Category: Patents & Technology

By: Matthew Moore In order for a hopeful applicant to be granted a patent over his invention, his application must satisfy several procedural and substantive requirements. Among the substantive hurdles that an applicant must clear is the mandate that patents only be issued to applications claiming statutory subject matter within the meaning of §101 of the Patent Act. However, the Court of Appeals for the Federal Circuit (Federal Circuit) has not construed that Section consistently over the years. Since that court’s formation in 1982, it has espoused two tests for statutory subject matter, and each time has substantially abrogated, if not overruled, the prior formulation. Most recently, the Federal Circuit has handed down the “machine-or-transformation” test in an attempt to redraft the limits of patent eligibility based on subject matter. This iBrief will explore the significant changes that this new test has brought to the patentability doctrine. Download Full Article (PDF) Cite: 2010 Duke L. & Tech. Rev. 005

By: Dean V. Williamson The intersection of antitrust and intellectual property circumscribes two century-long debates. The first pertains to questions about how antitrust law and intellectual property law interact, and the second pertains to questions about how parties can exploit property rights, including intellectual property rights, to exclude competitors. This iBrief finesses these questions and turns to practical considerations about how innovation and intellectual property can impinge antitrust enforcement. This iBrief develops two propositions. First, although collaborative research and development has often been and remains unwittingly misunderstood, what is understood about it is consistent with the long- standing observation that antitrust has rarely interfered with collaborative ventures. Second, shifting focus from “intellectual property rights” to “uncertain property rights” makes it easier to understand what innovation and intellectual property imply for enforcement processes. Both intellectual property and tangible assets imply the same processes, but the boundaries of intellectual properties may be uncertain and may, in turn, allow parties to game enforcement processes in ways that would not be feasible in antitrust matters that principally feature tangible assets. Even so, uncertain property rights might not frustrate enforcement processes as the antitrust authorities may yet be able to factor parties’ strategic behaviors into

By: Michael Hasper As they pursue economic development, developing countries possess high demand for processes and technologies that have climate-friendly methods or alternatives. However, these nations currently face barriers to entry because of trade policies and intellectual property regulations that render procurement of these technologies cost-prohibitive. In light of the recent breakdown in negotiations at the United Nations climate conference in Bali to remove tariffs on green technology, a new approach to green technology diffusion should be considered in order to balance the demand among developing nations for fluid technology transfers with the profit-driven needs and intellectual property considerations of technology holders. A potential solution to overcome the high fixed costs of technology diffusion could involve the creation of a global exchange forum in which transnational green technology holders, green venture capitalists, and developing country entrepreneurs could broker for efficient allocation of investment, resources, and technologies. Download Full Article (PDF) Cite: 2009 Duke L. & Tech. Rev. 001

By: Daniel Van Fleet Technological advancement is widely viewed as an essential component to any effective climate change strategy. However, there is no consensus as to the degree to which the law should promote technological innovation and development. This iBrief analyzes government involvement in encouraging such technology and divides the various policies into four categories. On one end are policies that rely mainly on market forces to encourage scientific advancement naturally, requiring minimal government involvement. A second category of policies involves technological development promoted indirectly through laws addressing climate change generally. A third type of policy involves directly offering government funding and financing for technological research and development. These three methods are currently the most popular means of encouraging scientific development in this field. Recently, however, there have been increasing calls for major government action of the scale of such programs as the Apollo Project. This iBrief classifies such proposals as a fourth category of policies encouraging technological solutions to climate change: the creation of institutional structures dedicated to bringing about rapid, radical technological advancements. Download Full Article (PDF) Cite: 2008 Duke L. & Tech. Rev. 0008

By: Stephanie Chu The Supreme Court’s recent decision in MedImmune v. Genentech shifts the balance of power in license agreements from patent holders to their licensees. This iBrief outlines the potential implications of the new rules on all stages of patent prosecution and protection. Further, it evaluates remedial contract provisions patent holders may include in future license agreements and how these provisions may mitigate the decision’s effects on preexisting commercial relationships. Download Full Article (PDF) Cite: 2007 Duke L. & Tech. Rev. 0008

