07/01/11

Volume 93, Issue 2

  • Patent Law Harmonization in the Age of Globalization: The Necessity and Strategy for a Pragmatic Outcome -Dongwook Chun
  • Licensing As a Means of Providing Affordability and Accessibility in Digital Markets: Alternatives to a Digital First Sale Doctrine -Johnathan C. Tobin
  • A Special Rule for Compound Protection for DNA-sequences - Impact of the ECJ "Monsanto" decision on Patent Practice -Jan B. Krauss and Toshiko Takenaka
  • You 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 Chun

While 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 Affordability and Accessibility in Digital Markets: Alternatives to a Digital First Sale Doctrine

By: Jonathan C. Tobin

The 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 Takenaka

In 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. Lerner

This 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 themselves 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.

© 2000-2023, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy