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Volume 93, Issue 4

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Dicta on Adrenalin(e): Myriad Problems with Learned Hand’s Product-of-Nature Pronouncements in Parke-Davis v. Mulford -Jon M. HarknessAn Empirical Study on the Use of Technical Advisors in Patent Cases -Joshua R. NightingaleAN OVERVIEW OF PATENT REFORM ACT OF 2011: Navigating the Leahy-Smith America Invents Act Including Effective Dates for Patent Reform -Hung H. Bui, EsqPost-Issuance Proceedings in the America Invents Act -Andrei Iancu and Ben HaberAnnual Index (2011)
* Dicta on Adrenalin(e): Myriad Problems with Learned Hand’s Product-of-Nature Pronouncements in Parke-Davis v. Mulford -Jon M. HarknessAbstract: Gene patents of the type at issue in the Myriad case, which might soon be heard by the U.S. Supreme Court, arise from an exception to the rule that products of nature cannot be patented. This exception allows that isolated products of nature can be patented if they have commercial utility, which is widely recognized as traceable to language from an opinion issued by Judge Learned Hand in Parke-Davis v. Mulford. This 1911 case was a patent dispute over a therapeutic version of the hormone adrenaline. This article is based on a detailed historical examination of Parke-Davis and the patent application process that predated the litigation by roughly a decade.Parke-Davis was a classic (and protracted) priority dispute; the litigants gave no discernible attention to whether isolated products of nature could be patented. Hand’s now-famous Parke-Davis pronouncements on the patentability of isolated products of nature were under-informed dicta, which conflicted with existing patent law. Between 1900 and 1903, a senior patent examiner repeatedly rejected the Adrenalin patent application because he believed that the hormonal product was merely an isolated product of nature and, therefore, unpatentable according to principles articulated in Ex parte Latimer (an 1889 case denying a patent on a pine-needle core used for making textiles, because the core was an isolated product of nature). The Adrenalin patent applicant accepted Latimer as controlling and succeeded in obtaining a patent by arguing that his medical product was different than the hormone—not just a purified version thereof. Hand’s dicta from Parke-Davis essentially lay dormant until 1958, when it was relied upon by Fourth Circuit judges grappling with the patentability of vitamin B12. By 1958, Hand had become a living legal legend, and his judicial colleagues did not recognize that, in 1911, a 39-year-old district court judge—less than two years removed from law practice on Wall Street (handling one of his first patent cases)—had made an uninformed mistake in Parke-Davis. In the years since 1958, Hand’s errant Parke-Davis pronouncements have ascended from obscurity to conventional wisdom. These revelations have potentially important implications for the outcome of Myriad. The significance of this historical analysis is, perhaps, further amplified because Judge Kimberly Moore acknowledged that her recent Federal Circuit swing vote in Myriad was largely determined by a history of “settled expectations,” which she identified as starting with Parke-Davis. _________* An Empirical Study on the Use of Technical Advisors in Patent Cases —Joshua R. NightingaleAbstract: Patent infringement cases pose considerable challenges to federal district court judges. First, patent cases involve a specialized, nuanced body of law with which the majority of federal district court judges have very little experience. District court judges, however, are expected to be generalists who can quickly get up to speed in cases involving nearly any field of law. [M]ost district court judges are not technologically trained. Indeed, the average district court judge may be described as “a smart, accomplished, and legally sophisticated person who is technologically ignorant: an able and successful lawyer before appointment, but a person who might have been a history or English major and who may never have taken a course in calculus or in any basic science at all.” Furthermore, this typical judge is asked not only to grasp broad scientific principles but also to make sophisticated determinations about ambiguities in patent claim language, which can turn on “technologically forbidding material at its most obscure.” Commentators have noted that patent claim construction, the key issue of most infringement cases, is usually less about legal principles of document construction than it is about science and technology: “The construction of the patent claim is inexorably intertwined with the science that underlies, indeed shapes, them.”This Article seeks to shed light