendly alternative to the current market leader. Marketing wants to brand the product with an "Eco-Conscious Term", such as "green" or "eco”, but the legal department objects vehemently.
To Marketing, those words send the message that the new product is good for the environment. What is legal's problem? Why can't the lawyers see the great value in this front-of-the-curve branding?
A short history lesson provides the answer. During the Internet boom at the turn of the millennium, companies flooded the marketplace and the United States Patent and Trademark Office (“PTO”) with brands using terms such as "e”, “i”, ".com”, and "net”, very often combined with generic terms, such as "travel”, "business”, etc. More...
Litigation Planning for Licensors
By Edward E. Vassallo and Swatee Jasoria
Reprinted with permission from Fitzpatrick, Cella, Harper & Scinto
Companies seeking to monetize their intellectual property assets often turn to licensing. A licensing agreement can be beneficial to both parties – it allows the licensor to collect royalties and the licensee to reap the benefits of someone else’s intellectual property. This relationship, however, can become adversarial when a licensee attempts to circumvent the terms of the licensed intellectual property agreement.
The license agreement becomes a critical document that governs the relationship between two parties who often have vast sums of money at stake. The task of drafting and negotiating an intellectual property license agreement has never been simple. The objective is to reach a written document acceptable to all which adequately expresses the intent of the parties, is clear as to that intent and is enforceable under US law, including the antitrust laws. More...
Be Your Own Patent Searcher
By David Woycechowsky
Reprinted with permission from Bond, Schoeneck & King, PLLC
For about ten years now, patent databases have been gradually moving online. This exciting development, however, has often led to frustration because, although patent text was usually easy to obtain, the task of finding patent drawings remained difficult and/or expensive (alternaTIFF anyone?). Until about 2001, only issued U.S. patents were available online, which limited the would-be online searcher to the cutting-edge technology of three years ago. The good news, however, is that now, in 2008, we are practically at the point where amateurs can search U.S. patents and applications easily and for free. All you really need is time. More....
New Federal Circuit Decision Clarifies the Patentability of Process Patent Claims
By Frank Pietrantonio, Christopher Hutter,
Orion Armon and Eamonn Gardner
Reprinted with permission from Cooley Godward Kronish LLP
On October 30, 2008, the United States Court of Appeals for the Federal Circuit issued an en banc decision in In re Bilski
that clarified the test for patentability under 35 U.S.C. § 101 for process patent claims. Since the mid-1990s, patent applicants have applied for, and the United States Patent and Trademark Office (“USPTO”) has granted, increasing numbers of patents directed at business methods and software processes. For example, there was nearly a ten-fold increase in the number of patents granted in Class 705, titled “Data Processing: Financial, Business Practice, Management, or Cost/Price Determination” between 1996 and 2006. Despite the increased number of process-oriented patents that have issued from the USPTO, there has been uncertainty about the standard for patenting such claims under Section 101. The In re Bilski
decision removed some of that uncertainty, while also restricting the patentability of process claims. More
Court of Appeals for the Federal Circuit Issues Open Source Opinion
By Selwyn Goldberg, Sara Harrington, Cathy Kirkman,
Clark Asay and Catalin Cosovanu
On August 13, 2008, the United States Court of Appeals for the Federal Circuit (CAFC) issued an opinion in Robert Jacobsen v. Matthew Katzer and Kamind Associates, Inc.
that merits careful consideration by companies and individuals that use or release open source software (OSS). More
Patent Reform in the Courts, the Congress and the Patent Office
By Professor Lisa A. Dolak, Syracuse University College of Law
“Change” is the buzzword of the current political season. But change has already come to the patent system, and the promise (or threat, depending on your perspective) of more change is in the air. Understanding the implications of recent and proposed patent reforms is essential for anyone engaged in technology development and commercialization. The significant recent developments and pending proposed patent law revisions are summarized and discussed in this report. More
Patent Suit Brings Question of Immunity Before Supreme Court
By T. Aidan Toombs
Reprinted with permission from Sheppard, Mullin, Richter & Hampton LLP
The Supreme Court may soon consider an issue of sovereign immunity that, depending on the outcome, could open the door to private patent holder lawsuits against state governments. Attorneys for Biomedical Patent Management Corp. (BPM), a small California biotech, are seeking certiorari in a Federal Circuit case against California that was dismissed on grounds of sovereign immunity, thus denying the BPM patent holder millions it says it is owed in royalties from the state. Biomedical Patent Management Corp. v. California Department of Health Services
, 505 F.3d 1328 (Fed. Cir. 2007) (petition for cert. filed, 2008 WL 194299 (U.S. Jan. 22, 2008) (No. 07-956). The crux of BPM's argument is that California, through its aggressive patent enforcement in the courts, has basically litigated away its sovereign immunity. Or stated broadly, BPM argues that any state's repeated and voluntary invocation of the jurisdiction of federal courts to adjudicate its rights under federal patent laws constitutes a general waiver of its sovereign immunity to private suits under those same laws. More
Revenue Sharing, Pricing, and Access to State-Funded Intellectual Property:
The California Stem Cell Research and Cures Initiative
By Jordan Condo
California has distinguished itself as the birthplace of several innovative technologies. Until recently, however, California lacked guidelines for the management of its state-funded intellectual property. As recently as November 2000, California’s State Auditor concluded that many state agencies were insufficiently knowledgeable about their own intellectual property assets. The State Auditor’s report cautioned that this lack of agency knowledge could lead to abuses, such as individuals and entities (1) improperly profiting from state-funded patents; (2) using trademarks to imply state approval; and (3) claiming patent rights to state-developed inventions.
