Patentology Soundbytes – 7 June 2011

"All the news that's fit to link!"

In this special edition – the two recent US court opinions setting the patents community abuzz…

>   Therasense, Inc v Becton, Dickinson and Company
>   Stanford v Roche

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THERASENSE AND SENSIBILITY

In Therasense, Inc. v. Becton, Dickinson and Company, the US Court of Appeals for the Federal Circuit (CAFC), sitting en banc, revisited the law of ‘inequitable conduct’ – which renders all of the claims of a patent unenforceable if there is fraud committed on the US Patent Office – and, from the perspective of patent owners and applicants everywhere, went a long way towards setting the world to rights.

Writing for the majority, Chief Judge Randall Rader stated that ‘[l]eft unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.’  Inequitable conduct attacks have become par for the course for defendants in patent infringement cases in the US, where ever-reducing standards of inequity have led to a situation in which any failure of disclosure by a patent applicant – however unintentional or immaterial – could be used to completely neutralise every claim of a patent in a single blow.

Hardly surprising, then, that Judge Rader also called inequitable conduct ‘the “atomic bomb” of patent law’ (really – slip op. p. 21).

Read more at:

1. IPWatchdog
2. Patently-O
3. 271 Patent Blog
4. PharmaPatents
5. Holman’s Biotech IP Blog
6. Patent Docs
7. IP Spotlight

The US Patent and Trademark Office (USPTO) has announced that it is ‘carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures’.

1. USPTO announcement
2. PharmaPatents (and on other things the USPTO might look at while they are about it)

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STANFORD v ROCHE

In Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc., et al. (to give the case its full name) the Supreme Court of the United States of America affirmed a decision of the CAFC, finding that ‘[t]he Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.’

Bayh-Dole was a revolutionary piece of legislation that gave ‘contractors’ (e.g. universities) the power to own and commercialise inventions arising from research financed from federal funds.  It has been spectacularly successful in generating thousands of new businesses, and other avenues of commercialisation, and is largely responsible for the creation of a whole new ‘industry’ of technology transfer professionals.

This decision confirms, however, that Bayh-Dole does not, in itself, ensure that inventions made by university employees in the course of their research under federally-funded programs become the property of their employers.  Each institution needs to make sure that it has appropriate procedures and agreements in place with its researchers for transfer of title of inventions covered by Bayh-Dole.

Read more at:

1. IPWatchdog
2. Patently-O
3. Patent Docs
4. Patent Baristas
5. Association of University Technology Managers (AUTM) President Robin Rasor's blog

Some opponents of the patent reform legislation currently before the US House of Representatives, which would (among other things) replace the ‘first-to-invent’ standard with ‘first inventor to file’, have already jumped on this decision as somehow declaring this reform to be unconstitutional.  The US Business and Industry Council (USBIC) is one such opposing organisation, as illustrated by this report of their press release.  Gene Quinn has posted a contrary view on his IPWatchdog blog.

Tags: News, Soundbytes, US