Pierce Law Faculty Scholarship Series

Intellectual Property Management Strategies to Accelerate the Development and Access of Vaccines and Diagnostics: Case Studies on Pandemic Influenza, Malaria and SARS

Stanley P. Kowalski — Tue, 28 Nov 2006 08:49:19 PST

High court to rule on whether agency deference should apply to PTO patentability decisions

Thomas G. Field Jr — Fri, 25 Aug 2006 12:34:03 PDT

Last August, it was reported here that "the nation's dependence on technological innovation has pushed the once-obscure U.S. Court of Appeals for the Federal Circuit center stage." The article quoted several critics of the court and questioned whether the court serves the purposes for which it was designed. It also noted that the Supreme Court rarely second-guesses the Federal Circuit.

Copyrights and Beyond in the Digital Age

Thomas G. Field Jr — Fri, 25 Aug 2006 12:34:02 PDT

Those who publish novels, dictionaries, music, videos and graphics, for example, have no guarantee of professional or economic success. Their risks are similar to those who sink shafts in search of oil. Sometimes they find a gusher; more often, a dry hole. In both cases, in enterprises are to continue, successful ventures must pay for those that fail. As real property protects wildcatters, copyright helps artists, authors and publishers recover their investments.

Converting Intellectual Assets into Property

Thomas G. Field Jr — Fri, 25 Aug 2006 12:34:01 PDT

The mouse and graphic interface were first commercialized on Macintosh computers. Yet, Steve Jobs is said to have derived both from the Alto computer developed by Xerox's Palo Alto Research Center. While Jobs became a billionaire, "Xerox completely failed to get into the personal computer business, missing one of the biggest business opportunities in history."

Copyright Protection for Perfumes

Thomas G. Field Jr — Fri, 25 Aug 2006 12:34:00 PDT

In June 2004, the Lancome opinion from the Netherlands held that perfume compositions are copyrightable. NautaDutilh, the firm that represented Lancome, claimed the ruling was "internationally groundbreaking."

Avoiding Intellectual Property Problems

Thomas G. Field Jr — Fri, 25 Aug 2006 12:34:00 PDT

Patents, copyrights, trademarks, as well as trade secrets and related rights can be used to exclude free riders. These rights are usually collectively called "intellectual property" or IP.

Judicial Review of Copyright Examination

Thomas G. Field Jr — Fri, 25 Aug 2006 12:33:59 PDT

Copyright in qualifying United States works has always arisen upon creation. For many years, however, rights could be lost by failing to, e.g., provide notice, register and deposit copies when works were first published.

Direct Judicial Review of PTO Decisions: Jurisdictional Proposals

Thomas G. Field Jr — Fri, 25 Aug 2006 12:33:58 PDT

Judicial review of U.S. Patent and Trademark Office ("PTO") decisions is complex-- perhaps more than that of any other agency. One source of complexity is that courts review its decisions both collaterally and directly.

Making the Most of Commercial Global Domains

Thomas G. Field Jr — Fri, 25 Aug 2006 12:33:58 PDT

What is now known as the Internet, or the net, was initially set up in 1969 to connect computers together for defense purposes. The Internet was later expanded, under the supervision of the National Science Foundation ("NSF"), to include the research community. The Internet continued to expand, and in 1992, NSF received authorization to permit commercial activities on the Internet. Shortly thereafter, Judge McKenna, a United States District Court for the Southern District of New York, observed that "[t]he Internet is the world's largest computer network...containing several million 'host' computers...An estimated 25 million individuals have some form of Internet access, and this audience is doubling each year."

Publishers' Rights and Wrongs in the Cyberage

Thomas G. Field Jr — Fri, 25 Aug 2006 12:33:57 PDT

In 1994, William S. Strong said at a meeting of the Association of American University Presses: "I have heard Chicken Little say that the sky is falling...in the tones once reserved for statements that God is dead." He also observed that much nonsense comes out of the university community and stressed that publishers need to educate the public about the functions of copyright. Yet more than education may be required.

