BOSTON PATENT LAW ASSOCIATION NEWSLETTER
Summer 2010 EDUCATION, SERVICE, COMMUNITY Volume 41, Issue 3
In This Issue President’s Message
President’s Message…...……...…1 The Boston Patent Law Association continues to provide members with a BPLA's Influence Seen in Bilski variety of programs and functions – Decision ……………………...……3 despite our hot summer! The Judges Dinner this year was held on June Accuracy in Patent Translation.....4 4th and over 200 members and guests attended the event. The 2010 Judges Dinner Pictures...... 8 evening began with a cocktail
reception held outside on the Countdown to 2013: Five Things Everyone Should Know About waterfront at the John Joseph Recapture of Copyrights Under 17 Moakley United States Courthouse. U.S.C. § 203……………………....9 We moved indoors for dinner, where our keynote speaker, Tyler “Dr. Vino” Federal Circuit Confirms En Banc Colman, introduced the wine pairing that Both Written Description and to complement each course. Colman Enablement are Required for presented on “Wine Politics: How President Lisa Adams Patentability………………………11 Governments, Environmentalists,
Mobsters, and Critics Influence the A Collaboration between the Unfortunately, the game ended with Museum of Science and the Wines We Drink,” which is the title of the Rangers beating the Red Sox 8- BPLA……………………..……….15 his first book published in July 2008. 4. But despite the loss, it was an I had the privilege to present this exciting evening as Bengie Molina The BPLA Files Amicus Brief in year's BPLA Distinguished Public became the eighth player and first the Therasense Case, Advocating Service Award to the Honorable Rya catcher since 1900 to hit for the for the Objective “But For” Test as W. Zobel for her significant cycle, even managing a grand slam. the Sole Materiality Test as it involvement in a number of patent Relates to Inequitable Conduct..16 cases, as well as her involvement As you may recall, back in April the
with the Federal Judicial Center, Amicus Committee filed an amicus Job Postings……….…...……..…17 which provides training for new brief in the appeal of Ex Parte Bilski . judges and CLEs for sitting judges. The Supreme Court handed down a Judge Zobel graciously accepted the decision on June 28, 2010 rejecting Upcoming Events award, and entertained us with a the machine-or-transformation test “claim” reciting the key components as the sole test of process patent Monday, Sept. 27 of the plaque we awarded to her. eligibility based on an interpretation USPTO Road Show of the language of §101. In the The BPLA Summer Outing was held decision, Justice Kennedy cites to Thursday, Sept. 30 at Fenway Park on Friday, July 16th the BPLA amicus brief, which Member Networking and when the Boston Red Sox took on explained that the machine-or- the Texas Rangers. The BPLA was transformation test would create Cocktail Social well represented in the 300 bleacher uncertainty as to the patentability of seats we were able to secure. The software, advanced diagnostic Tuesday, Nov. 4 - weather was extremely hot until a Wednesday, Nov. 5 medicine techniques, and inventions sudden rain shower cooled us off based on linear programming, data and caused a game delay. Advanced PCT Seminar (Continued on page 2) Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
Presidents Message Continued information about the program can be found on our (Continued from page 1) website. compression, and the manipulation of digital signals. The Contested Matters Committee, co-chaired by See Ex Parte Bilski , 561 U.S.___, p. 9 (2010). Susan Glovsky of Hamilton, Brook, Smith & Reynolds, Michael McGurk of Finnegan, Henderson, The Amicus Committee of the BPLA also recently Farabow, Garrett & Dunner, and Donna Meuth of filed an amicus brief in the appeal of Therasense, Inc. Eiasi Inc., welcomed Chief Administrative Patent v. Becton, Dickinson and Co. and Nova Biomedical Judge Michael R. Fleming as the guest speaker for Corp. and Bayer Healthcare LLC , which is scheduled the Board of Patent Appeals and Interferences – to be heard by the Federal Circuit Court of Appeals State of the Board held on June 7, 2010. Chief en banc in November 2010. Timothy D. Johnston Judge Fleming provided a presentation on the State and Rory P. Pheiffer, both of Nutter McClennen & of the Board and New Board Initiatives, along with a Fish LLP, served as counsel on the amicus brief. brief update on Patent Reform as it applies to the Erik P. Belt and Robert M. Abrahamsen, co-chairs of Board. the BPLA Amicus Committee, and Derek P. Roller, Andrew W. Schultz, and Michael P. Visconti, all The Litigation Committee, co-chaired by Martin attorneys at Nutter McClennen & Fish, as well as O’Donnell of Cesari and McKenna, and Douglas Joshua Matt, also contributed to the brief. Doskocil of Goodwin Procter, organized an event held on June 15, 2010 entitled “Engaging Your The BPLA also recently announced the Invented Patent Jury,” which featured the Honorable William Here! Program, which was jointly developed by the G. Young. Judge Young gave guidance on how the BPLA and the Museum of Science (MoS). Past- bench would like litigators to handle jury trials to President Mark Solomon and the New Lawyers and minimize juror confusion. Law Students Committee have been working closely with the MoS over the past year to rekindle the We have a full schedule of events in store for the fall relationship the BPLA and the MoS enjoyed in the as well. Please keep your eyes out for a member late ‘80’s and early ‘90’s with the Inventors Weekend social that we are planning for late September. We Program. The new Program, the Invented Here! will also host the annual USPTO Road Show on Program, is expected to be an annual recognition September 27th, and an announcement with be sent event that honors New England’s newest and most out shortly. Our annual PCT Seminar will be held on innovative technologies. The honorees will advance a November 4th and 5th at the Holiday Inn Boston at MoS mission of playing a leading role in transforming Beacon Hill. As a reminder, you can register for all the nation’s relationship with science and technology events on our website. and will advance the BPLA’s missions of Education, Please continue to check out our calendar of events Service and Community. The innovative technologies on the website, where upcoming events are featured. are expected to shape the way people interact with each other and the world around them, fulfill I encourage each of you to remain actively involved important individual and/or social needs in novel with the BPLA, and to reach out to the Board of ways, educate and inspire students both in the Governors and the Committee Chairs with any classroom and outside of school-time, or ensure a comments or suggestions. ◊ more sustainable future for our environment. More
We would like to thank our accountants for providing the BPLA with outstanding service over the years
Suzanne M. Monahan, CPA Kelly A. McLaughlin, CPA David M. Walsh, CPA
1 Batterymarch Park, Suite 101 Quincy, MA 02169-7454 617-769-9600 www.daviesmonahan.com With approximately 16 years in providing accounting, auditing, tax, and consulting services, we attribute our long-term success to understanding our clients’ needs and providing high-quality, timely service.