on the use of technical advisors in federal district court patent litigation. [It] provides a basic primer on patents, patent law, and patent claim construction; to understand the plight of the district judge, the contours of his technical decision-making must be set forth. [It] describes the means by which a district judge can gain technical assistance in patent cases, including the use of court-appointed experts, patent special masters, and technical advisors. These technology teachers are compared and contrasted. [It] discusses TechSearch, L.L.C. v. Intel Corp.,25 a watershed case in which the Federal Circuit addressed the use of technical advisors in the patent context for the first time. [It], the heart of this Article, details the results of an empirical study on the use of technical advisors in federal district court patent litigation. The analysis was largely based on the 26,380 district court cases filed between April 11, 2002 and December 31, 2010, that have been identified by the federal judiciary as “patent cases.” After identifying these 26,380 patent cases, a search of their docket sheets revealed that technical advisors were contemplated in 434 of these cases, and a technical advisor was actually appointed by the court in 287 of them. Tabular material set forth in [the article] further details the results of the analysis, including the incidence of use of technical advisors by year and by district court. The docket sheets were further analyzed to identify the average profile of the individuals who serve as technical advisor. Finally, [It] details the issues addressed by technical advisors when appointed and the specific functions performed by them in assisting the court._________* AN OVERVIEW OF PATENT REFORM ACT OF 2011: Navigating the Leahy-Smith America Invents Act Including Effective Dates for Patent Reform —Hung H. Bui, Esq Abstract: This article provides a detailed overview of the changes to patent law made in the Leahy-Smith America Invents Act, also known as, Patent Reform Act of 2011, signed into law by President Obama on September 16, 2011. [T]he Patent Reform Act of 2011 still represents the most significant reform of U.S. patent law in nearly 60 years, since the 1952 Patent Act,36 including: • Moving the U.S. from a “first-to-invent” system to “first-to-file” system with a limited one-year grace period only for an inventor’s own prior publication and inventor derived public disclosure;- Eliminating “interference proceedings” and replacing therewith “derivation proceedings” to ensure first to file is actually an original inventor and not derived from another; Eliminating best mode failure as a litigation defense- Prohibiting the issuance of patents claiming “any strategy for reducing, avoiding or deferring tax liability” and “human organisms;” Eliminating the incentive to sue for false patent marking and to join multiple defendants in a single lawsuit; Codifying existing regulations for 3rd party submission of prior art in published applications and expanding time period for 3rd party submission of prior art; Expanding prior user rights as a defense to infringement to all technologies (not just business method claims); Creating new USPTO proceedings for Post-Grant Review and Inter Partes Review (where any person can challenge the validity of a patent within the USPTO with limited discovery) and Supplemental Examination (where a patent owner can correct problems with a patent and strengthen the value of the patent in anticipation of litigation); and Creating a new Patent Trial & Appeal Board to replace “Board of Patent Appeals and Interferences” to handle, among others, new Post-Grant Review and Inter Partes Review._________* Post-Issuance Proceedings in the America Invents Act —Andrei Iancu and Ben Haber Abstract: The current American system [for post-issuance proceedings] exists in stark contrast to practice in other countries. For example, opposition proceedings are available to challenge the validity of patents recently issued by the European Patent Office. Additionally, both pre- and post- issuance opposition has long existed for United States trademarks. It is against this backdrop that Congress revamped the options availablein the PTO for post-issuance review of recently issued patents. [This article] describe[s] the post-issuance proceedings available in the PTO when the America Invents Act is fully implemented. [It] provide[s a] brief summary of the procedures that were available before passage of the Act. [The article] provide[s] a detailed description and analysis of the options made available by the Act. Finally [it] conclude[s] that Congress clearly intends to make the PTO a viable alternative to district court litigation for answering questions of patent validity.

