• Interview With Miguel Ángel Margáin, Director General of the Mexican Institute of Industrial Property

    Miguel Ángel Margáin, Director General of the Mexican Institute of Industrial Property, took office in early 2013, and was in Geneva for the annual World Intellectual Property Organization General Assemblies. William New of Intellectual Property Watch sat down with him for an interview. He spoke about achievements of the office during this administration, major amendments to adhere to global treaties and changes in the NAFTA, the introduction of geographical indications, and the ascendance of IP rights in Latin America.

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  • Entire market rule only when infringed feature constitutes sole basis for consumer demand

    To base its damages theory on the entire market value rule, Power Integrations bore the burden of proving “the patented feature is the sole driver of customer demand or substantially creates the value of the component parts.” Both parties, however, agreed that the accused products contained other valuable non-infringing features. Nevertheless, Power Integrations presented no evidence about the effect of these other non-infringing features on consumer demand or product value. Accordingly, the…

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  • Capitol Hill Roundup

    This week in Capitol Hill hearings focuses solely on meetings happening at the U.S. Senate. The one hearing scheduled at the U.S. House of Representatives, which was to explore whether the Federal Communications Commission (FCC) was addressing small bu…

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  • Gust, Inc. v. AlphaCap Ventures, LLC (Fed. Cir. 2018)

    By Michael Borella — Almost two years ago, we covered a dispute in the Southern District of New York (which began in the Eastern District of Texas) involving plaintiff AlphaCap, a non-practicing entity that aggressively asserted its patents against a number of targets, including Gust. In short, when Gust didn’t quickly settle, AlphaCap offered to dismiss its claims. But Gust wanted AlphaCap to pay its attorneys’ fees or assign AlphaCap the patents. After some back-and-forth between the parties, the District Court dismissed the case but awarded Gust attorneys’ fees under 35 U.S.C. § 285. Gutride Safier LLP, attorneys for AlphaCap,…

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  • Conference & CLE Calendar

    October 2, 2018 – “Advice of Counsel Defense in Patent Litigation and Protecting Attorney-Client Privilege — Limiting Scope of Discovery, Safeguarding Confidential Communications and Information” (Strafford) – 1:00 to 2:30 pm (EDT) October 2-3, 2018 – Paragraph IV Disputes master symposium (American Conference Institute) – Chicago, IL October 3, 2018 – “2018 Bench & Bar® in Dialogue: Federal Circuit Court Visit!” (Federal Circuit Bar Association) – 2:00 pm to 9:00 pm (CT), Chicago, IL October 4, 2018 – “Patent Litigation in Japan and Germany,” German Patent and Trade Mark Office, Munich, Germany October 4, 2018 – “Biosimilars in the Antitrust…

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  • Aman Gebru: Compelling Disclosure of Traditional Knowledge in Patents

    Aman Gebru, visiting assistant professor at Cardozo Law, has a new article forthcoming in Denver Law Review about patenting traditional knowledge. Aman is on the teaching market this year in the patents and intellectual property field, but his research and teaching deal with other areas as well like contracts and international law. His proposal, if adopted, could be good for the public and some communities, but might make big pharma a bit angry.

    So-called traditional knowledge is a term of art. Gebru defines it as the “know-how, skills, innovations, and practices of indigenous peoples and local communities.” This is often referred to colloquially as “traditional knowledge” or “TK.”  (5). One of the big issues in the international human rights community and the TK literature is whether it is fair for big U.S. companies to extract information from local communities that they then go on to patent and commercialize in products like pharmaceutical drugs, generally without compensation or attribution.

    Gebru taps into the literature on “information-forcing” in contract law to argue, I think quite effectively, that the patent office should compel disclosure of any “substantial” reliance by the patent applicant on traditional knowledge.

    He argues benefits of compelling disclosure would be two-fold.

    First, compelling disclosure of traditional knowledge in patents would increase the quality of patent disclosures. As with the (dying) best mode requirement of Section 112, forced disclosure of traditional knowledge would provide more information to the public regarding how the invention works. This is particularly important, Gebru argues, for traditional knowledge that is not otherwise documented and may remain to large degree tacit, trapped in the minds of the people who utilize it.    

    Second, he argues that compelling disclosure of traditional knowledge would benefit researchers, the source community, and the public by addressing mistrust between parties and encouraging collaborative research.

    The past experiences of researchers accessing TK, developing products, and failing to recognize the contributions of the source community have created significant trust issues.Decades of alleged biopiracy have made source communities hesitant to share their resource. To overcome this mistrust, a robust and clear signal of change from the status quo is needed.  

    (39)

    Essentially, compelling disclosure of traditional knowledge would signal to the public, and to potential commercializers, that there may be more information available within the local community from which the traditional knowledge was derived. And it would signal to local communities that they are a part of the system.  Companies seeking information would receive assistance to “transcend the tacit dimension.” Local communities would gain the opportunity to engage in consulting or licensing of their knowledge to commercializing companies.

    At a broader level, the paper attempts to develop more of a welfare-based justification for recognizing the contributions of traditional knowledge to innovation. The justifications predominantly used in the literature are equity and distributive justice. Gebru’s argument for compelling disclosure is based on the notion that this could ultimately improve innovation, as well as combating inequality and access issues. In this sense, his arguments parallel some of Madhavi Sunder’s work about the potential benefits of IP systems for indigenous communities.

    I also saw a third benefit to compelled disclosure of TK. Since the AIA, prior art that once fell into the category of “known or used by others in this country” prior to the invention date has been substantially expanded. Now prior art that is in “public use” or “otherwise available to the public” anywhere before the filing date qualifies to invalidate a patent on novelty and non-obviousness grounds. The patent office will have no realistic way of obtaining this new corpus of prior art without more disclosure from applicants. Traditional knowledge would seem to be a huge area where this information asymmetry could occur.  So forcing disclosure would solve a novelty check problem as well.

    This third public benefit leads to a potential pitfall: resistance from the patentee community. If prior art is now open to public uses outside as well as inside this country, they might ask, why should we now also be compelled to disclose this information to the patent office? Let the examiner, and eventually infringers in court, find it themselves.

    I enjoyed hearing Gebru speak on this paper, and really look forward to more of his work.

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  • CAFC Reverses Nonobviousness Ruling in IPR as Board Failed to Apply Burden-Shifting Standard

    The Federal Circuit recently reversed a Patent Trial and Appeal Board (“Board”) inter partes review decision on nonobviousness, holding that the Board erred when it did not require Synvina, the patent owner, to come forward with evidence of nonobviousness (e.g., teaching away) once DuPont, the petitioner, established the prior art disclosed an overlapping range for […]

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