2 2 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
BPLA's Influence Seen in Bilski Decision
The Boston Patent Law Association has been making business method claims, the Federal Circuit applied the voices of its members heard on patent and other the so-called “machine-or-transformation” test. The intellectual property controversies by contributing two BPLA’s concern was that this test is a relic of the to three amicus curiae briefs to trial and appellate Industrial Age of the 19th Century and thus could be courts each year. As the BPLA has become more used to reject patents on emerging technologies, such vocal, the courts have started to listen. Most recently, as medical diagnostics and computer-related Justice Kennedy cited to the BPLA’s amicus brief in inventions. Bilski v. Kappos , which left open the possibility that business methods can qualify as patentable subject Relying explicitly on the BPLA’s amicus brief , among matter under 35 U.S.C. § 101 (the threshold provision others, Justice Kennedy signaled the Court’s of patent law, governing what subject matter is eligible willingness to protect innovation in emerging for patent protection). technologies:
A major theme of the BPLA’s amicus briefs in Bilski The machine-or-transformation test may well and in other cases has been the importance of patents provide a sufficient basis for evaluating processes to innovation and the American economy. A subset of similar to those [**20] in the Industrial Age -- for that theme is that the nature of innovation has example, inventions grounded in a physical or other changed since the patent laws were originally drafted tangible form. But there are reasons to doubt by Thomas Jefferson and that patent law must be read whether the test should be the sole criterion for to accommodate that change. The original patent determining the patentability of inventions in the laws were drafted in an age when the state of the art Information Age. As numerous amicus briefs argue, involved gears and cogs and springs. Now, state of the machine-or-transformation test would create the art involves amino acid sequences and data uncertainty as to the patentability of software, packets and information. If the patent laws cannot be advanced diagnostic medicine techniques, and read to accommodate innovations in emerging inventions based on linear programming, data technologies, particularly those in biotechnology and compression, and the manipulation of digital digital communications, then innovation will stall and signals. See, e.g ., Brief for Business Software the economy will suffer. Alliance 24-25; Brief for Biotechnology Industry Organization et al. 14-27; Brief for Boston Patent Justice Kennedy relied on this theme in crafting the Law Association 8-15; Brief for Houston Intellectual Supreme Court’s Bilski opinion. Indeed, the three Property Law Association 17-22; Brief for Dolby most important words of that opinion may be “But Labs., Inc., et al. 9-10. times change.” Bilski v. Kappos , 177 L. Ed. 2d 792, 803 (2010). In keeping with that spirit, the opinion Id. at 803. goes on to interpret § 101 as a “dynamic provision designed to encompass new and unforeseen The BPLA hopes to have more influence on pressing inventions.” Id. (citation omitted). matters of intellectual property law. If you become aware of amicus opportunities, please bring them to The question then became whether the test of patent the attention of the Amicus Committee Co-Chairs, Erik eligibility that the Federal Circuit applied was proper Belt of McCarter & English LLP and Bob Abrahamsen under § 101. In an appeal from the United States of Wolf Greenfield & Sack, P.C. ◊ Patent & Trademark Office’s rejection of certain 3 3 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
Accuracy in Patent Translation
By Bruce D. Popp, Ph.D., American Translators Association Certified Translator for French and English
Introduction good writing style is not sufficient increases dramatically along this for obtaining or recognizing a range. Accuracy is essential to a patent quality translation because a translation. An inaccurate translation error could have been In re Oda (443 F.2d 1200; decided translation which is not recognized introduced when the original by CCPA July 1, 1971) arose from as such can have serious document was misunderstood or an effort to correct a translation consequences for the patent its meaning distorted. error present in an issued patent. practitioner or the inventor. The The patent claimed three organic consequences can even be so This discussion provides some dyes that could be used in a severe as to lead to loss of patent insight into what is needed to get printing process. The error involved right or enforceability. A better an accurate translation. Finding the the name of a chemical used in the understanding of what is involved right translator is important, and synthesis of the dyes. Because of in translation helps make it clear consideration needs to be given to the error in the chemical name, the that it is a demanding intellectual qualification, specialization, and description of the process for activity requiring excellent reading subject matter. A good translator synthesis of the dye was comprehension in the language of can provide more than just an insufficient and consequently there the original document, knowledge accurate patent translation: was a risk that the patent would be of the technical subject matter of working with a translator can found invalid and unenforceable. provide more information about the the document, and good writing The US patent application was and editing skills in the language of patent, including errors in the foreign patent, and understanding based on the translation into the translation. A skillful translator English of the Japanese patent brings all these elements together. of patent process in the other country. application from which priority was This article starts with an example claimed. In the US application as of an error in the translation of a What’s at Stake? filed (which included the translation error), one step in the synthesis of patent application from Japanese To err is human, and humans into English and the significant the organic dye involves a nitration preparing, prosecuting, and reaction in the presence of nitrous effort involved in getting the error translating patents all err corrected. The matter was finally acid and sulfuric acid. The US occasionally. The severity of errors application referred to nitrous acid decided by the Court of Customs can range from minor grammatical and Patent Appeals ( In re Oda ). six times. The correct translation or punctuation errors that are was nitric acid, not nitrous acid, The article then provides a hardly worthy of note; through and that was the error that needed simplified example of a translation more serious errors that may need correction. Nitric acid, H2NO3, is a of one sentence. There are many to be corrected and require a common laboratory reagent and reasonable translations of this one certificate of correction or even a strong acid. Nitrous acid, HNO2, is simple sentence. Beyond the reissue in order to correct them; to less common—it decomposes paramount issue of accuracy, the most serious errors, which rapidly—and a weak acid. important factors include: clarity, cannot be corrected and are writing style, and readability. These prejudicial to the enforceability and To correct the error, a reissue factors will generally be clear to the value of the patent. The time, application was filed. The reissue reader. The differences between effort, and cost to correct an error application was rejected by the the examples shown relate to (and the injury if the error cannot examiner, and the rejection was be corrected or is unrecognized) these factors. While necessary, (Continued on page 5) 4 4 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 Accuracy in Patent Translation reference does not resolve the of the French sentence and gets at (Continued from page 4) challenge of identifying the what it means to see well. Third, omission or other translation error perhaps influenced by the French sustained by the Board of Patent and supplying and justifying the preposition, the first variant says Appeals and Interferences. The correction. Perhaps more difficult, invisible for and is corrected to issue in case was whether the the omission or other translation read invisible to . change from nitrous acid to nitric error must still be identified and the acid to correct the error in the correction supplied and justified. With a professional translator one reissue application introduced new can hope for something a little matter not present in the original A better approach, with broader better. The first thing to recognize application as filed. The examiner scope and lower-cost, is to avoid or is that the real subject of the first and the BPAI held that correcting at least find the translation error sentence is the heart . Placing it at the error did introduce new matter. before it makes its way into an the end of the sentence is effective On appeal, the CCPA found that, application or other documents in French, but in order to receive its since affidavit evidence had been filed with the USPTO. To help you proper emphasis and attention in provided showing that the error avoid translation errors, the English it really needs to be near and its correction would be obvious remainder of the article will discuss the beginning of the sentence. The to a person skilled in the art, new what is involved in translation, how next objection is that in normal matter had not been introduced. errors in translations can be spoken English, one is not The decision is cited often