Volume 93, Issue 3

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Patently Obvious: Why The District Court’s Ruling in Association for Molecular Pathology v. USPTO is Incomplete -Kristin WallNonobviousness Standards for Hardware and Software Before and After KSR: What is the Difference? -Michelle Friedman Murray The Integrity of Section 101: A "New and Useful" Test for Patentable Subject Matter -Daniel J. KleinClaim Preambles: Unnecessary Matters of Chance and Confusion -Kirk M. HartungAre Intellectual Property Rights Human Rights? Patent Protection and the Right to Health -Mirela V. Hristova
* Patently Obvious: Why The District Court’s Ruling in Association for Molecular Pathology v. USPTO is Incomplete -Kristin Wall Abstract: In March of 2010, the United States Court of Appeals for the Southern District of New York invalidated Myriad Genetics’ patents on the BRCA1/2 genes, which predict susceptibility to breast and ovarian cancer. Prior to this decision, the USPTO and the legal system at large accepted patents relating to human genes as patentable subject matter. In opposition to this standard, the District Court found that human DNA sequences are inherently products of nature and thus fail under 35 U.S.C. – 101. The Court should not have stopped there, however. The Intellectual Property Clause of the U.S. Constitution creates a standard for patentability based on inventiveness. Merely pinpointing the location of a particular gene sequence based on public informa- tion, as Myriad and other companies have done, does not meet this standard. Furthermore, isolating particular gene sequences is obvious under 35 U.S.C. – 103, and as such renders all gene sequences unpatentable. The social and economic implications of invalidating existing gene patents and pre- venting future patenting are many; while the financial incentive afforded those holding exclusive ownership rights may decrease, free exchange of ideas and the public’s ability to receive diverse services will proliferate. * Nonobviousness Standards for Hardware and Software Before and After KSR: What is the Difference? – Michelle Friedman Murray Abstract: Conventional wisdom holds that the bar for nonobviousness for software patents is higher than the bar in other technology areas. Little attention has been paid to the nonobviousness standard for hardware. Hardware and software are both considered predictable arts. Hence, to the extent that hardware and software involve a high level of skill in the art, both hardware and software should have a high bar to proving non- obviousness. It is possible that the standard for nonobviousness in software is lower because of a difference in the level of skill in the art. In the 2007 decision KSR International Co. v. Teleflex Inc., the Supreme Court overruled the Federal Circuit’s nonobviousness analysis using the TSM test, finding that an explicit teaching, suggestion, or motivation to combine prior art references in the prior art was not required to obviate the obviousness of patents based on the combination of multiple prior art references. Before KSR, the Federal Circuit’s bar for proving nonobviousness was somewhat higher for software than for hardware. However, this seemed to be partly because of the level of skill in the art for the particular inventions, not for the technology area as a whole. The level of skill was high for all of the hardware patents considered in this paper, and for many of the software patents. However, the relevant level of skill in the art was low for some software patents, which caused the bar for proving nonobvious- ness to appear higher for software patents than for hardware patents. After KSR the difference in the nonobviousness standards between hardware and software standards decreased. Based on the limited number of relevant cases since KSR, there is now no discernible difference between the nonobviousness standards for hard- ware and for software. The standard for nonobviousness in hardware patents appears to have been affected more by KSR than the standard for nonobviousness for software patents, decreasing the gap between the standards. * The Integrity of Section 101: A "New and Useful" Test for Patentable Subject Matter -Daniel J. Klein Abstract: This Article seeks to highlight the Supreme Court’s discordant treatment of unpatentable subject matter and suggests that courts should no longer look outside the language of – 101 for determining the scope of subject matter patentability. For over 150 years, the Supreme Court has analyzed subject matter patentability by invoking extra-statutory categories of unpatentable subject matter. In Diamond v. Chakrabarty, the Supreme Court distilled this jurisprudence into three