By: Ava A. Harter This article first analyzes the innovative tort reform of the SAFETY Act and then argues for expansion of SAFETY Act type risk protection to natural disasters such as hurricanes, earthquakes and wildfires. The SAFETY Act was drafted to stimulate the development and deployment of technologies that combat terrorism by providing liability protection. Applying the same type of legislation to natural disasters will provide a commensurate benefit of encouraging preparedness and development of technologies that could mitigate harms resulting from natural disasters. The Department of Homeland Security voiced a desire to increase the use of the SAFETY Act by private industry. This article argues that one way to increase the utility of the SAFETY Act and provide more value for the American public is for Congress to extend SAFETY Act protections, by amendment or new legislation, to cover risk related to national catastrophes. Download Full Article (PDF) Cite: 2007 Duke L. & Tech. Rev. 0007

By: Christopher A. Harkins The rules of engagement in the brand-name versus generic-drug war are rapidly changing. Brand-name manufacturers face increasing competition from Canadian manufacturers of generic drugs, online drug companies, and Wal-Mart® Super Centers deciding to cash in by turning a piece of the generic prescription drug business into a huge marketing campaign with offerings of generic drugs for four dollar prescriptions. Other discount drug providers are likely to follow suit in hopes of boosting customer traffic and sales of their generic drugs. Now, more than ever before, attorneys representing owners of pharmaceutical patents need to be creative with their damages theories to maximize recovery and help their clients recoup the investments in research and development necessary to bring new and innovative drugs to the marketplace. This article suggests a novel theory of willful infringement to assist a patent owner in recovering treble damages and attorneys’ fees. Download Full Article (PDF) Cite: 2007 Duke L. & Tech. Rev. 0006

By: David Kohler Using a variety of technological innovations, Google became a multi-billion dollar content-delivery business without owning or licensing much of the content that it uses. Google’s principal justification for why this strategy does not contravene the intellectual property rights of the copyright owners is the doctrine of fair use. However, over the last several years, some copyright owners began to push back and challenge Google’s strategy. Much of this litigation presents the courts with something of a conundrum. On the one hand, it is beyond dispute that Google’s services have great social utility. By organizing and making accessible an enormous volume of information on the Internet, Google facilitates broad access to a diverse array of material, a core value of the First Amendment. At the same time, Google’s actions do not always fit comfortably within traditional notions of fair use. In this respect, the Google cases present an opportunity to explore the relationship between copyright and the First Amendment; a subject that has received inadequate attention in the courts, and particularly the Supreme Court. How the apparent tension between the marketplace of ideas and the commercial marketplace is resolved may have significant impact on the development of Internet-based

By: Jennifer Giordano-Coltart The advent of the digital era and the global market pose unique challenges to intellectual property law. To adapt, U.S. patent laws require constant interpretation in the face of rapidly changing technological advances. In AT&T Corp. v. Microsoft Corp., the Federal Circuit interpreted 35 U.S.C. § 271(f) in a technology-dependent manner in order to effectuate the purpose of the law with respect to global software distribution. However, the Federal Circuit failed to consider the presumption against extraterritorial application of U.S. law, and its decision now risks international discord and harm not only to the American software industry, but other U.S. industries as well. This iBrief critiques the lower court decisions in AT&T Corp. v. Microsoft Corp. in light of the presumption against extraterritoriality, and analyzes how the Supreme Court should apply the presumption in its review of the case. Download Full Article (PDF) Cite: 2007 Duke L. & Tech. Rev. 0004

By: Cameron W. Westin The Google Library Project presents what many consider to be the perfect fair-use problem. The legal debate surrounding the Library Project has centered on the Ninth Circuit’s Kelly v. Arriba Soft. Yet recent case law presents new arguments for both sides of the Library Project litigation. This iBrief analyzes two Ninth Circuit district court decisions on fair use, Field v. Google, Inc. and Perfect 10 v. Google, Inc., and their impact on the Library Project litigation. Download Full Article (PDF) Cite: 2007 Duke L. & Tech. Rev. 0002