for what assessed and understood, and normally used as a pronoun for an it says about new matter. how to get accurate translations unspecified individual; that use is that meet your needs. normally reserved for more formal At a practical level this illustrates written language and in fact I used the time, effort and expense that What Does Translation Involve? it that way two paragraphs ago. can be incurred when attempting to To help you understand what is Then there is the handling of L’essentiel which has left correct an error in a patent. involved in translation, I'd like to something behind in becoming The start with an example of a simple, Although the above example deals essential . This is a harder issue to famous French sentence. Since with a US application based on deal with satisfactorily. With those many people take French in high translation of a Japanese considerations in mind, the school, I hope this is a good application, it should be noted that sentences can beneficially be errors in translations of other language for an example. The sentence is from Le petit prince by rewritten as, "Only the heart sees documents could have serious clearly. What matters on the inside Antoine de Saint-Exupery. It is, consequences. A translation error is invisible to the eyes." in a foreign patent or non-patent "On ne voit bien qu’avec le cœur. literature could, for example, lead L’essentiel est invisible pour les In translating, three key intellectual to a flawed understanding of the yeux.” The vocabulary is basic, and skills are used. The first is good prior art with consequences for the so is the grammar although one reading comprehension of the assessment of the novelty and does need to recognize the ne… source document -- the document obviousness of a client’s invention. que negative construction. to be translated. For documents about complex subject matters, A hypothetical high school student A partial defense against errors in such as quantum well lasers or translations to be filed as US in a third or fourth year French class should reasonably be able to existential philosophy, knowledge patent applications, is to of the subject matter and its come up with "One does not see incorporate by reference the specific vocabulary is essential to foreign application, either explicitly well except with the heart. The essential is invisible for the eyes." reading comprehension. This is or through a claim under 37 CFR why the importance of finding a With a small improvement on this 1.55 for priority of a prior-filed translator with both linguistic skills foreign application. This would be, "One sees clearly only with the heart. What is essential is and subject matter knowledge incorporation by reference would should not be overlooked. then provide a route for introducing invisible to the eyes." This offers material from the foreign three improvements. First, using Skipping over the middle, the third application into the US application only instead of does not… except skill is good writing in the target to correct omitted or incorrectly is less literal (It's no longer an language – the language into translated material without raising exact parallel of the French which the document is being questions about new matter. The construction.) and sounds a little translated. As people experienced issue of whether there was better in English. Second, the with preparing patent applications deceptive intent would still need to French adverb bien has a much and writing briefs, you certainly be addressed. broader range of meaning than the know firsthand the value of good English word well so "sees clearly" writing skills. Writing skills are Incorporating the foreign patent by is certainly well within the meaning (Continued on page 6) 5 5 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 Accuracy in Patent Translation consent form to be given to a effects of the drugs to wear off into (Continued from page 5) patient considering participating in an instruction to understand how a clinical trial of a chemotherapy the drugs affect the patient before important to translators too. drug. driving. The translator's comprehension of the source text But now I need to get back to the The sentence is was wrong, and therefore the middle, the part that joins reading comprehension and writing skills "vous ne pourrez donc pas translation was wrong even though it is clear and reads smoothly in together and transfers meaning conduire votre véhicule ou faire English. from one to the other. For a fonctionner une machine jusqu’à translation to be accurate, meaning ce que les effets de tous les The case described above, In re present in the source must be médicaments qui vous ont été Oda , involves incorrect translation transferred into the target and administrés se soient estompés” of basic chemistry terminology. meaning not present in the source Beyond the difference in the and the translation was should not be introduced into the oxidation state of nitrogen, nitric target. If the source is broad, "you should not drive or operate acid is a common laboratory vague, or ambiguous then the machinery until you understand reagent and nitrous acid is not. I translation needs to be comparably how all the drugs which you have have no information about how the broad, vague, or ambiguous. For been given affect you." error occurred, but systematic technical and patent translation, it repetition on all seven occurrences is generally necessary that each This sounds like a straightforward seems to clearly indicate a linguistic unit of meaning present in stock phrase that you might expect deliberate choice of the wrong the source be conserved during to see on a prescription that you term. Would better knowledge of translation into the target. pickup from a pharmacy. Looking chemistry, especially organic only at the text in For literary or marketing translation chemistry, have English there is no prevented this error? other qualities may also need to be reason to suspect any “Would better It seems likely, transferred. There qualities involve problem with the narrative pace, character although simple due translation, but the knowledge of ... diligence might have development, perspective, and translation is wrong in organic chemistry, prevented the error dialogue, and these need to be an important respect. respected even though they may as well. In trying to lead to compromises with the have prevented this understand what had While the error in the meaning. led the translator to error? It seems likely, medical instructions Sources of Inaccuracy in make this error, I is difficult to spot in Translation came to the although simple due the absence of the conclusion that they original text or prior At this point I want to discuss some did not understand diligence might have experience that of the ways errors occur in the word "estompés" would cause you to translation. It is my opinion that which is not prevented the error as red-flag the translation (“That there were three main ways: commonly used and well.“ misunderstanding of the therefore obscure. can’t be right!”), and vocabulary or grammar in the They compounded this error by the error in In re Oda source document (this is related to failing to look up this word in a is hard to spot, errors resulting the first translator skill, good dictionary and understand its from poor writing in English are comprehension of the document to meaning. relatively easier to spot. Careful be translated), incomplete or proofreading can generally find incorrect understanding of the This word means abated or worn these errors, but their correction subject matter (state-of-the-art) off, so a corrected translation is: may require reference to the and its terminology, and finally original foreign language "you should not drive or operate document. poor writing mechanics in the machinery until the effects of all target document (which is related the drugs which you have been Getting an Accurate Translation to the third translator skill). given have worn off." As an example of the first way Given the potential cost of an There is no question that the inaccurate translation and an translation errors can occur, I want chemotherapy drugs in this clinical awareness of how errors may to use a sentence that I came trial will cause unpleasant side across when editing a translation creep into a text, how can a effects that make it dangerous to translation client be sure of getting that had been prepared by another drive. By making this error, the translator. The document being translator has changed an (Continued on page 7) translated was in an informed instruction to wait for the side 6 6 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