categories – the trilogy: laws of nature, physical phenomena, and abstract ideas. However, Chakrabarty did not seek to define these categories, but merely stated them as though the terms had an inherent mean- ing. The trilogy and the various categorical exclusions that came before it reduced the underlying analysis of subject matter patentability into metaphysical labels, thus perpetuating extra-statutory subject matter requirements that demand courts and patent examiners to engage in highly subjec tive interpretations of the metaphysical qualities of an invention. Moreover, courts invoking these categorical exclusions have issued sweeping decisions as to the subject matter patentability of broad classes of science and technology. A long history of courts engaging in this approach has created a non-cohesive and inconsistent body of subject matter precedent. As such, an unpredictable legal landscape for patentable subject matter awaits inventions yet unknown and unknowable. This Article proposes a substantive test for patentable subject matter based on an invigoration of the language "new and useful" in 35 U.S.C. – 101. The proposed test thus restores integrity to the statute and departs from the use of extra-statutory categorical exclusions. TheArticleapplies the proposed test to seminal Supreme Court decisions in which categorical exclusions were invoked to establish proof of concept by demonstrating that a similar outcome is often reached, but without a subjective interpretation of an invention’s metaphysical qualities. The Article focuses on the decision in Association for Molecular Pathology v. USPTO (Myriad), in which all forms of isolated DNA were held to be unpatentable subject matter, as a case study in the consequences that hold when courts seek to apply extra-statutory categorical exclusions. The Article revisits Myriad to further validate the proposed "new and useful" test by demonstrating that, had it been applied, the reasoning would be simplified and the holding appropriately limited. * Claim Preambles: Unnecessary Matters of Chance and Confusion -Kirk M. Hartung Abstract: Whether a preamble of a patent claim con- stitutes a limitation to the claim has been an issue for more than 75 years. In the past 50 years, there has been much debate regarding claim preambles, and whether terminology in the preambles limits the scope of the claims. Most recently, a 2010 decision from the Court of Appeals for the Federal Circuit recognizes that the Court has struggled to make sense of when a preamble should be construed as limiting, and that the Court has not succeeded in articulating a clear and simple rule. Justice Dyk lamented that this lack of clarity as to whether a preamble should be construed as limited has lead to inconsistent case law, which one leading treatise has said it is "difficult to reconcile." The vague and confusing rule on pre- amble terminology has never been addressed by the U.S. Supreme Court or the Federal Circuit sitting en banc. The solution seems simple, and consistent with Supreme Court precedent from more than a century ago. As the U.S. Court of Claims declared more than 40 years ago, "The necessity for a sensible and systematic approach to claim inter- pretation is axiomatic." * Are Intellectual Property Rights Human Rights? Patent Protection and the Right to Health -Mirela V. Hristova Abstract: We live in a world in which the creation, diffusion and manipulation of information has come to define an ever increasing array of economic, political and cultural activities. The attendant expansion of the intellectual property system to new, previously unaf- fected territories has become a paramount concern on theoretical and empirical levels alike. In particular, the intellectual property system has significant consequences that affect the enjoyment of various human rights. The thesis of this paper is that, since some intellectual property rights – those which protect the personality of the creator or inventor – can be conceptualized as human rights themselves, the conflict between them and other human rights is to be evaluated under a "relative priority" or "balancing" approach. The paper further applies this theoretical framework to the conflict between the human right to health and patents on pharmaceuticals, which incentivize the development of drugs by providing pharmaceutical companies with temporary exclusivity to market them. The paper ends by emphasizing that, while the right to health is particularly compelling and has forced the developed world to acknowledge its precedence over intellectual property rights, balancing may be much more complex when human rights of less clearly established contours are implicated.

