11/22/13

Volume 95, Issue 3


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.
  • Federal Circuit Appeals From The PTAB: A New Game Or Just The Same Old Practice? David L. McCombs, Debra J. McComas, Andrew S. Ehmke and Stephanie N. Sivinski
  • Enjoy Your TRIPS: The Problems with TRIPS Retaliation under Article 22.3 of the DSU Clinton Long
  • Intellectual Property’s Upcoming Quantum Leap: Projecting the Future Challenges Facing Quantum Information Technology through a Historical Perspective of the Computer Revolution Cason Schmit
  • The Revolutionary Influence of Low Enlightenment: Weakening Copyright in Developing Countries to Improve Respect for Human Rights and the Rule of Law Martin Skladany
  • The Ugly Stepchild of Patent Prosecution Gets Uglier: Information Disclosure Statements and Their Use of Copyright Licenses Derek Constantine

Federal Circuit Appeals From The PTAB: A New Game Or Just The Same Old Practice?

David L. McCombs, Debra J. McComas, Andrew S. Ehmke and Stephanie N. Sivinski

The America Invents Act (“AIA”) revamped the former Board of Patent Appeals and Interferences (“BPAI”) into the new Patent and Trademark Appeal Board (“PTAB”). Since the AIA’s effective date, an average of one petition per day has been filed with the PTAB under the new inter partes review and covered business method post-grant review procedures. The PTAB has started granting these petitions and instituting trials, and given the expected pace of the proceedings, it is likely that some will be appealable to the Federal Circuit within the next twelve months.

Enjoy Your TRIPS: The Problems with TRIPS Retaliation under Article 22.3 of the DSU

Clinton Long

Intellectual Property’s Upcoming Quantum Leap: Projecting the Future Challenges Facing Quantum Information Technology through a Historical Perspective of the Computer Revolution

Cason Schmit

While it has been said that “the unique feature of the WTO [World Trade Organization] is that, unlike many international regimes, it has an adjudication process that is mandatory and binding,” reality has proven to be quite different. However clear a decision is when it leaves the panel— the court of first instance—or the Appellate Body—the court of last instance, a losing Member usually has a number of reasons and incentives to resist complying with a decision and often fails to comply. The Dispute Settlement Understanding (DSU), the WTO’s dispute resolution agreement, has provisions that are meant to help prevailing parties secure the compliance of the respondent Member. The optimal result of a dispute is the withdrawal of the measure that violates one of the WTO agreements, but if the respondent Member does not do so, Article 22 of the DSU provides additional remedies to injured countries. Among these remedies is retaliation. Intended to be a remedy of last resort, retaliation under Article 22.3 allows countries to suspend their obligations under a WTO agreement against a sector of the respondent Member, whether that be the same or different agreement or sector as involved in the dispute.

The Revolutionary Influence of Low Enlightenment: Weakening Copyright in Developing Countries to Improve Respect for Human Rights and the Rule of Law

Martin Skladany

Diverse groups have banded together to critique current intellectual property laws under the Access to Knowledge movement. The Geneva Declaration on the Future of the World Intellectual Property Organization, the Access to Knowledge Treaty, and the Adelphi Charter on Creativity, Innovation and Intellectual Property call for an end to further growth in intellectual property protection and demand that the World Intellectual Property Organization be more cognizant of the needs of developing countries in terms of expanding access to textbooks and other educational materials. However, the movement has yet to appreciate the value of significantly weakening copyright law in developing countries so as to maximize the flow of developed country artwork and media into developing countries. This position has been fully grasped in patent law with the calls for wider distribution of lifesaving drugs, yet the need is arguably as great with copyright; for freely accessible artwork, unlike freely distributed drugs, has the ability over the long term to alter how individuals think about human rights, freedom, the rule of law, democracy, and equality and hence to improve how countries fundamentally operate.

The Ugly Stepchild of Patent Prosecution Gets Uglier: Information Disclosure Statements and Their Use of Copyright Licenses

Derek Constantine

Applicants and attorneys prosecuting patents must file an Information Disclosure Statement (IDS) with the United States Patent and Trademark Office (USPTO) during patent prosecution to disclose any relevant prior art—such as patent documents, scientific journals, PowerPoint presentations, book chapters, or websites—known to the applicants or attorneys.1 If a law firm is prosecuting a patent with the USPTO, the attorney at the firm may be aware of several articles and patents that she knows are relevant for this particular application, so she will need to disclose those references to the USPTO. The attorney may have copies of the articles already, or she may simply know the articles exist without currently having copies. She also needs to contact the clients to see if there are any references that they know of or have used that need to be disclosed. The process can be time consuming and expensive as law firms attempt to obtain copies of every reference known to the firm or the clients. The same article may end up in three different locations: in the client’s files, in the law firm’s files, and in the USPTO’s files.

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