Accuracy in Patent Translation translation and another layer of to get an informed overview of the (Continued from page 6) certainty. document or answers to specific questions. one that is accurate? I have some A good translation takes time to specific recommendations. prepare. Haste makes waste, and When asking a translator to a translation done in a rush at the prepare a translation of a patent or Start with a professional translator last minute to meet a tight deadline application, you should ask that who is well qualified and who is no exception. Translators gain they provide a separate set of specializes in the subject matter awareness of the limits on the "translator's notes" identifying that you need translated. amount of work they can do in a possible errors they may have day and maintain good quality, and found their way into the patent. The Unlike other professions, there are they develop schedules and work notes should include the page and no mandatory licenses or habits that accommodate this. line number of the error, a quote of professional credentials required to Often they will have committed to a the word or line from the document call oneself a translator. The project that must be completed and being translated which contains the American Translators Association delivered before new work can be error, and an explanation of what is (ATA) does certify translators, and started. While it may be possible to thought to be in error. Many times certification is based on meeting juggle or rearrange commitments these will be just minor spelling or eligibility requirements and a with other clients -- or drink more grammatical errors. On occasion, written practical exam in which two coffee in an effort to squeeze more however, the translator may find test passages are translated. This work into a day --, it is best to more serious errors. professional credential is optional avoid unduly burdening the and there certainly are very translators by planning ahead. Two A translator may also be able to competent translators who could days before the one-year filing provide observations or guidance become certified but have, for any anniversary of a foreign application on practices and conventions in the number of reasons, not chosen to is not the time to find out that other country. In the film do so. Nonetheless, it is useful to translating that application will take Inglourious Basterds , holding up look for ATA Certified Translator to five days. Anticipate when a the wrong fingers when asking for assure a reasonable level of translation will be needed and "trois verres" in a basement bar qualification. This can be done discuss with the translator how leads to an outbreak of shooting using the ATA Directory of much time they will need to and violence characteristic of Translators and Interpreters complete the translation. If another Quentin Tarantino films. What available through their website. person will be editing the happens when you send a European colleague a document Some translators have advanced translation, this should also be covered when discussing on 8½ by 11 paper with comments degrees in scientific or technical scheduling. Both of you will sleep and notations in the right margin? fields, relevant non-translation better. In one situation I observed while work experience, or a minor or working in an office in Brussels, the coursework in a particular field. Working with the Translator document had to be copied onto When considering working with a large size paper because copying particular translator, ask them Often you will just send a onto A4 metric size paper about their experience translating document to a translator as an e- truncated the comments, and a specific kinds of documents mail attachment with a request that copy reduced to fit A4 paper was (patents, scientific or technical it be translated and wait for the not legible. I hope they didn’t journal articles, etc.) and specific translation to come back as contemplate an outburst of subject matter (biotechnology, another e-mail attachment. This violence, but the frustration was mechanical engineering, etc.) and may work out perfectly obvious. also ask them whether they have satisfactorily most of the time. relevant training or experience in a However, it's good to be aware that A translator can offer alternatives particular field. there may be other ways the to translating the entire patent, translator can help you. which can be more time- and cost- Although it may be unnecessary for effective. some documents, such as ones Because in translating the being translated to understand the document the translator needs to Faced with a large volume of state-of-the-art or context, when read it carefully, closely, and with foreign language documents the accuracy of the translation is good comprehension, they will produced, for example, during very important, ask the translator to likely have read it more closely discovery, a translator can produce have another translator edit their than anyone else since the author. a catalog of the documents with a work. This will increase the cost, Discussing the document with the translated title, short description, but it provides another set of eyes translator once the translation is publication date, and other reviewing and checking the complete could be an opportunity (Continued on page 17) 7 7 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 2010 Judges Dinner Pictures
Peter Lando, Gary Ganzi, Ed Russavage, Tom Sullivan Joe Maraia, Walter and Mary Dawson
Frank Porceli and Hon. William Young Hon. Patti Saris, Hon. Alan Lourie, Hon. Rya Zobel, Jim Finke
Steve Henry, Matt Lowrie, John Strand, Larry Green Deirdre Sanders and Mark Solomon 8 8 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
Countdown to 2013: Five Things Everyone Should Know About Recapture of Copyrights Under 17 U.S.C. § 203
By Joshua M. Dalton, Esq. and Shuan Lue, Esq., Bingham McCutchen LLP author does not choose to terminate, the grant In just a few short years, the ownership of certain continues in effect unless otherwise provided. § 203(b) copyrights could undergo a drastic shift as authors (6). seek to recapture their copyrights. Under the scheme set forth in 17 U.S.C. § 203, a grant of copyright or of In the case of a work created by only one author, any right under copyright executed by the author on or terminating a grant is straightforward and may be after January 1, 1978, is subject to “claw-back” right of accomplished by the author himself. § 203(a)(1). If a termination by the author or his heirs under certain grant was executed by two or more authors of a joint conditions. The year 2013 will be the first year in work, termination may be effected by a majority of the which authors can exercise the right to recapture their authors who executed the grant. Id. copyrights. However, the notice period for termination has already started for certain works, and will expire The statute also contains provisions to allow for as early as next year for certain grants. As such, exercising the recapture right where an author is anyone who may advise clients regarding copyrights deceased. In the case of a grant executed by a would be wise to keep these five things in mind. single author, termination may be effected by the person(s) who, under § 203(a)(2), own and are 1. § 203 does not apply to all transfers of entitled to exercise a total of more than half of the copyright. author’s termination interest. Where a grant was executed by multiple authors of a joint work, the Not all transfers of copyright are subject to termination termination interest of the deceased author may be by the author under § 203. For example, the right to exercised as a unit by the person(s) who, under § recapture copyrights does not extend to works made 203(a)(2), own and are entitled to exercise a total for hire or grants made by will. 17 U.S.C. § 203(a). Nor of more than half of the author’s interest. 1 does the statute apply to rights arising under foreign laws. Id. at § 203(b)(5). Finally, derivative works 3. When can termination be effected? prepared under the authority of a grant prior to termination may continue to be utilized even after In most circumstances, an author may choose to termination. Id. at § 203(b)(1). However, this does not recapture her rights at any time during a five-year allow the former grantee to continue to prepare, post- window beginning thirty-five years from the date of the termination, other derivative works based on the execution of the grant. § 203(a)(3). However, if the copyrighted work. Id. grant covers the right of publication, the five-year window commences at the end of thirty-five years from 2. Who may terminate a grant of copyright? the date of publication of the work or at the end of forty years from the date the grant was executed, First and foremost, the statute provides that the author whichever term ends earlier. Id. of a work may terminate a grant of copyright. This right is preserved even if the author has made an Although termination itself actually occurs during these agreement to the contrary, including an agreement to five-year periods, the statute requires an author to make a will or to make a future grant. § 203(a)(5). serve an advance written notice of termination upon However, it is incumbent upon the author to take action if he wishes to recapture a copyright; if the (Continued on page 10)
1 17 U.S.C. § 203(a)(2) provides a comprehensive scheme setting forth who may exercise a deceased author’s termination interest. For more details, please refer to the statute. 9 9 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 2010 Judges Dinner Pictures
Hon. Richard and Patti Stearns Steve Henry, Matt Lowrie, Neil and Renee Ferraro, Amy Mendel
Count Down to 2013 under § 203, identify the work to which the notice (Continued from page 9) applies and the grant being terminated, and state the
effective date of termination 37 C.F.R. § 201.10(b)(2). the grantee. Therefore, an author who wishes to The notice must be signed by each author who is recapture her rights must begin preparing for terminating the grant and must be served upon each termination sufficiently in advance. This requirement is grantee whose rights are being terminated, either by discussed below. personal service or first-class mail. Id. at § 201.10(c)- (d). Harmless errors will not render a notice of 4. How is termination to be effected? termination invalid. Id. at § 201.10(e). In order to terminate a grant of copyright, an author 5. The effects of termination must serve a signed written notice upon the grantee. § 203(a)(4). The Copyright Office does not provide any The future rights that will revert upon termination vest forms for use in serving notices of termination. on the date the notice of termination is served. Then, However, in general, the notice must state the upon the effective date of termination, the rights that effective date of the termination and must be served were covered by the grant revert to the author(s) or no less than two and no more than ten years before other persons owning termination interests. 2 § 203(b). the termination date. § 203(a)(4)(A). However, as noted above, a derivative work prepared under a grant before termination of that grant may Once served, a copy of the notice must still be continue to be utilized. recorded in the Copyright Office before the date of termination to be effective. Id. The statute also Conclusion mandates that the notice “shall comply, in form, content, and manner of service, with requirements that Beginning in 2013, it is expected that authors will the Register of Copyrights shall prescribe by increasingly seek to recapture their copyrights as regulation.” § 203(a)(4)(B). Under this authority, the more and more works become subject to termination. Register of Copyrights has promulgated a set of However, years before the date of termination, authors regulations governing the content and service of must take series of specific mandated steps. Failure to notices of termination, which can be found at 37 do so will result in loss of rights which, in many cases, C.F.R. § 201.10. The details of the regulations are may be extremely valuable. beyond the scope of this article, but in general the Get ready. ◊ notice must state that a termination is being made
2 The rights also revert to those owners who did not join in signing the notice of termination. § 203(b). 10 10 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
Federal Circuit Confirms En Banc that Both Written Description and Enablement are Required for Patentability
By MJ Edwards, Esq., Deric X. Geng, Ph.D., Emily R. Whelan, Esq., and James B. Lampert, Esq., Wilmer Cutler Pickering Hale and Dorr, LLP
In Ariad Pharmaceuticals, Inc. v. and process of making and using conveys to those skilled in the art Eli Lilly and Company , 598 F.3d [the invention].” Id. at 1344 that the inventor had possession of 1336 (Fed. Cir., en banc 2010), the (emphasis in original). The Court the claimed subject matter of as of Federal Circuit "reaffirm[ed] that said that this conclusion was the filing date.” 598 F.3d at 351. §112, first paragraph, contains a compelled by the language of the The Court went on to say that “the written description requirement statute that the specification “shall specification must describe an separate from enablement." Id. at contain a written description of the invention understandable to that 1340. Nine of eleven participating invention,” as well as by stare skilled artisan and show that the judges joined in the en banc decisis : "this has been the law for inventor actually invented the decision; Judges Rader and Linn over forty years ... and to change invention claimed.” Id. filed separate decisions in which course now would disrupt the they dissented-in-part and settled expectations of the Beyond holding that the statute concurred-in-part. While joining inventing community...." Id. at does have separate “written the majority opinion, Judge 1347. description” and “enablement” Newman issued her own requirements, and that the “additional views.” Moreover, it was also clear that disclosure must show that the that a basic purpose for the written inventor “possessed the invention,” In its order granting rehearing en description requirement was to what did the Court say that is banc , the Court directed the parties "ensure that the scope of the right potentially new or different from to brief two questions: to exclude, as set forth in the what it called “the law for over forty claims, does not overreach the years?” 1. Whether 35 U.S.C. §112, scope of the inventor's contribution paragraph 1 contains a written to the field of art as described in One thing potentially new, at description requirement the patent specification." Id. at least in emphasis, was the separate from an enablement 1353-54. Additionally, the written majority’s statements regarding requirement? description requirement is separate the “scope and purpose” of the from the enablement requirement: written description requirement, “although [the two requirements] 2. If a separate written i.e., that often rise and fall together”, a description requirement is set forth in the statute, what is the claimed invention may be enabled A description of the claimed without a “written description.” Id. scope and purpose of that invention allows the United at 1352. requirement? States Patent and Trademark Office ("PTO") to examine In its en banc decision, the nine- Despite its recognition that “the applications effectively; courts judge majority answered the first term ’possession,’ however has to understand the invention, question “yes,” and held that §112, never been very enlightening,” the determine compliance with the Court reaffirmed that “the test for first paragraph, contains two statute, and to construe the sufficiency [of a written description] separate description requirements: claims; and the public to is whether the disclosure of the a “written description [i] of the (Continued on page 12) invention, and [ii] of the manner application relied upon reasonably 11 11 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 CAFC Confirms En Banc The Court specifically rejected Some insight can be gained from (Continued from page 11) Ariad’s argument “that original the case actually before the Court.
claims identify what they state, Ariad originally sued Eli Lilly in the understand and improve upon e.g., a perpetual motion machine, District of Massachusetts, alleging the invention and to avoid the leaving only the question whether infringement of U.S. Patent No. claimed boundaries of the the applicant has enabled anyone 6,410,516 (“the ‘516 patent”). 1 The patentee's exclusive rights. Id. to make and use such an ‘516 patent is directed to the at 1345. invention.” Id. regulation of gene expression by the transcription factor NF-ĸB . In Further, a basic purpose for the The Court also made clear that a particular, NF-ĸB is key to the written description requirement is “description that merely renders expression of numerous genes to "ensure that the scope of the the invention obvious does not related to the body’s immune right to exclude, as set forth in the satisfy the [written description] response. By controlling NF-ĸB , claims, does not overreach the requirement.” Id. at 1352. For the inventors discovered they could scope of the inventor's contribution example, a specification that reduce some of the harmful to the field of art as described in teaches only compound A, with no symptoms of certain diseases. Id. the patent specification." Id. at broadening language, may enable at 1340. Method claim 95, 1353-54. compounds B and C and make rewritten to include its independent them obvious, but it does not claim, is exemplary of the claims in Perhaps surprisingly, the Court describe them. See id. While the dispute: held that the written description Court did not provide a specific requirement applies to both original example, the reverse could also be 95. [A method for reducing, in claims and amended claims. Id. at true: a claimed invention may be eukaryotic cells, the level of 1349. It agreed with Lilly’s described but not enabled. For expression of genes which are argument that written description example, a specification that activated by extracellular “requires that the specification discloses treating cardiovascular influences which induce NF-ĸB - objectively demonstrate that the disease and provides a single mediated intracellular signaling, applicant actually invented – was in example of lowering cholesterol the method comprising reducing possession of – the claimed may describe and enable “lowering NF-ĸB activity in the cells such subject matter.” Id. With regard to cholesterol” while the broader that expression of said genes is original claims, the Court stated “it invention of “treating reduced], carried out on human is the specification itself that must cardiovascular disease” is cells. demonstrate possession.” Id. at described but not enabled. This 1352 see also Id. at 1349 (“the seems closely related to another Applying the written description specification must demonstrate long-standing “truism,” that requirement to the case at hand, that the applicant has made a “invention” requires not only an the en banc Court in Ariad adopted generic invention that achieves the idea, but a complete and operative the reasoning of the panel decision claimed result and do so by way of accomplishing it. in reaffirming that the asserted showing that the applicant has claims of the ‘516 patent were invented species sufficient to However, the en banc Court did invalid for lack of written support a claim to the functionally- not attempt to determine exactly description. 598 F.3d at 1354. The defined genus”). Moreover, what will or will not satisfy the claims were functional genus written description requirement in claims "far broader" than the while it is true that original every case. Recognizing "that disclosure in the specification. Id. claims are part of the determining whether a patent at 1355-58. The patent described specification … that truism fails complies with the written three classes of molecules to address either original claim description requirement will potentially capable of reducing NF- language necessarily discloses necessarily vary depending on the ĸB activity. However, within those the subject matter that it context," the Court was explicit that classes, only one inhibitor (I-KB) claims….Although many original "we do not try here to predict and was disclosed specifically and claims will satisfy the written adjudicate all of the factual other molecules were disclosed description requirement, certain scenarios to which the written prophetically, but without linking description requirement could be claims may not. 598 F.3d at 1349. applied." Id. at 1351. (Continued on page 13)
