Nucleotide Sequences and Recombinant Technologies: Trends in the Application of the Written Description Requirement to Inventions from the Biotechnology Industry
Albany Law Journal of Science and Technology, 2012
vania) is a partner at the law firm of Dorf & Nelson, LLP, where he is the chair of the Intellect... more vania) is a partner at the law firm of Dorf & Nelson, LLP, where he is the chair of the Intellectual Property Department. Mr. Locke is a registered patent attorney whose practice includes counseling clients on the procurement, enforcement, and licensing of patents, trademarks, copyrights, and trade secrets.
The pharmaceutical sciences and their related disciplines present unique problems for the patent ... more The pharmaceutical sciences and their related disciplines present unique problems for the patent practitioner, the inventor, and the Patent Examiner when determining how, if, and when patent protection is warranted. By statutory design, the Patent Office determines whether a claimed invention is patentable, which includes an inquiry into whether the subject matter of the claims presented to it are new, nonobvious, and useful. Drawing the line between what is or is not obvious for inventions in the pharmaceutical sciences art has always been challenging because there are a finite number of elements, recurring groups, or substituents in complex molecules; structural similarities within classes of compounds; and an ability of chemists and biochemists to undertake systematic experiments in order to modify known compounds. In an era where
John Marshall Review of Intellectual Property Law, 2017
Ten years ago, the United States Supreme Court shook the foundation of U.S. patent law when it an... more Ten years ago, the United States Supreme Court shook the foundation of U.S. patent law when it announced that a patented invention could be invalidated because the claimed combination of heightened the thr whether a person of ordinary skill in the art would deem a combination of features obvious to try can be measured against a perceived a likelihood of success for achieving a purpose. But the concept does not easily translate to design patents. Those types of patents are directed to ornamental features, which by definition cannot be dictated by functionality, and thus, the success of a combination cannot be measured on an objective scale. This imperfect fit between design patents osition on if and how to apply it in the context of design patents. This article provides an overview of how courts have applied the test of nonstandard, and practice tips for litigants who wish to challenge or are met with challenges over the validity of design patents.
White House Office of the Press Secretary ("The potential for commercial development of genomics ... more White House Office of the Press Secretary ("The potential for commercial development of genomics research also presents U.S. industry with a wealth of opportunities, and sales of DNA-based products and technologies in the biotechnology industry are expected to exceed $45 billion by 2009.").
The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds o... more The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds of thousands of inventions each year before the public learns about them. Consequently, the USPTO is uniquely positioned as a funnel through which the Government can collect information about new technologies and determine which ones have implications for the safety and welfare of the nation. Under the Invention Secrecy Act, the Commissioner for Patents may order that an invention for which patent protection is sought be kept secret if disclosure of the invention might be detrimental to national security. In order for the USPTO to review patent applications and then to do its part in protecting national security, while respecting the rights of inventors, the Invention Secrecy Act provides for the implementation of a framework with three primary components: (1) the screening phase, which applies to all patent applications; (2) the maintenance of secrecy phase, which applies to those invent...
Fifth Avenue and the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion and Luxury Goods Companies, 5 J. Marshall Rev. Intell. Prop. L. 40 (2005)
Most trademark applicants and the attorneys who counsel them are familiar with the requirement th... more Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office's authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing rights without disclaiming the term when there has been a showing of secondary meaning. But for all of the ease of implementation and application, now, more than half of a century since codification of the Trademark Disclaimer Provision, one should consider whether it is worth the effort and ask: Does anyone gain by allowing examiners to require that applicants disclaim generic and descriptive portions of their marks?
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