Promulgating Requirements for Admission to Prosecute Patent Applications

Thomas G. Field Jr — Fri, 25 Aug 2006 12:33:56 PDT

The U.S. Patent and Trademark Office is unique among federal agencies in its ability to impose special requirements on applicants. For example, the PTO requires applicants to pass a six hour examination before being admitted to practice patent cases. Indeed, the Supreme Court has held that an individual admitted to practice before the PTO need not comply with state requirements otherwise applicable to those practicing law.

Intellectual Property: The Practical and Legal Fundamentals

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:41 PDT

Patents, copyrights, trademarks and related interests are known as intellectual property (IP). It has not been long since patents especially were regarded in U.S. courts, and the Supreme Court in particular, as tools of monopolists, and their owners often fared poorly. However, people have come increasingly to view privately funded innovation as critical to national economic well-being and to agree that such innovation cannot occur unless companies that succeed in the marketplace can recoup their research, development and marketing costs. That is a major function of IP, and, particularly within the past dozen years, IP has been seen, both here and abroad, as playing a key role in developing technologies for the next century.

Access to and Authority to Cite Unpublished Decisions of the PTO

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:41 PDT

In 1986, Deputy Commissioner Peterson stated: 'As in the case of unpublished opinions of the U.S. Court of Appeals for the Federal Circuit… unpublished opinions of the Patent and Trademark Office may not be cited as precedent, except in support of a claim of res judicata, collateral estoppel, or law of the case. This opinion will be published in order to make the Commissioner's practice known.' (emphasis added.) Nevertheless, he went on to quote an earlier unpublished decision in order to inform the public of an exception to the published rule.

Prospects for ADR in Patent Disputes: An Empirical Assessment of Attorneys' Attitudes

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:40 PDT

For the most part, parties with a legal dispute have either settled their differences or, when that wasn't possible, litigated them. However, alternative dispute resolution (ADR) is increasingly urged as a supplement or substitute in a wide range of areas. ADR usually involves at least one third party who is employed by neither the judicial system nor one of the parties to the dispute. The third party may be a mediator, who helps the parties reach settlement, or an arbitrator, who renders a decision. While arbitration has been widely used for many years, until very recently, mediation (or conciliation) was more likely to be confined to labor controversies. Ironically, just as many patent attorneys began to appreciate arbitration's potential for being quicker and less expensive than litigation, a couple of cases created doubts about whether it could be used to resolve issues that are usually central to patent disputes.

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 — Fri, 25 Aug 2006 12:20:39 PDT

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.

Pharmaceuticals and Intellectual Property: Meeting Needs Throughout the World

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:35 PDT

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.

Law and Fact in Patent Litigation: Form Versus Function

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:32 PDT

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.

Brief Survey of and Proposal for Better Reconciliation of the Options in Patent, Trademark, Copyright and Related Law

Thomas G. Field Jr — Fri, 25 Aug 2006 12:20:31 PDT

A great deal has happened in the ten years since I last attempted a brief overview of this area of law. Now, as then, not much depth is possible, but the volume of more-or-less related material makes a brief overview all the more useful.

Patent Arbitration: Past, Present and Future

Thomas G. Field Jr — Fri, 25 Aug 2006 11:41:11 PDT

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?

Law/Science in Law Schools

Thomas G. Field Jr — Fri, 25 Aug 2006 11:41:10 PDT

Hugh Gibbons has recently completed a four-part series in which he concludes that there are three questions 'about science and technology that are singularly within the province of law; (1) How should technology be employed in the legal process? (2) In what ways should law affect science and technology? (3) Under what scheme should decisions about science and technology be made?' Also, he concludes that these questions should be addressed in law schools. I agree. It would be difficult to determine what should be done in each instance without determining what is being done. Moreover, it would seem to be impossible to address, e.g., the third question without being mindful of various uniquely legal contraints such as those imposed by the Constitution.