Vol. 68, No. 2: Full Issue

Denver Law Review Volume 68 Issue 2 Symposium - Intellectual Property Law Article 13 February 2021 Vol. 68, no. 2: Full Issue Denver University Law Review Follow this and additional works at: https://digitalcommons.du.edu/dlr Recommended Citation Denver University Law Review, Vol. 68, no. 2: Full Issue, 68 Denv. U. L. Rev. (1991). This Full Issue is brought to you for free and open access by the Denver Law Review at Digital Commons @ DU. It has been accepted for inclusion in Denver Law Review by an authorized editor of Digital Commons @ DU. For more information, please contact [email protected],[email protected]. DENVER UNIVERSITY LAW REVIEW VOLUME 68 1991 Published by the University of Denver DENVER College of Law UNIVERSITY LAW 1991 Volume 68 Issue 2 REVIEW TABLE OF CONTENTS Foreword Dedication In Honor of Christopher H. Munch ARTICLES Introduction Donald S. Chisum 119 Biotechnology Patent Law: Perspective of the First Seventeen Years, Prospective on the Next Seventeen Years Lorance L. Greenlee 127 Property Rights in Living Matter: Is New Law Required? Robert L. Baechtold 141 Lawrence S. Perry, Jennifer A. Tegfeldt Patricia Carson and Peter Knudsen The Biotechnology Patent Protection Act David Beier 173 and Robert H. Benson A Proposed Legal Advisor's Roadmap for Software Developers John T. Soma, Robert D. Sprague 191 M. Susan Lombardi and Carolyn M. Lindh Requirements for Deposits of Biological Materials for Patents Worldwide Thomas D. Denberg 229 and Ellen P. Winner The En Banc Rehearing of In re Dillon: Policy Considerations and Implications for Patent Prosecution Margaret]W4.Wall 261 and Justi,n Dituri The Effect of "Incontestability" in Trademark Litigation Joan L Dillon 277 File Wrapper Estoppel and the Federal Circuit Glenn K Beaton 283 COMMENT Steward v. Abend: Derivative Work Users Beware Clark L. McCutchen 297 NOTE Rule of Reason Analysis in Intellectual Property Joint Ventures James Ball 315 INTRODUCTION DONALD S. CHISUM* The articles in this symposium grapple with major contemporary issues in United States intellectual property law. The topics are signifi- cant: patent law protection for biotechnology; computer software protection; the Dillon decision's explication of prima facie obviousness of chemical inventions; trademark law's incontestability concept; the "file wrapper estoppel" doctrine's effect on claim scope; the Stewart decision on renewal copyright owner's rights as to use of authorized derivative works; and competition policy and intellectual property balanced in the joint venture context. This Symposium demonstrates that intellectual property law is a growth industry in the United States and around the world. Increasing interest in copyrights, patents, trademarks and related areas is the culmi- nation of major legal and economic events in the 1970's and 1980's, including: enactment of the long-awaited Copyright Revision Act of 1976; the energy crisis and erosion of the economic position of the United States among developed countries, both of which focused atten- tion on the patent system, which is the traditional means of stimulating investment in research and development;' two new international patent conventions-the Patent Cooperation Treaty and the European Patent Convention; the opening of the People's Republic of China and other new markets with resulting questions concerning trademark protection and other industrial property rights; developing countries' demands for changes in the Paris Convention and for adoption of the code of con- duct governing the licensing and transfer of technology to other econo- mies by countries in the developed countries; establishment of the United States Court of Appeals for the Federal Circuit, with exclusive appellate jurisdiction over patent matters; negotiations on the international harmonization of patent law under the auspices of the World In- tellectual Property Organization; trilateral discussions among the United States, Japan and European Patent Offices; focus by the General * Professor of Law, University of Washington, Seattle, Washington; Of Counsel, Morrison & Foerster, San Francisco, Los Angeles, Orange County, Palo Alto, Walnut Creek, Sacramento, Washington D.C., New York, Denver, Tokyo, London, Hong Kong, and Brussels. 