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PUBLICATIONS
| Cite as: J. High Tech. L. |
| Professor Andrew Beckerman-Rodau & Professor Michael L. Rustad |
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| N. Scott Pierce |
| Pierce traces the statutory requirement of patent “utility” in 35 U.S.C. § 101 from its beginnings in the Patent Act of 1790 through the Patent Act of 1952 and the recent decision by the United States Court of Appeals for the Federal Circuit in In re Dane K Fisher and Raghunath V. Lalgudi. Along the way, Pierce examines the distinction which has developed between “positive utility,” and “comparative or relative utility.” Pierce argues that over the course of the nineteenth century courts and scholars used the term “positive utility” to characterize “usefulness,” while “comparative or relative utility” (whether the subject matter of the patent is an advancement substantial enough to justify granting an exclusive right to a patent) became linked to the notion of “substantial novelty” (the antecedent to the modern notions of novelty and non-obviousness). By the twentieth century, Pierce explains that courts began to infuse the requirement of “positive utility” in 35 U.S.C. § 101 with the preliminary requirement that the invention have “substantial” or “credible” uses. Thus, Pierce uses this discussion to explain why the court in In re Dane K. Fisher wrongly denied the claimant’s patent for sequences of nucleic acids. Finally, Pierce argues that determining patentability based on an invention’s degree of benefit or contribution should properly be determined under the non-obviousness requirement of 35 U.S.C. § 103. |
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| Ken Burchfiel |
| Burchfiel examines the Supreme Court's recent clarification of the scope of the safe harbor provision under the patent laws. The provision, providing an infringement exemption for patented inventions used for the development drugs, had been narrowly interpreted by Federal Circuit. Burchfiel explores the various divergent interpretations of the statutory exemption and the Supreme Court's adoption of a seemingly broad interpretation. He suggests that though the Court adopts a broad interpretation of the exemption, the holding was actually much narrower than it seems on its face. Focusing on the Court's repeated emphasis on the limited question it considered, Burchfiel argues that the exemption applies to research that would be appropriately included in FDA submissions. |
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| Denise W. DeFranco, Carla Miriam Levy, and Miriam L. Pogach |
| This article explores the current state of the common-law experimental use exception to patent infringement liability. DeFranco, Levy, and Pogatch examine the doctrine in light of the Hatch-Waxman Act and several recent Federal Circuit decisions applying the exception, determining that the exception is of little practical applicability and is likely inconsistent the Hatch-Waxman Act’s regulatory safe harbor provisions. Accordingly, they conclude that the common-law exception is no longer viable and should be abandoned. However, given the need to encourage scientific development, the authors argue that Congress should amend the patent statute to protect experimental uses in certain situations. A legislative solution, they argue, is necessary given the widespread policy questions associated with determining the scope of such an exception. Finally, the authors note that a statutory solution is desirable because it would provide clear guidelines to individuals seeking to determine whether a given use of a patented invention is covered by the exception. |
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| Michael R. Dzwonczyk |
| Attorney Michael Dwonczyk’s examination of significant Federal Circuit Court decisions provides an expansive analysis of patent law developments in 2005. He traces the developments of patent law in four distinct categories, including the momentous Phillips case heard en banc on the issue of claim construction. Dwonczyk makes it clear that the previous presumption in favor of dictionary definitions was abandoned with the straightforward ruling of Phillips, and also reveals optimistically that the claim construction decisions coming after Phillips have adhered to the principles set fourth by the en banc court. Dwonczyk also evaluates recent cases on the extraterritorial reach of U.S. patent law under 35 U.S.C. §271(f), inequitable conduct, and enablement. He illustrates that these rulings not only clarify, but in some cases confuse existing patent law principles. |
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