Publications and Announcements

The “Commercial Offer for Sale” Standard After Minnesota Mining v. Chemque

Patents & Technology

By: Campbell Chiang The Supreme Court established a two-part test for determining when an invention is “on sale” under 35 U.S.C. §102(b) in Pfaff v. Wells Electronics, Inc. For the on-sale bar to be triggered, the invention must be “ready for patenting” and subject of a “commercial offer for sale.” In Minnesota Mining & Manufacturing v. Chemque, Inc., the Federal Circuit expounded on what constitutes a commercial offer for sale. This iBrief explores what is considered a “commercial offer for sale.” Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0035

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Piracy Deserves No Privacy

Copyrights & Trademarks

By: Frank Chao The Recording Industry Association of America (“RIAA”), the music industry’s trade and lobbying group, recently initiated a controversial tactic to bring to surface previously anonymous digital pirates of the Internet. This aggressive tactic aims to make safe the digital oceans for copyright and involves identifying and bringing claims against infringing individuals who download, swap, and/or post copyrighted music illegally via the Internet. The RIAA cares not who the infringers are or whether the infringers know the illegality of their actions. Nor does the music industry concern itself with the inevitable storm of backlash bound to fall upon them for suing uninformed or unintentional infringers. Internet users and privacy advocates, however, care all too much. This i-brief attempts to alleviate the fears of privacy infringement by bringing to light certain safeguards built into the Digital Millennium Copyrights Act (“DMCA”) to deal with the possibility of both fraudulent identity subpoenas and infringement into personal privacy. In addition, case law will show that the subpoena powers of the DMCA will not be abused by those who truly wish to enforce copyright laws and legitimate claims of ownership, thereby maintaining the privacy of law abiding Internet users. Download Full Article (PDF)

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Patenting Computer Data Structures: The Ghost, the Machine and the Federal Circuit

Patents & Technology

By: Andrew Joseph Hollander Courts view “data structures,” the mechanism by which computers store data in meaningful relationships, differently than do computer scientists. While computer scientists recognize that data structures have aspects that are both physical (how they are stored in memory) and logical (the relationships among the stored information), the Federal Circuit, in its attempts to set clear standards of the scope of patentability of data structures, has not fully appreciated their dualistic nature. This i-brief explains what data structures are, explores how courts have wrestled with setting a limiting principle to determine their patentability, and discusses the resultant impact on claim drafting. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0033

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U.S. Infringement Liability for Foreign Sellers of Infringing Products

Patents & Technology

By: Troy Petersen With the ever-increasing international flavor of business comes an important question for United States patent holders and foreign manufacturers alike: Can a company be held liable for patent infringement in the United States for selling an infringing product abroad that is later imported into the United States? Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0032

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Lights, Camera, Lawsuit

Copyrights & Trademarks

By: A. J. Bedel As the speed of Internet access improves, the film industry will need to explore its options for eliminating the downloading of digital movie files. After examining the successes and failures of the music industry in its battle with peer-to-peer networks, the film industry has begun to follow its predecessor. However, the nature of film as an entertainment medium is quite different than that of music. As a result, the film industry could implement creative solutions to this problem that would not have been available to the music industry. A recent study shows that most films available on the Internet have been leaked by industry insiders. By implementing an increasingly publicized use of trade secret litigation, the film industry could take a tough and effective stance against the digital dragon. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0031

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Pfaff Revisited: How the Federal Circuit Has Elaborated on the “Ready for Patenting” Standard

Patents & Technology

By: Jennifer F. Miller In Pfaff v. Wells Electronics, Inc., the Supreme Court established a two-part test to determine when an invention is “on sale” for purposes of Title 35 U.S.C. §102(b). In addition to being the subject of a commercial offer for sale, an invention must be “ready for patenting” in order to be considered “on sale.” Since Pfaff, the Court of Appeals for the Federal Circuit has had numerous opportunities to expound upon how inventors can fulfill the latter condition. This iBrief will discuss the factors the Federal Circuit has determined are indicative of an invention’s “ready for patenting” status. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0030

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3D Molecular Structures: Patentable Subject Matter Under 35 U.S.C. §101?

Patents & Technology

By: Ben Quarmby With the advent of protein engineering, the determination of a protein’s 3D structure has taken on a whole new importance. This has prompted some to call for the United States Patent and Trademark Office [USPTO] to break with tradition and allow patents on the three-dimensional structural information of proteins. This iBrief will discuss whether such information would constitute patentable subject matter under 35 U.S.C. §101, and how much protection patents on this information could actually confer. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0029

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Europe: Open Market… Open Source?

International

By: Heather Forrest The recent Proposed Directive on the patentability of computer-implemented inventions takes the European Community a step further down the road towards patents for computer software. If the goal of the Proposed Directive is to facilitate market entry for individual programmers and small and medium enterprises — as it must be within the framework of the European Treaty — then the European Commission should not be expanding intellectual property rights in technology goods, which, by their very nature, will lose value to the public long before their monopoly rights expire. Rather, the Commission should look to the open source movement and other, more temporal means of protection to spur innovation and increase Europe’s competitiveness on the worldwide market for technology goods. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0028

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Are Biotech Crops and Conventional Crops Like Products? An Analysis Under GATT

Health & Biotechnology

By: Julian Wong The transatlantic debate over the use of genetically modified organisms (“GMO”s) as food products, with the US as a proponent on one side, and the European Union (“EU”) as an opponent on the other, is set to take center stage. The US has initiated formal legal action under the World Trade Organization Dispute Settlement System, charging that the EU violates several agreements of international trade law, including Article III of GATT, an anti-protectionist measure which forbids a country from favoring its own products over imported “like products.” The US claims that GMOs and conventional crops are “like products,, and that the EU moratorium on GMOs thus violates Article III. This iBrief assesses the US “like products” claim, most notably in light of Asbestos, a recent WTO case which provides important guidance for determining likeness under four criteria. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0027

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Fairplay or Greed: Mandating University Responsibility Toward Student Inventors

Patents & Technology

By: Carmen J. McCutcheon Over twenty years have passed since the enactment of The Patent and Trademark Law Amendments Act (Bayh-Dole Act) and universities continue to struggle with their technology transfer infrastructures. Lost in that struggle are those who could be considered the backbone of university research: the students. Graduate and undergraduate students remain baffled by the patent assignment and technology transfer processes within their various institutions. Efforts should be undertaken by universities to clarify the student’s position in the creative process. Download Full Article (PDF) Cite: 2003 Duke L. & Tech. Rev. 0026

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