1. At no time has there been greater public expectation that the science and technology community will devise solutions to dietary, health, environmental, and other problems. It is to this community that the public and public officials look for the preven- tion or cure of heart disease, cancer and AIDS, for better biodegradable materials, for more efficient usage of energy, etc. The clamor for new technology comes at a time when there is public resistance to higher taxes, which are necessary to support high levels of government spending on research and development. Universities and private firms increasingly must rely on private financing for both basic and applied research. DENVER UNIVERSITY LI W REVIEW [Vol. 68:2 Agreement on Tariffs and Trade (GATT) on the trade-related aspects of intellectual property (TRIPS); and United States adoption of "intent-to- use" trademark procedures and implementation of the Berne Copyright Convention. Apart from these dramatic events, heightened interest in legal rights in intellectual property is not surprising. Today more than ever, the products of the mind-aesthetic, technological, and organizational- constitute humankind's most valuable assets. One of the most difficult problems confronting companies, practi- tioners, scholars, and government policy makers concerned with intellectual property law is how to develop fresh approaches to the new technologies, such as biotechnology, software, semiconductors, and su- perconductivity. Innovative approaches must take account of trends around the world, not just in the United States. Those who prognosticate are doomed to embarrassment, but I will go out on a limb and identify five trends that are likely to continue through the 1990's. * Diminution of national control over intellectual property law policy. * Increased international scrutiny of the fairness, effectiveness, and ef- ficiency of domestic intellectual property law systems. * Harmonization of intellectual property systems. * Legislative fine-tuning of intellectual property law to accommodate the needs of new technology industries. * Moderation of the current movement to strengthen intellectual property. A. Diminution of National Control over Intellectual Property Law Policy Through the 1960's, major industrial countries, especially the United States, autonomously developed their domestic intellectual property systems. True, major international conventions, such as the Paris Convention on patents and trademarks, placed some restraints on autonomous development. Also, particular countries looked to models developed elsewhere as instructive guides. Nevertheless, major indus- trialized countries were not directly constrained by international considerations. Domestic policy makers designed laws on patents, copyrights, trademarks, trade secrets, and unfair competition to further national interests and to balance the competing interests in free competition and incentives for the production, disclosure, and development of aesthetic, technological, and organizational assets. The 1970's and 1980's saw a diminution in traditional national au- tonomy over intellectual property law policy. In the United States, for example, many major intellectual property law changes were driven not so much by a domestic consensus as by the desirability or necessity of conforming to international norms or of avoiding putting domestic companies at a competitive disadvantage. For example, in the United States, many provisions of the 1976 1991] INTRODUCTION Copyright Act 2 were justified primarily by reference to international norms or constraints. Foremost was the change in copyright term from fifty-six years to "life of the author plus fifty years." 3 Serious considera- tion of the proposition that even fifty-six years was too long for all or some categories of works was precluded because most other countries belonged to the Berne Convention that dictates the longer term. The 1988 elimination of copyright notice was solely to enable the United States to join the Berne Convention. As another example, many policy makers in Japan favored protect- ing computer software under some specially tailored protection scheme. Pressure from the United States forced Japan and other countries to follow the American model of copyright protection for software. In the trademark area, many in the United States favored moving to an "intent-to-use" registration filing system, but many also opposed it. Tipping the balance, was the need to avoid putting American companies at a competitive disadvantage compared to companies in other countries that had a Paris Convention treaty right to file trademark applications without showing use. This trend will surely continue as international sensitivity to the trade-related aspects of intellectual property (TRIPS) grows. It will be a major constraint on the intellectual property policy development. In the United States, it is now commonplace to support or oppose a particular policy proposal by reference to whether it will set a good or bad prece- dent that may thereafter be used by other countries. For example, if a proposal is made that includes a "compulsory license," it will be opposed not so much "on the merits" as on the ground that other countries will cite the United States

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