1 In the district court, a jury found the patent valid and infringed. Ariad Pharms., Inc. v. Eli Lilly & Co., 529 F.Supp.2d 106 (D.Mass. 2007). Lilly appealed, and a panel of the Federal Circuit held the asserted claims invalid for lack of written description. Ariad Pharms. Inc. v. Eli Lilly & Co ., 560 F.3d 1366 (Fed. Cir. 2009). 12 12 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 CAFC Confirms En Banc Court states that prophetic provides little guidance regarding (Continued from page 12) examples can fulfill the written exactly how to establish this
description requirement, but that correlation. Functional claim these molecules to the method of the compounds described language could, however, run up reducing NF-ĸB activity. As such, prophetically in the ‘516 patent against other patent statutes, such the Court found that this disclosure were insufficient. Id. at 1357. In as the § 112, paragraph 6. See, was insufficient to support the “vast view of the breadth of claim 95, for e.g., Ex Parte Rodriguez (PTO scope” of the generic claims, example, would the disclosure of a BPAI 2009, Precedential Decision), primarily because the patent small number of compounds that where the PTO rejected means “disclose[d] no working or even were actually synthesized and plus function claim elements as prophetic examples of methods shown to reduce NF-ĸB activity indefinite and not enabled when that reduce NF-ĸB activity, and no have been sufficient to satisfy the the specification did not include completed syntheses of any of the written description requirement? sufficient structure to support the molecules prophesized to be Whether the “written description” claims. capable of reducing NF-ĸB test is different from that applied in activity.” Id. at 1357-58. deciding whether a disclosure is The Ariad decision will also likely sufficient to “support” a genus is affect how after-arising technology Depending on the degree to which open to debate. Practitioners have is handled by courts. By definition, the reasoning of its holding is always balanced the breadth of an inventor cannot describe what enforced, the Court’s Ariad genus claims with the amount of has not yet been discovered or decision may have particular disclosure. But, with this decision, invented. Without specifically implications in at least three areas: practitioners will have to be more addressing after-arising (1) claims directed to a large genus careful in making this balance. To technology, the Court confirmed or group, (2) claims using that end, practitioners should that a patent cannot “preempt the functional language, and (3) consider claim strategies that future before it has arrived.” Id. at coverage of after-arising incorporate varying levels of 1353 (citing Fiers v. Revel , 984 technology. Ariad also may have breadth. F.2d 1164, 1171 (Fed. Cir. 1993)). significant implications with regard The Court further held that the to the ability to patent basic The ‘516 patent claims included scope of the right to exclude “must research. the limitations “extracellular not ‘overreach the scope of the influences which induce … inventor’s contribution to the field Regarding genus claims, the Court signaling” and “such that of art as described in the patent held that written description of a expression of said genes is specification.’” ( Id. at 1353-54, genus “requires the disclosure of reduced,” and Court pointed to citing Reiffin v. Microsoft Corp ., either a representative number of claims that use functional language 214 F.3d 1342, 1345-46 (Fed. Cir. species . . . or structural features as being particularly problematic, 2000)), and emphasized that “[r] common to the members of the because they “may simply claim a equiring a written description of the genus so that one of skill in the art desired result and may do so invention plays a vital role in can ‘visualize or recognize’ the without describing species that curtailing claims that do not require members of the genus.” Id. at achieve that result.” 598 F.3d at undue experimentation to make 1350. As noted above, the Court 1349. Here again, the Court and use, and thus satisfy held that the ’516 patent disclosed rejected Ariad’s assertion that enablement, but that have not neither a sufficient number of original claims, by definition, meet been invented, and thus cannot be representative species nor the written description requirement. described.” Id. at 1352. These structural features common to Id. at 1349-1350. passages suggest that, depending inhibitors of NF-ĸB activity that on how strictly the courts apply it, would justify the breadth of claims The Court did not rule out the use Ariad may test the ability of patent such as claim 95, above. of functional claim language claims to cover after-arising Accordingly, the description did not entirely, however. Rather, it technology. establish a correlation between provided that “functional claim structure and function that would language can meet the written Finally, the Ariad decision has the satisfy the written description description requirement when the potential to have a significant effect requirement. What the Court’s art has established a correlation on intellectual property protection opinion leaves unclear, however, is between structure and function.” of basic research. Ariad argued how much disclosure would have Id. at 1350. Because the Ariad academic institutions and satisfied the written description patent failed to provide sufficient universities would be particularly requirement. For example, the working examples, this case (Continued on page 14) 13 13 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 CAFC Confirms En Banc To that end, in her “additional embodied in patented inventions is (Continued from page 13) views” Judge Newman focused on disseminated to the public, for
the difference between a basic addition to the body of knowledge affected because basic scientific principle and an application of that and for use in further research is “the type of discoveries principle: understanding and advance.” Id. that universities make.” 598 F.3d at 1359. To fulfill this purpose “the at 1358. Moreover, such Basic scientific principles are patentee is obliged to describe and institutions may not have the not the subject of patents, while to enable subject matter resources to identify all the their application is the focus of commensurate with the scope of practical applications of such this law of commercial incentive. the exclusionary right.” Id. at 1360. research. Id. at 1353. The Court The role of the patent system is Thus, “pioneering inventions can was unmoved by this argument, to encourage and enable the receive broad patents, when however, and responded that the practical applications of shown to have broad scope.” Id. at intention of patent law is not to scientific advances…. [I]n no 1359. award academic theories. Id. at case has an invention of basic 1353. Rather, patent protection is science been patented with not In conclusion, Ariad provides some available to those who “conceive of even one embodiment answers, but also raises a number the complete and final invention demonstrating its application of important questions about how with all its claimed limitations.” Id. and illustrating its breadth. inventions must be described and The Court further noted that claimed. It remains to be seen granting patent claims to basic Id. at 1359. Focusing on the quid whether the district courts, and the research would “impose costs on pro quo of the patent system, Federal Circuit itself, will enforce downstream research, Newman emphasized that Section the full breadth of the language of discouraging later invention.” Id. 112 was “the way by which the the en banc decision. ◊ scientific/technologic information BPLA Annual Summer Outing
Boston Red Sox vs. Texas Rangers The BPLA Summer Outing was held at Fenway Park on Friday, July 16th when the Boston Red Sox took on the Texas Rangers. The BPLA was well represented in the 300 bleacher seats. Unfortunately, the game ended with the Rangers beating the Red Sox 8-4. Despite the loss, it was an exciting evening.
Kevin McGrath and Megan Jeans Joe and Joan Maraia 14 14 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 Invented Here!
A Collaboration between the Museum of Science and the BPLA
On July 26, 2010, the BPLA Board of Governors was proud to announce a collaboration between the Museum of Science (MoS) and the Boston Patent Law Association (BPLA): the jointly developed Invented Here! Program. The Invented Here! Program will rekindle the relationship the BPLA and the MoS enjoyed in the late ‘80’s and early ‘90’s with the Inventors Weekend Program.
The new Program, the Invented Here! Program, is planned to be an annual recognition event that honors New England’s newest and most innovative technologies. The honorees will advance a MoS mission of playing a leading role in transforming the nation’s relationship with science and technology and will advance the BPLA’s missions of Education, Service and Community. The innovative technologies are expected to shape the way people interact with each other and the world around them, fulfill important individual and/or social needs in novel ways, educate and inspire students both in the classroom and outside of school-time, or ensure a more sustainable future for our environment.
The BPLA Board of Governors is asking BPLA members to submit the names of inventors of technology that led to issued patents within the last five years and which were either developed here in New England or by an inven- tor who is a New England resident. Nominations are due by September 10, 2010 to the BPLA New Lawyers and Law Students Committee at [email protected].
The submissions will be reviewed initially for selection by the BPLA New Lawyers and Law Students Committee and subsequently by a MoS Invented Here! Selection Committee. Selected inventions and their inventors will be recognized by the Invented Here! Program. These committees will select technologies that possess a “Wow!” factor and are presentable to an audience.
If you are interested in serving on the BPLA selection committee, please contact the Co-Chairs of the New Law- yers and Law Students Committee at [email protected].
In addition, the Invented Here! Program has sponsorships available at several different levels. For more detailed information, the Nomination Form and the Sponsorship Form, please go to www.bpla.org
We look forward to hearing from you and receiving your nominations!
Members on the Move Do you have a new job? Made a lateral move lately? Been promoted?
Jennifer Zarutskie Sieczkiewicz has joined We want to hear about your news. Please send your c BiogenIdec as Associate General Counsel, IP. job-related news to:
We will include it in the next issue. 15 15 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3
The BPLA Files Amicus Brief in the Therasense Case, Advocating for the Objective “But For” Test as the Sole Materiality Test as it Relates to Inequitable Conduct
By Timothy D. Johnston, Esq. and Rory P. Pheiffer, Esq., Nutter McClennen & Fish LLP
The BPLA filed an amicus brief in the appeal of The panel decision in Therasense affirmed the district Therasense, Inc. v. Becton, Dickinson and Co., Nova court’s finding that the patent-in-suit was Biomedical Corp. and Bayer Healthcare LLC, which is unenforceable because Abbott Diabetes Care Inc. (the scheduled to be heard by the Federal Circuit Court of successor to Therasense, Inc.) committed inequitable Appeals en banc in November 2010. The Therasense conduct by failing to disclose attorney argument from appeal promises to mark a significant reshaping of the a European Patent Office (EPO) proceeding about an inequitable conduct doctrine, a defense whereby Abbott-owned prior art reference that the PTO cited alleged infringers seek to render a patent against Abbott during prosecution of the patent-in-suit. unenforceable on the grounds that the patentee The court held that the characterization of this prior art misled the United States Patent and Trademark Office reference in the EPO proceedings directly (PTO) in obtaining the patent. contradicted statements that Abbott’s in-house attorney and Director of Research and Development The inequitable conduct doctrine has a significant made regarding that reference in a declaration impact on the practice of patent practitioners and submitted to the PTO. The court distinguished litigators alike. Under PTO Rule 56, 37 C.F.R. § 1.56, previous cases in which it was held that attorney patent applicants and practitioners have a argument concerning the content of prior art is generally insufficient for a finding of duty to disclose information to the PTO “The brief argues that that is “material” to patentability (e.g., prior materiality because the representations art references and other information). the Federal Circuit made to the PTO were factual assertions Today, the Federal Circuit employs no provided in affidavit form. On April 26, less than five different tests to determine should scrap its 2010, the Federal Circuit vacated the whether information is material. This panel decision so that the appeal could creates unpredictability, not only in federal multiple materiality be heard by the court en banc. In that court litigation, but also before the PTO, tests in favor of a order, the Federal Circuit identified six because practitioners must operate under issues regarding the scope of the the shadow of all five tests, none of which single test.” inequitable conduct doctrine to be offer bright-line guidance and all of which addressed by the parties. inevitably conflict with one another. Ironically, under the current framework, applicants and practitioners The amicus brief addresses the proper standard for can comply with the duty of disclosure established by materiality and the role that the rules of the PTO Rule 56 before the PTO and yet still be found by a should play in defining materiality, which is one of the court to have committed inequitable conduct. The six issues on which the court requested briefing. The consequences of such a finding, even as to a single brief argues that the Federal Circuit should scrap its claim, are severe—the entire patent is rendered multiple materiality tests in favor of a single test: an unenforceable. objective “but for” test whereby information would not
(Continued on page 17) 16 16 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 2010 Judges Dinner Pictures
Greg Sieczkiewicz, Josh Dalton, Christine Biscotti Sarah Columbia, Mark Freeman, Lee Bromberg
Lisa Adams and "Dr. Vino" Lisa Adams and Hon. Rya Zobel Beth and Tim French (Tyler Colman)
Accuracy in Patent Translation BPLA Files Amicus Brief (Continued from page 7) (Continued from page 16) information you might need. You could then use the be deemed material unless it invalidates one or more catalog to decide which documents are potentially patent claims. This bright-line test has several material and separate them from the installation advantages. For example, it would realign the instructions for the kitchen sink. inequitable conduct doctrine with its roots in common Similarly, working with a translator may help you law fraud, under which only misrepresentations and decide that only certain portions of a large document omissions that are truly outcome determinative are need to be translated and help you identify which they deemed material. Such a test would also make the are. defense of inequitable conduct more difficult to allege and prove than under the currently existing tests. If you are only interested in certain specific things that Additionally, an objective “but for” test would further the may be contained in a document, you can discuss goal of providing the PTO with the information most those things with the translator, ask the translator to pertinent to patentability without the extraneous review the document, and then discuss what they material that is often included today because of the found with you. For example, if you have a lengthy uncertainty surrounding the competing materiality environmental assessment of industrial properties but tests. are only interested in ones that had underground fuel oil storage tanks, then asking the translator to identify Timothy D. Johnston and Rory P. Pheiffer, both of those properties from the assessment would be a cost- Nutter McClennen & Fish LLP, served as counsel on effective approach. the brief along with Erik P. Belt and Robert M. Abrahamsen, co-chairs of the BPLA Amicus Conclusion Committee. Derek P. Roller, Andrew W. Schultz, and Considering the potential impact of an inaccurate Michael P. Visconti, all attorneys at Nutter, and Joshua translation and what is involved in translating, you can T. Matt, formerly of Nutter, also contributed to the get an accurate translation by choosing a translator brief. ◊ carefully and working in cooperation with them. ◊ 17 17 Summer 2010 BPLA NEWSLETTER Volume 40, Issue 3 Job Opportunities Associate Patent Attorney Daly, Crowley, Mofford & Durkee LLP
IP firm located off Rt. 128 in Canton, MA seeks a patent attorney having an Electrical Engineering background. At least 2 years of patent prosecution experience preferred with industry experience a plus. Firm attorneys work in a wide range of technology areas for large and small corporate, institutional and individual clients. Reasonable billing requirements. Salary and benefits competitive with Boston area.
Send, fax to (781-401-9966), or E-Mail ([email protected]) resume to Paul Durkee, Hiring Attorney, Daly, Crowley & Mofford, LLP, 354A Turnpike Street - Suite 301, Canton, MA 02021, 781-989-5141.
Patent Associate Nutter McClennen & Fish LLP
Nutter McClennen & Fish LLP seeks a patent associate with 2-4 years of patent prosecution experience. Qualified candidates will have prior law firm experience and a strong background in Chemistry with an advanced degree, preferably a Ph.D. Persuasive advocacy skills, strong interpersonal skills, technical knowledge and superior writing ability are essential.