In 2004, however, the California State Assembly, led by Assemblymember Gene Mullin (D – 19th District), adopted legislation to protect California’s interest in its state-funded intellectual property. The Assembly’s efforts — driven primarily by Proposition 71, a 2004 ballot initiative to authorize state funding for stem cell research that was subsequently codified as the California Stem Cell Research and Cures Initiative (“Stem Cell Act”) — resulted in regulations that have dramatically changed the incentives for nonprofit and for-profit organizations that use state-funded intellectual property. This case study examines these regulations and their potential implications for nonprofit and for-profit organizations in California and elsewhere. More
The U.S. District Court for the Eastern District of Virginia
Permanently Enjoins the USPTO-Proposed New Rules: Tafas v. Dudas
By Allison M. Wheeler
On January 3, 2006, the U.S. Patent and Trademark Office (“USPTO”) proposed several changes to its patent examination rules to reduce the growing backlog of patent applications, improve the quality of patents issued, and streamline the patent examination process. 71 Fed. Reg. 48 and 61. The USPTO received over 500 comments on the proposed rule changes, and, after incorporating several of these comments, the USPTO submitted its final rule changes (“Final Rules”) on August 21, 2007. 72 Fed. Reg. 46716. The Final Rules, which were scheduled to become effective on November 1, 2007, would have restricted the number of continuation or continuation-in-part applications (to 2 as a matter of right) and requests for continuing examination (to 1) and required additional documentation for patent applications that contain more than 5 independent claims or 25 claims in total.
On October 31, 2007, however, the U.S. District Court for the Eastern District of Virginia (J. Cacheris) issued a preliminary injunction barring the implementation of the Final Rules; the court permanently enjoined enactment of the Final Rules in a subsequent order on April 1, 2008. On May 7, 2008, the USPTO filed a notice of appeal with the U.S. Court of Appeals for the Federal Circuit (“CAFC”). To date, the CAFC has not set a hearing date for this matter. More
Patent Reform: A Necessary Evil?
By Professor Lisa A. Dolak, Syracuse University College of Law
Reprinted with permission from innovation: America's Journal of Technology Commercialization
(February / March 2008)www.innovation-america.org
The pending patent reform legislation has divided the patent community. Its avid proponents, including a number of large high-tech companies, argue that it would reduce the number of “junk” patents and give accused patent infringers a much-needed fair chance in court. Some opponents contend that the pending bills go too far in some respects and not far enough in others. Its most vocal opponents include some advocates for independent inventors, who have nothing good to say about the current legislation.
High-pitched rhetoric emanates from “both sides.” We hear from one side that high-tech companies are under siege from “trolls” who extort windfall settlements based on worthless patents. The other side claims that the proposed changes are unconstitutional, would injure the patent system, facilitate foreign piracy of domestic technology, and cheat independent inventors. The truth lies somewhere in between. More
The Patent Exhaustion Doctrine Under Review by the Supreme Court:
LG Electronics, Inc. v. Quanta Computer, Inc.
By Philip G. Semprevio II
Over the past five years, the Supreme Court has decided eight patent cases, and it will continue to scrutinize the patent laws during its current term. The Supreme Court recently granted certiorari
in LG Electronics, Inc. v. Quanta Computer, Inc.
, a case with potentially wide-ranging implications for patent licensing agreements. At issue is the patent exhaustion doctrine, which has not been squarely addressed by the Supreme Court since 1942. This article discusses the origins and evolution of the patent exhaustion doctrine and outlines possible questions that the Supreme Court may address in its decision. More
Student Researchers’ Need for Basic Intellectual Property Instruction
By Blaine Bettinger
Unlike almost all other countries, the United States is a first-to-invent country — the right to a patent does not necessarily belong to the first person to file an application with the U.S. Patent and Trademark Office (“USPTO”). Instead, the right to a patent typically belongs to the person who can effectively prove that he or she was the first inventor. More