Volume 93, Issue 2

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Patent Law Harmonization in the Age of Globalization: The Necessity and Strategy for a Pragmatic Outcome -Dongwook ChunLicensing As a Means of Providing Affordability and Accessibility in Digital Markets: Alternatives to a Digital First Sale Doctrine -Johnathan C. TobinA Special Rule for Compound Protection for DNA-sequences – Impact of the ECJ "Monsanto" decision on Patent Practice -Jan B. Krauss and Toshiko TakenakaYou Can Run, but You Can’t Hide: The Expansion of Direct Infringement and Evisceration of Preventive Contracting in Maersk -Melissa Y. Lerner
_____________________________________________"Patent Law Harmonization in the Age of Globalization:The Necessity and Strategy for a Pragmatic Outcome” – by Dongwook ChunWhile international patent law harmonization has been an issue in progress since the conclusion of the Paris Convention in 1883, it is facing new challenges due to its rising prominence in a knowledge-based economy and the world’s growing sensitivity to the patent system’s social and economic role in society. Since their beginning, patent laws have been inherently diverse for several reasons: territoriality, and distinct policy goals and cultural backgrounds of each nation.However, as globalization intensified the problem of fragmented patent laws, arguments for harmonizing patents laws obtained dominant support in international communities.This paper addresses the need to harmonize patent laws among countries within the growing trend of globalization. The paper further examines implementing measures that realize the harmonization of patent laws. To answer questions regarding the level and order at which harmonization should take place, it is necessary to divide harmonization into four categories according to the procedural– substantive and legislative–administrative standpoint. Even though substantive and legal harmonization might be the final goal of harmonization, it costs too much and takes too long. Rather, as a practically plausible alternative based on cost-benefit analysis, it is worth focusing on a modest harmonization — administrative and substantive harmonization for “Work-sharing.” To implement work-sharing with minimum costs and delay, it is necessary to scrutinize several strategies that promote language based cooperation, offshore outsourcing, regional patent system, and combination with PCT. Within the undeniable trend of globalization, it is essential to find broad and innovative international cooperation that can benefit all participating countries._____________________________________________“Licensing As a Means of Providing Affordabilityand Accessibility in Digital Markets: Alternatives to a Digital First Sale Doctrine”- by Jonathan C. TobinThe last decade has been characterized by a shift from works disseminated primarily as tangible objects to a market in which purely digital works are prevalent. This movement has led many scholars to consider whether the doctrine of first sale – well-established in the world of physical goods – should be extended to cover digital works. Although the first sale doctrine creates affordability and accessibility for tangible copyrighted works, it would not necessarily affect the digital world in a similar fashion. This paper discusses the relevant differences that create a need for an alternative to a first sale doctrine in the digital world and proposes a framework in which licenses applied to digital goods may be evaluated in order to provide social benefit. Editor’s note: Interestingly this article cites to an article written by one of our Assistant Editors Eric Hinkes. Mr. Hinkes’s article coincidentally cites to an article I had published the year before. At the time Eric and I did not know each other._____________________________________________“A Special Rule for Compound Protection for DNA-sequences. Impact of the ECJ “Monsanto” decision on Patent Practice”- by Jan B. Krauss and Toshiko TakenakaIn this article, the authors look to the recent ECJ (European Court of Justice) decision regarding what is patent eligible subject matter, as having the possibility of guiding the eventual appellate opinion that will issue for the Myriad decision. Excerpts from the article are below: It is even more challenging for courts and patent offices in different jurisdictions to take identical positions on interpreting the same statute. The European Union (“EU”) and its member states enacted the Biotech-Directive (“Direc tive”) more than a decade ago to clarify and harmonize the patentability and scope of protection for biotechnological inventions under national law.“ The… European Patent Convention (“EPC”) …has also been revised to incorporate patentability-related articles of the Directive…However, interpretation of the language in the Directive …has not been uniform…As a result, important issues such as the question of whether DNA sequences as natural compounds are patent eligible, the meaning of “gene patents” and “biological material,” and the extent of the scope of protection for patents on genes and DNA sequences remains unclear. [T]he recent decision by the European Court of Justice (ECJ) in Monsanto v. Cefetra4 (“Monsanto”)…interpreted Article 9 of the Directive [by]… appl[ying] a “functionlimited” or “purpose-bound” protection for DNA sequence patents, even when a claim does not include any limitation regarding the function or purpose that the sequence performs. At first sight, Monsanto only deals with the scope of protection for a DNA sequence patent, i.e. legal issues in determining infringement. Since the EPC applies only to the patent granting procedure, the impact should be limited to patent enforcement in national courts. However, some aspects of ECJ’s discussions in Monsanto may also result in a significant impact on the patentability of a claim directed to a DNA-sequence as a compound. Such impact extends to not only national level but also international level including both EU and EPC member states.”_____________________________________________“You Can Run, but You Can’t Hide: The Expansion of Direct Infringement and the Evisceration of Preventive Contracting in Maersk”- by Melissa Y. LernerThis article analyzes the recent Federal Circuit decision in Transocean Offshore Deepwater v. Maersk Contractors where the Federal Circuit extended liability for Patent Infringement beyond the US borders. “the Maersk opinion calls into question what steps are available to companies to protect hemselves from liability for direct infringement when they negotiate contracts for services and products. This note challenges the conclusions of the Maersk decision and analyzes its potential effect on international business practices under American patent law.” The article goes on to analyze what constitutes actual sales and offers to sell under the US patent laws.

Volume 93, Number 1

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Does a Utility that is “Unproved” at the Time of Filing Violate §112? Irving N. FeitCan You Patent Genes? Yes and No Eric J. RogersOvercoming Babel’s Curse: Adapting the Doctrine of Foreign Equivalents Jonathan SkinnerCritique of Recent Opinions in Patent Interferences Charles L. GholzKeep on Rockin’ in the Free World: Trademark Remedies for Musicians Michelle LinBook Review: Joel Davidow, Patent-Related Misconduct Issues in U.S. Patent Litigation James Toupin
Does a Utility that is “Unproved” at the Time of Filing Violate §112? Irving N. FeitCan You Patent Genes? Yes and No Eric J. RogersOvercoming Babel’s Curse: Adapting the Doctrine of Foreign Equivalents Jonathan SkinnerCritique of Recent Opinions in Patent Interferences Charles L. GholzKeep on Rockin’ in the Free World: Trademark Remedies for Musicians Michelle LinBook Review: Joel Davidow, Patent-Related Misconduct Issues in U.S. Patent Litigation James Toupin

Volume 92, Number 4, Fall 2010

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The EPC Exceptions to Patentable Subject Matter in the United Kingdom – Emir Aly Crowne-Mohammed, BA, LLB, LLM, LLM, PhD (cand.)How a Comparative Analysis of Federal Circuit Standards of ReviewSupports Limiting the Role of Juries in Determinations of Obviousness – Matthew BeutlerThe Expansion Trajectory: Trademark Jurisprudence in the Modern Age – Kenneth L. Port Interpretive Agency-Rulemaking vs. Statutory District Court Review-Jurisdiction In Ex Parte Patent Reexaminations – Charles E. Miller and Daniel P. ArchibaldIn Re “DDAVP” Direct Purchaser Antitrust Litigation: Is the Second Circuit’s “Massage” the Way to Relieve the Key Pressure Points Between the Patent System and Antitrust Laws? – Stijepko TokicAnnual Index (2010)

Volume 92, Number 3, Summer 2010

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Determination of Level of Ordinary Skill in the Art: A Post-KSR Prosecution Tool – Matthew J. SparkPatent Prosecution Pitfalls: Perspectives From The Trenches Of Litigation – Benjamin Hattenbach, Andrei Iancu, Kenneth Weatherwax You Infringed My Patent, Now Wait Until I Sue You: The Federal Circuit’s Decision in Avocent Huntsville Corp. v. Aten International Co. – Marta R. Vanegas, LL.M."The Case for Financial Product Patents: What the Supreme Court got Right and Wrong in Bilski v. Kappos, and A Suggestion for a Reasonable Line on Business Method Patents” – Paul E. Schaafsma

Volume 92, Number 2, Spring 2010

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Fellow Citizens: Be On Guard – Paul R. MichelMachine-or-Transformation Test Hits The Board: Patent-Eligible Subject Matter Following Bilski – Peter Ludwig The Book of Wisdom: How to Bring a Metaphorical Flourish Into the Realm of Economic Reality by Adopting a Market Reconstruction Requirement in the Calculation of a Reasonable Royalty – D. Christopher HollyPatent Cooperation Treaty (PCT) – Juan LapenneDeconstructing the Patent Application Backlog …A Story of Prolonged Pendency, PCT Pandemonium & Patent Pending Pirates – Warren K. Mabey, Jr.Hey! You! Get Off of My Cloud: Defining and Protecting the Metes and Bounds of Privacy, Security, and Property in Cloud Computing – Timothy D. Martin

Volume 92, Number 1, Winter 2010

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A Critique of Recent Opinions in Patent Interferences – Charles L. GholzObviousness in Patents Following the U.S. Supreme Court’s Decision, KSR International Co. v. Teleflex, Inc. – Tom BrodyA Correlation Between the State of the US Economy and Patent Litigation Activity – Bradley D. Riel and Paul T. MeiklejohnReconsidering Reasonable Royalty Damages Methodology in Patent Infringement Suits: Supplementing Georgia Pacific with the Reasonable Royalty Determination Board – Erick S. LeeSoftware Related Inventions at the Enlarged Board of Appeals – Fabian Edlund

Volume 91, Nos. 10, 11, 12 (Oct./Nov./Dec. 2009)

