07/02/2014

Volume 96, Issue 2


The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • The Patentability Of Human Embryonic Stem Cells In Light Of Myriad Brandon Smith
  • A Patent Problem: Can Chinese Courts Compare with the U.S. in Providing Patent Holders with Adequate Monetary Damages Yieyie Yang
  • Process Stories: Patenting Natural Law Processes under Prometheus - How Much Addition to a Patent Claim is Enough? Arun Mohan
  • Eligibility Of DNA and cDNA Daniel Leo
  • A Slippery Slope: The Future of Patents from Government-Funded R&D Tanya S. Gillis
  • Private Industry's Impact on U.S. Trade Law and International Intellectual Property Law: A Study of Post-TRIPS U.S. Bilateral Agreements and the Capture of the USTR Katrina Moberg
  • “The Knockoff Economy: How Imitation Sparks Innovation” by Kal Raustiala and Christopher Sprigman (Oxford University Press, 2012) Book Review by Lynn Bristol
  • Frederico and Rossman Awards Eric Keasel, Committee Chairman
The Patentability Of Human Embryonic Stem Cells In Light Of Myriad Brandon Smith

The landscape of patentable subject matter is constantly changing based on the views of the U.S. Supreme Court. In 1874, the Court held that purified paper pulp cellulose was not patentable subject matter, yet the Court ruled in 1980 that a genetically modified bacterium was patentable subject matter. In the last five years, the Court has changed the landscape of patentable subject matter several times.

A Patent Problem: Can Chinese Courts Compare with the U.S. in Providing Patent Holders with Adequate Monetary Damages Yieyie Yang

China is playing an increasingly active role in the global economic market, and the Chinese government is making ambitious efforts to build an “innovation economy.” The government’s recent development of pro-patent policies has led to a surge in patent applications and patent litigation in China. According to a report issued by the World Intellectual Property Organization in December 2012, the number of patent applications in China grew 20% on average every year from 2008 to 2011, and for the first time in 2011, more patent applications were filed in China than in the United States. There has also been a surge in patent litigation in China, with 7,819 patent cases in 2011, or about twice as many as in the United States.

Process Stories: Patenting Natural Law Processes under Prometheus - How Much Addition to a Patent Claim is Enough? Arun Mohan

Imagine a world where the financial incentive for pharmaceutical companies and universities to develop vital research tools for curing terminal diseases has diminished. The incentive has disappeared due to recent court decisions regarding the patentability of diagnostic methods involving biological processes. The Court has blocked pharmaceutical companies from patenting the diagnostic methods and research tools that can detect mutations in DNA and proteins that are essential to diagnosing diseases. The rationale behind refusing patents for these processes is that the processes are based on “natural law” and the patent applicants have not added “enough” to these natural laws.

Eligibility Of DNA and cDNA Daniel Leo

United States patent laws were enacted by Congress in accordance with the powers enumerated in Article I, Clause 8, Section 8 of the United States Constitution, which provides: “Congress shall have Power To...promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Section 101 of Title 35 of the United States Code defines patent eligible subject as any new process, machine, manufacture, or composition of matter. Certain forms of life are patent eligible. From man-made genetically modified microorganisms used in medical, agricultural and environmental products, to synthetically created complementary deoxyribonucleic acid (“cDNA”) molecules, patent eligibility spans a wide range of applications in the biotechnology industry.

A Slippery Slope: The Future of Patents from Government-Funded R&D Tanya S. Gillis

Since World War II, government-funded research and development (“R&D”) efforts in the United States have been a top priority of almost every presidential administration, across party lines. In 2009 alone, the U.S. government spent an estimated $124.4 billion on R&D, ranging from environmental research to development of defense systems. The U.S. government’s main goals over the past several decades have historically included fostering U.S. innovation, creating jobs, and improving the position of the United States in world trade. By passing the Bayh-Dole Act in 1980, Congress touted a new technology transfer program that promised to fulfill each of these goals by authorizing the third parties who performed the R&D to retain title to any patents that stemmed from it, even though the R&D was federally funded. However, current international pressure to decrease this funding and third-party patenting threatens to disrupt these major U.S. policy goals and turn government-funded R&D on its face.

Private Industry's Impact on U.S. Trade Law and International Intellectual Property Law: A Study of Post-TRIPSKatrina Moberg

The debate surrounding TRIPS-plus agreements is contentious and important. “TRIPS” is an acronym for the Trade-Related Aspects of Intellectual Property Rights agreement, which established the first set of minimum standards of protection for intellectual property rights internationally and included “flexibilities” to exempt developing countries from certain standards in light of public policy. Bilateral agreements enacted after TRIPS have undermined the exercise of such flexibilities, and are characterized as “TRIPSplus.” Specifically, TRIPS-plus agreements create conflicts with and pose threats to public health, the environment, biological diversity, food security, access to knowledge, and human rights in numerous countries. This paper is based on a comparative study of U.S. bilateral agreements that entered into force after TRIPS. By analyzing forty-one U.S. bilateral agreements, the author concludes that (1) U.S. bilateralism in the post-TRIPS era is dominated by two forms of agreements; (2) more than half of such agreements do not contain facially TRIPS-plus provisions; (3) no two agreements are identical in the TRIPS-plus provisions they include and exclude; (4) there are a number of TRIPS-plus provisions that continuously appear and present significant issues for U.S. trade law and international intellectual property law. Of concern is the fact that U.S. bilateral agreements are overseen by a captured agency, the Office of the U.S. Trade Representative (USTR). Consequently, U.S. trade law and international intellectual property law is the product of a one-sided and non-transparent negotiation process, which enables future TRIPS-plus bilateral agreements being signed and further harm being done to social welfare.

“The Knockoff Economy: How Imitation Sparks Innovation” by Kal Raustiala and Christopher Sprigman (Oxford University Press, 2012) Book Review by Lynn Bristol Frederico and Rossman Awards Eric Keasel, Committee Chairman
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