Given the ongoing debate in the political arena about stem cells research and human cloning, this article investigates the U.S. Patent and Trademark Office's (PTO) past and present practice with respect to patenting such technologies. Interestingly enough, the cloning debate is no stranger to Missouri and Kansas. A couple of years ago, the University of Missouri obtained U.S. Patent No. 6,211,429. The patent was directed to a cloning technique used with "mammals," in which humans were not expressly excluded from the definition of "mammals."

Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute. In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial.

The Supreme Court found that the Federal Circuit correctly held that a narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel, but that the Federal Circuit went too far when it created a per se rule, rather than only a presumption, that any such estoppel barred the application of equivalents to the narrowed element.

Traditionally, the old adage "publish or perish" has governed a person's success in academia. Nowadays, most colleges have a new mantra when scientific inventions are involved. As universities continue to partner with businesses to commercialize their discoveries by patenting them, the new academic motto is perhaps "publish and perish." Under the Patent Act, an invention described in a "printed publication" more than one year before the filing date of a patent application will bar a patent on the invention.

Intellectual property (IP) is an integral part of any business strategy, impacting market decisions, company differentiation and positioning. IP drives revenue, market share and shareholder value. Protecting and enforcing the company?s intellectual property by prevailing at the Federal Circuit Court of Appeals is akin to reaching the summit of Everest. The path is notoriously difficult and dangerous, but the prize justifies the risks. A judgment of patent infringement can cause great harm to infringing companies and may result in an award of damages so large that the infringing company cannot survive. Failure can be devastating. The asserted patents can be found not to have been infringed, or worse, invalid or unenforcable. Like climbing Everest, success before the Federal Circuit requires knowledge of the terrain, necessary tools for every stage and a wealth of experience to respond to the unexpected. It is a serious undertaking, with much in the balance.

Has the trend toward a one-stop shopping world pervaded our legal system, and specifically the patent community? We are well aware of recent globalization and the accompanying expansion of cross-border research and development, outsourcing to manufacturing facilities abroad and blossoming international trade. Multinational corporations depend upon revenue generated by these activities, which are often the subject of patents granted by the United States , Canada and other countries.

The GATT amendments to the U.S. patent statute, Title 35, U.S. Code, impose a subtle effect on potential damages r.

Interpreting the scope of patent claims can be like trying to parse a novel jointly written by Stephen Hawking and James Joyce. The unenviable task of legally interpreting the scope of patent claims was taken from juries and given exclusively to judges in 1995 in the Markma. But shifting the responsibility did little to make patent litigation a less toxic odyssey of expense and uncertainty. Now the Federal Circuit, the nation's highest patent court, has before it the Philips v. AWH Corporation case, which addresses the fundamental guidelines for the claim construction task.

On March 26, 2004, the Director of the United States Patent & Trademark Office issued reexamination orders regarding four patents from the Katz Patent Portfolio, representing nearly 350 separate claims. Although the orders require reexamination of only a fraction of the claims in the Katz Patent Portfolio, likely these Director-initiated reexaminations will invigorate prior art searching efforts and requests for reexamination proceedings by companies Katz has approached about taking a license.

The United States is on the verge of enactment of a law that would inject "pro-life" politics squarely into the patent arena. Indeed, a bill sponsored by Rep. David Joseph Weldon (R-Fla.) would codify the U.S. Patent and Trademark Office's existing policy that human organisms are ineligible subject matter to patent. In other words, if the bill becomes law, then the USPTO would be barred from issuing patents claiming human organisms, including genetically engineered embryos, fetuses, and human beings.

What is the meaning of the word about when used in a patent? The Federal Circuit Court of Appeals confronted that elusive question in a recent dispute between two pharmaceutical manufacturers and expert testimony proved important in finding the answer.

Few cases in the last twenty years have elicited as much interest as that of Markman v. Westview, 52 F. 3d 967, 34.

William J. Bohler is a partner in Townsend and Townsend and Crew LLP?s San Francisco office. He has extensive experience in all phases of intellectual property practice, including patent preparation and prosecution, client counseling, technology licensing, and litigation. Mr. Bohler received his J.D. from Southern Illinois University magna cum laude, and a B.S. in Electrical Engineering from Purdue University.

On remand from the Supreme Court, the Court of Appeals for the Federal Circuit recently revisited the issue as to whether prosecution history estoppel barred a patent owner from relying on the doctrine of equivalents in a patent infringement suit. In this highly anticipated decision, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., the court concluded that the doctrine of equivalents might still be available to the patentee and remanded the case to the district court to make the determination. In reaching this conclusion, the Federal Circuit addressed whether any of three mechanisms for rebutting the presumption that prosecution history estoppel applies were available to the plaintiff and determined that one of them – unforeseeability – might be.

Byron W. Cooper is one of the co-practice group leaders of the Litigation Practice Group at Townsend and Townsend and Crew LLP. He counsels clients regarding litigation, licensing, patent prosecution, intellectual property portfolios and has assisted in high-profile patent litigation cases nationwide defending and prosecuting claims of infringement and the validity of patents. Mr. Cooper earned his J.D. from University of California at Los Angeles (1993); M.S. from University of Southern California (1988) and his B.S. from United States Military Academy at West Point (1986).

This article discusses the change in policy which allows courts to interpret claims themselves, thus saving both plaintiff's and defendants from having to conduct discovery on every point of law that may arise.

Richard C. Hsu is Co-Chair of the Technology Licensing Group, where he counsels and provides companies advice on all licensing transactions and associated intellectual property issues. He has extensive experience in licensing, development, acquisitions, service and other partnering agreements for a variety of industries, including semiconductors, life sciences, medical devices, hardware, software and telecommunications.

On March 3, 1997, the United States Supreme Court rendered its anxiously awaited patent law opinion in Warner-Jenki.

Patent litigation is not for the faint of heart as it carries tremendous risk and reward. Typically, patent litigants are "betting the company." The stakes are high: one case awarded almost $1 billion in damages. The successful patent-owner almost always secures a court order prohibiting further infringement, which removes a competitor from the market the very next day.

Does a patent mean more than it says, or more accurately, does the protection afforded by a patent exceed the liter.

How long does a patent last? About 17 years depending on the type of patent and prosecution history.

The determination of whether a patent claim has been infringed requires a two-step analysis. First, the court must interpret the asserted claims as a matter of law to determine their scope and meaning. Second, the trier of fact must judge whether each claim element, as construed by the court, is present in the accused device.

A utility patent confers the right to exclude others from making, using, offering to sell, or selling an invention in the United States. The patent term measures the time period in which a patent holder may exercise patent rights. During a patent's exclusivity period, the patent owner(s) may capitalize on the patent in a variety of ways including manufacturing, marketing, licensing, or selling an invention.

Intellectual property due diligence is generally conducted coincident with an investment or acquisition. Often the intellectual property is the most important asset of the target, particularly in the case of a start-up. Certain characteristics typify the due diligence process, regardless of the nature of the transaction, the underlying technology, or the size of the portfolio. Those characteristics include a short timeline, budget constraints, reliance upon representations made by counsel and the principals of the target, and the necessity of drawing conclusions.

Companies and universities use the GeneChip® array in the laboratory for research, particularly for drug discovery purposes and detecting polymorphisms. The GeneChip® array is also used for diagnostic purposes; however, more diagnostic applications will likely be developed in the future. Researching drug discovery is the most common application at present.

This article details Federal Circuit decisions which relate to a patent document's scope of protection.

On March 25, 1998, in an extraordinary ruling, an en banc decision by the Federal Circuit was issued. Cybor Corp. .

Prior to taking the first patenting step, every organization should first consider how the patent will fit within the objectives of the business or within the mission of the organization. A patent is not the end goal, but is a business tool, that, when used properly, adds value to an organization. Thus, a determination of the commercial objectives for the technology is crucial to extracting value from the patent.

On January 23, 2004, Judge Philip M. Pro of the United States District Court for the District of Nevada issued his decision in Symbol Technologies/Cognex Corporation v. Lemelson Medical, Education & Research Foundation, applying the doctrine of prosecution laches to hold certain key Lemelson bar code and machine vision patents unenforceable. Lemelson has 30 days to appeal Judge Pro's decision to the Court of Appeals for the Federal Circuit.

This article explains the background of a patent claim and how the information in a patent claim is similar to the information found in a deed that describes a parcel of property.

The costs of patent litigation - both in terms of time and money - have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals.

Intellectual property (IP) is an integral part of any business strategy, impacting market decisions, company differentiation and positioning. IP drives revenue, market share and shareholder value. Protecting and enforcing the company's intellectual property by prevailing at the Federal Circuit Court of Appeals is akin to reaching the summit of Everest. The path is notoriously difficult and dangerous, but the prize justifies the risks.

The prior newsletter discussed the documentation that should be maintained for a construction project. This articl.

Current technological advances ranging from biotech and nanotechnology to electronics and software can be used to both protect and jeopardize the security and privacy of individuals. This paper highlights some Intellectual Property (IP) strategies to successfully navigate the competitive landscape of these technical industries.

This reports looks into what a patent counsel needs to investigate in order to set forth a strategy which will help a client protect its product line in the marketplace.

Conducting an intellectual property audit is an important business process. It can insure a company's IP assets are being adequately identified, protected, and enforced; provide information to potential investors; and inform a potential licensee or acquirer of an IP asset's value. In addition, an IP audit can result in company executives adopting or changing an approach toward IP that adds value and reduces risk to the company.