Link: Chemical & Engineering News (C&EN) has a recent article (September 14, 2004) on the attempts by consumer groups to use the Bayh-Dole Act to control drug prices. The article provides background and summary information on the Act, and details recent attempts by Essential Inventions to get NIH to exercise march-in rights to control the price of Norvir (Abbott) and Xalatan (Pfizer).

The article also discusses the legislative history of Bayh-Dole and the Congressional intent behind the provisions that require the patent holder to make the invention available to the public on “reasonable terms.” Under the act, the government can march-in and grant licenses to others if any of four conditions are not met regarding availability of the invention.

It appears that, in the past, people tended to view the legislative intent behind the Act as focused on utlilization (e.g., the patent holder couldn’t shelf an invention for which a demand exists), and not availability (e.g., cost of product). Now, however, some say its not so clear.

Both of Essential Inventions petitions have been denied (see this prior PTP post), but it seems as if they have succeeded in getting people to think differently about the Act itself.

Link: The new fee schdule goes into effect on Friday, October 1, 2004. You can save $20 ($10 for small entity) by filing your patent application on Thursday.

If you’re a lawyer with a website (or a lawyer who wants a website) and haven’t read the recent Andy Havens column on LLRX, you should. Now. It includes an interview with Kevin O’Keefe of lexBlog fame.

As I read the article, I kept thinking of that famous one-liner fromThe Graduate. “just one word. . . plastics…”

Just one word….Blawgs.

The blog culture has taken off in a big way. Last week, in the midst of the CBS news scandal, a tech-challenged family member asked me “What’s a blog?” This particular person was interested because the news kept mentioning blogs in connection with the story. Putting my frustrations aside (I have told this person about this blog several times over the last six months, apparently to no avail….), I gave the usual description. Now, they want me to help them get started with blogs.

My point — if blogs have reached the point at which “regular people” (my tech-challenged family member) are interested in and beginning to use blogs, its probably about time for “regular lawyers” to get very interested in blawgs. I bet we’ll see an onslaught of blawgs over the next few years (months?).

I wonder what big firm culture will do with blawgs? Its not difficult to imagine a big firm deploying a blawg (or 10…) and requiring associates to meet annual content requirements (e.g., an associate must post 25 items a year). I’m not sure big firm culture would work with the free-flowing blawg culture, though. I envision “blawg committees” and “blawg leaders”.

Keep in mind I’m not a small firm lawyer who hates big firms. I owe my start to a big firm. Indeed, if it weren’t for a twist of fate, I’d likely still be practicing in a big firm.

Representative Joe Baca (CA) recently introduced H.R. 5036 to extend the term of patent RE 38,014 that apparently includes claims that read on the MagLite flashlight.

According to a press release on Mr. Baca’s web site, the bill

“…protects the investment of Mag Instrument’s patent…and protects workers in the Inland Empire….If this patent expires, the likely outcome is that numerous foreign companies will flood the market with imitations and knock-offs.”

Mr. Baca stresses his American-job-protection justification for the bill:

“In a time when many companies have shipped American jobs overseas, Mag Instrument has remained in the Inland Empire and created jobs for our community. We must protect Mag Instrument and its commitment to job creation in the Inland Empire.”

I suppose that soundbite helps the bitter pill of Congressional extension of patent terms go down a little more smoothly, especially in Mr. Baca’s district. Its not hard to imagine, though, that the loss of American jobs rationale could apply to any patent that covers a product manufactured in this country.

And, isn’t the introduction of cheaper products upon patent expiration one of the fundamental purposes of the patent system?

Link (subscription required): Yesterday’s Wall Street Journal ran an article (Antipiracy Bill Divides
Studios and Tech Companies, page B1) about the controversial INDUCE Act. The article delineates some of the parties on the for and against sides of the bill.

Link: China is on a huge campaign to either curb piracy or to convince the world that its trying to do so. The latest effort is a series of concerts, called the “I pledge” concerts, in which members (concert-goers?) pledge “that they will not buy pirated and counterfeit goods, and respect the intellectual property rights of others.”

I recently installed the pat2pdf script on my laptop. The script allows me to download free US patent .pdf’s right from my XP desktop. Again. Thanks go to Canadian attorney Peter Eliopoulos for documenting the nuts and bolts of getting the script to run on XP.