Nutter’s patent practice, which is on par for both quality and clients with the most elite firms in the country, represents clients who develop and produce new technologies, including blue chip companies developing cutting edge medical devices. This is an exciting opportunity for bright and dedicated mid-level associates with an interest and ability to work at the cutting edge of law and technology.
Please send resume to: Terese Cunningham, Director of Legal Recruitment Nutter McClennen & Fish LLP World Trade Center West 155 Seaport Boulevard Boston, MA 02210 Email: [email protected] 617-439-2351
JOB POSTINGS
To add a job posting to our on-line list of Career Opportunities for 3 full months, and to be listed in a quarterly BPLA Newsletter, please e-mail your job posting and contact information to:
(Fee is $300 per listing)
18 18 Summer 2010 BPLA NEWSLETTER Volume 41, Issue 3
The Boston Patent Law Association Committees (BPLA) is an association of intellectual
ACTIVITIES & P UBLIC RELATIONS IN-HOUSE PRACTICE property professionals, providing edu- cational programs and a forum for the [email protected] [email protected] interchange of ideas and information Giordana Belenchia, Nutter McClennen & Fish William DeVaul, Cubist Pharmaceuticals Inc. concerning patent, trademark, and copyright AIPLA M OOT COURT David Miranda, Jr., Raytheon laws. Through a volunteer Board of [email protected] INTERNATIONAL & F OREIGN PRACTICE Governors and committees, it organizes and Jonathan Mutch, Robins, Kaplan, Miller & [email protected] hosts educational seminars, social events, Ciresi, L.L.P. Deirdre E. Sanders, Hamilton, Brook, Smith & and conventions, and comments on rules, Elizabeth Burkhard , Holland & Knight Reynolds, P.C. legislation, and judicial decisions impacting AMICUS John N. Anastasi, Lando & Anastasi, LLP the profession. Visit the BPLA at [email protected] www.bpla.org . LICENSING Erik Paul Belt, McCarter & English [email protected] The BPLA Newsletter is published four times Robert M. Abrahamsen, Wolf, Greenfield & Michael Bergman, Bergman & Song, LLP a year by the Boston Patent Law Sacks, P.C. Paul D. Burgessm, Transform Pharmaceuticals Association. Articles appearing in the ANTITRUST LAW LITIGATION newsletter represent the views of the [email protected] [email protected] authors and do not necessarily carry the Benjamin M. Stern, Proskauer Rose LLP Martin O’Donnell, Cesari and McKenna LLP endorsement of the BPLA. Stephen Y. Chow, Burns & Levinson LLP Douglas C. Doskocil, Goodwin Procter LLP BIOTECHNOLOGY MEDICAL DEVICES PRACTICE [email protected] [email protected] Editor-In-Chief: Neil Ferraro, Esq. Konstantin M Linnik, PhD, Pfizer Inc. Eric P. Raciti Esq., Finnegan, Henderson, Contributors: Leslie Meyer-Leon, Sunstein Kann Murphy & Farabow, Garrett & Dunner Timbers Jim Flaherty, Foley Hoag Lisa Adams, Esq. CHEMICAL PATENT PRACTICE NEW LAWYERS & L AW STUDENTS Bruce D. Popp, Ph.D. [email protected] [email protected] Joshua M. Dalton, Esq. Peter Lando, Lando & Anastasi, LLP Rory Pheiffer, Nutter McClennen & Fish Shuan Lue, Esq. James T. Olesen, Ph.D., Finnegan, Henderson, Aaron E. Connor MJ Edwards, Esq. Farabow, Garrett & Dunner PATENT LAW Deric X. Geng, Ph.D. [email protected] COMPUTER LAW Emily R. Whelan, Esq. [email protected] Doris Fournier, Mintz, Levin, Cohn, Ferris, James B. Lampert, Esq. John J. Stickevers, Sunstein Kann Murphy & Glovsky and Popeo, PC Timothy D. Johnston, Esq. Timbers Justin J. Daniels, Skadden, Arps, Slate, Rory P. Pheiffer, Esq.
Christopher Everett, Foley Lardner Meagher & Flom LLP PATENT OFFICE PRACTICE CONTESTED MATTERS [email protected] [email protected] Emily Whelan, WilmerHale LLP Susan G.L. Glovsky, Hamilton, Brook, Smith & Reynolds, P.C. Debra Milasincic, Lahive & Cockfield Michael R. McGurk, Finnegan, Henderson, PRO BONO Farabow, Garrett & Dunner [email protected] Donna M. Meuth, Eiasi Inc. Mary Rose Scozzafava, Ph.D., Wilmer Cutler Pickering Hale and Dorr LLP COPYRIGHT LAW Publisher: Andrea Dwyer, [email protected] Robert J. Sayre, Modern Times Legal Staff Advantage Anne Marie Longobucco, Demeo & Associates, TRADE SECRETS P.C. [email protected] Amy L. Brosius, Fish & Richardson P.C. Vickie L. Henry, Foley Hoag LLP Claire Laporte, Foley Hoag LLP ETHICS AND GRIEVANCES [email protected] TRADEMARKS & U NFAIR COMPETITION Timothy A. French, Fish & Richardson P.C. [email protected] Letters to the editor, articles and job Steven J. Henry, Wolf, Greenfield & Sacks, P.C. John L. Welch, Lando & Anastasi, LLP Mark D. Robins, Nixon Peabody LLP postings are encouraged. E-Mail all correspondence to: Interested in playing a more active role in a committee? [email protected] Please contact the committee chair if you are interested in joining, switching, or ©2010 BPLA—All rights reserved. taking a more active participatory role in a committee.
Boston Patent Law Association One Batterymarch Park, Suite 101 Quincy, MA 02169-7454
©2010 Boston Patent Law Association. All rights reserved. Boston Patent Law Association One Batterymarch Park, Suite 101 Quincy, MA 02169-7454
BOSTON PATENT LAW ASSOCIATION NEWSLETTER
Summer 2010 BPLA NEWSLETTER Volume 41, Issue 3 BOARD OF GOVERNORS
PRESIDENT PRESIDENT-ELECT Lisa Adams , Nutter McClennen & Fish J. Grant Houston , Houston Eliseeva ph. (617) 439-2550, Email: [email protected] ph. (781) 863-9991, Email: [email protected]
VICE PRESIDENT TREASURER Neil P. Ferraro , Wolf, Greenfield & Sacks Joseph M. Maraia , Pierce Atwood ph. (617) 646-8000, Email: [email protected] ph. (875) 277-6900, Email: [email protected]
SECRETARY IMMEDIATE PAST-PRESIDENT AND BOARD MEMBER Donna M. Meuth , Eisai Inc. Mark B. Solomon , Hamilton, Brook, Smith, & Reynolds ph. (978) 837-4862, Email: [email protected] ph. (978) 341-0036, Email: [email protected]
BOARD MEMBER BOARD MEMBER Gregory J. Sieczkiewicz , Flagship Ventures Erik Paul Belt , McCarter & English ph. (617) 218-1605, ph. (617) 449-6506, Email: [email protected] Email: [email protected]
BOARD MEMBER Monica Grewal , Wilmer Cutler Pickering, Hale & Dorr ph. (617) 526-6223, [email protected]