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The Supreme Court, Bilski, and Sensible Limits on Patents, John W. SchlicherBeware the Inequitable Conduct Charge! (Why Practitioners Submit What They Submit) , Lisa A. DolakWinter v. NRDC: A Stricter Standard for Irreparable Harm in Trademark Cases?, Thomas M. WilliamsDesign Patent Protection for Animated Computer-Generated Icons , David LeasonAn American View of the Patent System in Europe in 2009, John B. PegramAnnual Index (2009)
The Supreme Court, Bilski, and Sensible Limits on Patents, John W. SchlicherBeware the Inequitable Conduct Charge! (Why Practitioners Submit What They Submit) , Lisa A. DolakWinter v. NRDC: A Stricter Standard for Irreparable Harm in Trademark Cases?, Thomas M. WilliamsDesign Patent Protection for Animated Computer-Generated Icons , David LeasonAn American View of the Patent System in Europe in 2009, John B. PegramAnnual Index (2009)

Volume 91, Nos. 7, 8, 9 (July/Aug/Sept 2009)

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Joint infringement and Internet Software Patents: An Uncertain Future?, Dolly Wu The Real Problem with Patent Infringement Damages, Martha K. Gooding & William C. RooklidgeHow the Federal Circuit Clarified the “Muddy Concept” of Joint Inventorship, George M. SirillaPitfalls Associated with Post-Patent Issuance Supplementation or Replacement of a Biological Culture Deposit – 37 CFR § 1.805, Tracy U. Palovich & Robert J. Duminiak
Joint infringement and Internet Software Patents: An Uncertain Future?, Dolly Wu The Real Problem with Patent Infringement Damages, Martha K. Gooding & William C. RooklidgeHow the Federal Circuit Clarified the “Muddy Concept” of Joint Inventorship, George M. SirillaPitfalls Associated with Post-Patent Issuance Supplementation or Replacement of a Biological Culture Deposit – 37 CFR § 1.805, Tracy U. Palovich & Robert J. Duminiak

Volume 90, No. 5, May 2008

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Brand v. Miller Prevents Administrative Patent Judges From Using Their Common Sense in Inter Partes Proceedings – Robert C. Nissen and Charles L. Gholz A Function for Markman Claim Construction in Design Patents – Craig Zieminski Patent Reform: The Pharmaceutical Industry Prescription For Post-Grant Opposition And Remedies – Eric E. Williams Response to "Patent Pendency Problems and Possible Solutions to Reduciing Patent Pendency at the United States Patent and Trademark Office" – Colin LaRose Reasonable Apprehension Of An Infringement Suit Is Not Required: Wonderful News For A Prospective Licensee – Elkia R. Manglona

Volume 90, No. 4, April 2008

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Freedom to Experiment: Toward a Concept of Inventor Welfare – Rudolph J.R. Peritz Independent Invention As A Defense To Patent Infringement – Samson Vermont An Independent Invention Defense to Patent Infringement: The Academy Talking to Itself: Should Anyone Listen? – Roger Milgrim Less "Gotcha": A Response to Milgrim – Samson Vermont A Reply to A Response – Roger Milgrim

Volume 90, No. 3, March 2008

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How to Get Patent Protection in Europe? – Marco T. Connor and Lin YasongThe Patent Office Meets the Poison Pill: Why Legal Methods Cannot Be Patented – Andrew A. SchwartsWell-known Marks Doctrine: Where Do We Go From Here? – Tashia A. Bunch

Volume 90, No. 2, February 2008

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Code on Disks and Hat Tricks – Is Computer Software on a Medium Really Patentable? – Andrei Iancu and Jeremiah HelmThe Continuing Controversy Over Business Methods Patents – Lois MatelanIn re Comiskey and E-Commerce Patentability – Sam Stake

Volume 90, No. 1, January 2008

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A Critique of Recent Opinions in Patent Interferences – Charles L. GholzSecond Life – A New Dimension For Trademark Infringement – Max VernPatent Pendency Problems and Possible Solutions to Reducing Patent Pendency at the United States Patent and Trademark Office

Volume 89, No. 3, March 2007

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Court Opinions Affecting PTO Trademark Practice: The Year in Review – Jeffrey M. Samuels and Linda B. Samuels The "Right to Copy" Doctrine – Perry J. Saidman Determining the Likelihood of Confusion in Ex parte Examination: A Trademark Examining Attorney’s Perspective – Paula B. Mays Application of the Festo Framework in Four Recent Appeal Cases – Magda Carvalho Letter to the Editor Obviously Troublesome: How High Should the Standard be for Obtaining a Patent – Michael Astorino