Peter’s install notes are here.
Nipper added some of his own notes.

Here are notes from my installation experience:

1. Regarding Peter’s step 1, Nipper wondered if he needed both the bin and src files for the cygwin packages Peter instructs us to download. I’m guessing the src file is the source code for the package, so I skipped these files. My installation is working – you only need the bin files.

2. In Peter’s Step 5, he instructs you to run the mount command in the cygwin bash shell. My aging eyes didn’t detect that there are two paths listed for this command (I typed Peter’s instruction in as one continuous path). Thus, in this step, you must enter the command as follows:

mount D:/patents [SPACE] /patents

Each of the paths is the patent download directory you created in Peter’s step 3. The first instance includes the drive letter. The second doesn’t. The [SPACE] between the paths is a single space (i.e., don’t type in [SPACE]). Not recognizing this added about 30 minutes to my installation. Damn this small screen on my tablet PC….

3. Nipper reports trouble with the CD command. CD is working fine for me, but I have no clue as to why. Peter is looking into it….

The script works beautifully. Thanks again, Peter.

Link: The Patently Obvious Blog (Dennis Crouch) has posted an excellent rundown of several amicus briefs filed in the Federal Circuit’s rehearing of Phillips v. AWH.

The Federal Circuit is rehearing the appeal, en banc, in Phillips to resolve issues regarding claim construction and the proper use of dictionaries.

The specific questions on which amicus briefs were invited are listed in the Court’s July 21, 2004 Order (.doc).

The 33rd session (19th extraordinary session) of the International Patent Cooperation Union (PCT Union) starts today. Agenda items include reform of the PCT, status report on PCT information systems, and a proposed readjustment of the international filing fee.

Documents prepared by the International Bureau for the Assembly are available here.

Senators Larry E. Craig (ID) and Dick Durbin (IL) introduced S.2796 as a bill to clarify that service marks, collective marks, and certification marks are entitled to the same protections, rights, and privileges of trademarks. The bill makes simple amendments to the Lanham Act to accomplish its goal (see text of the bill here (.pdf)).

The bill is designed to specifically address the decision of the Second Circuit Court of Appeals in Idaho Potato Commission v. M&M Produce Farm and Sales (.pdf) (335 F.3d 130, 2d Cir. 2003). In Idaho Potato Commission, the court interpreted the Lanham Act as requiring that certification marks be treated differently than trademarks with respect to “no challenge” provisions in license agreements. Under an agreement that includes a “no challenge” provision, the licensee acknowledges and agrees not to challenge the validity of the mark.

Many courts have upheld “no challenge” provisions in trademark license agreements and dismissed validity challenges brought by the licensee. Patent license agreements, however, are treated very differently. In Lear v. Adkins (395 U.S. 653, 1969), the Supreme Court explicitly overruled precedent establishing licensee estoppel. In Lear, the Court acknowledged that, considering the preclusive effect of patents, it is desirable to encourage challenges to the validity of a patent. The Court stated that “[l]icensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor’s discovery.”

In Idaho Potato Commission, the Second Circuit Court of Appeals ruled that “no challenge” provisions in license agreements for certification marks are governed by Lear, reasoning that the policy considerations underlying certification marks is more analagous to patent policy than trademark policy.

The bill is designed to remove this newly-established distinction between certification and other types of marks.

According to remarks by Mr. Craig, S.2796 is designed to make it clear that all types of marks protected by the Lanham Act are to be accorded the same rights and protections except as specifically provided by statute. In remarks made on the record regarding the background and intent of the bill, Mr. Craig stated that:

It is important to remove any perceived distinction between certification marks and collective marks as compared to trademarks, except as expressly provided otherwise by statute…..Licenses governing certification marks, and the provisions contained in such licenses, should be treated no less favorably than licenses for trademarks and other marks. “No challenge” provisions, and other non-quality related provisions in certification mark licenses or agreements are to be accorded the same respect and treatment, and are to be the [sic] subject to the same principles of equity, as like provisions in trademark licenses and agreements.

The bill has been referred to the Committee on the Judiciary.

UPDATE October 7, 2004: S.2796 passed the Senate by unanimous consent on October 6, 2004. The companion bill, H.R.5194, has been referred to the House Committee on the Judiciary.

UPDATE February 10, 2005: Bill reintroduced in 109th Congress as H.R. 784.