DOCSLIB.ORG

Journal of Legal Technology Risk Management

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Journal of Legal Technology Risk Management THIRD CIRCUIT USES PROCEDURAL GROUNDS i JOURNAL OF LEGAL TECHNOLOGY RISK MANAGEMENT 1. THIRD CIRCUIT USES PROCEDURAL GROUNDS TO REJECT FCC’S WEAKENING OF MEDIA CROSS-OWNERSHIP RULES FOR A SECOND TIME IN PROMETHEUS RADIO PROJECT V. FCC 2. WHEN PARALLEL TRACKS CROSS: APPLICATION OF THE NEW INSIDER TRADING REGULATIONS UNDER DODD-FRANK DERAILS 3. ELECTRONIC DISCOVERY AND THE CONSTITUTION: INACCESSIBLE JUSTICE 4. RENEWING THE BAYH-DOLE ACT AS A DEFAULT RULE IN THE WAKE OF STANFORD V. ROCHE Volume 6 | Summer 2012 | Issue 1 (c) 2006-2012 Journal of Legal Technology Risk Management. All Rights Reserved. ISSN 1932-5584 (Print) | ISSN 1932-5592 (Online) | ISSN 1932-5606 (CD-ROM) www.ltrm.org II J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 Editor-in-Chief Daniel B. Garrie, Esq. (USA) Guest Editor Kelly Merkel, Esq. (USA) Publications Editor Candice M. Lang, Esq. (USA) Executive Editors Matthew Armstrong, Esq. (USA) Dr. Sylvia Mercado Kierkegaard (Denmark) Scientific Council Stephanie A. “Tess” Blair, Esq. (USA) Hon. Amir Ali Majid (UK) Hon. Maureen Duffy-Lewis (USA) Micah Lemonik (USA) Andres Guadamuz (UK ) Carlos Rohrmann, Esq. (Brazil) Camille Andrews, Esq. (USA) Gary T. Marx (USA) William Burdett (USA) Eric A. Capriloi (France) Donald P. Harris (USA) Hon. Justice Ivor Archie (Trinidad & Tobago) ii Members Janet Coppins (USA) Eleni Kosta (Belgium) Dr. Paolo Balboni (Italy) Salvatore Scibetta, Esq. (USA) Ygal Saadoun (France/Egypt) Steve Williams, Esq. (USA) Rebecca Wong (United Kingdom) iii IV J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 FOREWORD In this edition, we explore seemingly disparate realms of regulation and legislation and discover shared nuances in growing concern for current legal framework in all facets of legal practice and scholarship. This edition prompts timely discussion of constitutional tenets and how malleable our Constitution may be in view of lightning-quick technological advances. This edition also pauses to consider different concepts of ownership and how linguistic alterations continually affect such concepts. In preparing this edition of the Journal of Legal Technology Risk Management, I have been humbled by the thoughtful scholarship and writing that has consistently appeared in my in-box. At the Journal, we always welcome a broad spectrum of authors and do not discriminate on topic choice. As a result, we have been rewarded with premium submissions from students, professors, practicing lawyers, business people and others who simply have an interest in how law and technology impact our daily lives. I thank the Authors of the articles appearing in this edition - Michael Dingerdissen, Gregory Melus, Parker iv Tresemer and Jennifer M. Smith – for elevating the discussion. I also thank every author and scholar who contributed submissions to our publication. We hope you continue your introspection and we hope you continue to share your insights with us moving forward. As Fred Shero, the great Flyers coach, said, “Win together today and we walk together forever.” I thank the entire team who put so much time into creating this edition of the Journal: our Scientific Council and Editorial Board members who graciously gave of their time; Daniel Garrie, our Editor-in-Chief and Candice Lang, who pulled everything together seamlessly. We have created something memorable. Kelly Merkel 26 June 2012 v 2012] RENEWING BAYH-DOLE 173 RENEWING THE BAYH-DOLE ACT AS A DEFAULT RULE IN THE WAKE OF STANFORD V. ROCHE Parker Tresemer I. INTRODUCTION For thirty years the Bayh-Dole Act has stimulated American innovation by guaranteeing ownership of federally funded technologies to the small businesses and universities best suited to develop them. The Supreme Court’s holding in Stanford v. Roche, however, undermines the Bayh- Dole Act’s framework and threatens to stall its continued beneficial application. In the wake of World War II and the resulting spike in American production, United States policymakers looked to universities and domestic industry to maintain the country’s status as the international leader in innovation and production.1 However, by the 1970s, the United States had begun to fall behind international competition, largely because of the federal government’s policy of retaining the patents on all federally funded technologies.2 Before the 1980s, the government was unwilling to cede patent 1 Ashley J. Stevens, The Enactment of Bayh-Dole, 29 J. TECH. TRANSFER 93, 93 (2004); Steve L. Bertha, Intellectual Property Activities in U.S. Research Universities, 36 IDEA 513, 514 (1996). 2 Stevens, supra note 1, at 93. 174 J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 rights on federally funded inventions to private industry, yet it lacked the resources to successfully commercialize those inventions.3 Without exclusive patent rights to government-funded technologies, private companies were simply unwilling to make the substantial investment required to commercialize early-stage technologies.4 While some government lawmakers believed only the federal government could properly manage federally funded technologies,5 Senators Bob Dole (R., KS) and Birch Bayh (D., IN) believed that by retaining sole rights to federally funded inventions, the government was destroying any incentive for researchers and private industry to commercialize such technologies.6 Instead, Senators Bayh and Dole sought to spark development of commercial products by putting both their faith and their patents in the hands of private industry.7 3 95 CONG. REC. S15,034 (daily ed. Sept. 13, 1978) (statement of Sen. Birch Bayh). 4 95 CONG. REC. S15,030 (daily ed. Sept. 13, 1978) (statement of Sen. Robert Dole); Joseph P. Allen, A Long, Hard Journey: From Bayh-Dole to the Federal Technology Transfer Act, TOMORROW’S TECH. TRANSFER, Winter 2009, at 21, 21; Bertha, supra note 1, at 525-26; Kesan, supra note 4, at 2175. 5 Stevens, supra note 1, at 94. 6 See generally 95 CONG. REC. S15,034 (daily ed. Sept. 13, 1978) (statement of Sen. Robert Dole). 7 See generally id.; 96 CONG. REC. S4,124 (daily ed. Apr. 23, 1980) (statement of Sen. Robert Dole); Stevens, supra note 1, at 94. 174 2012] RENEWING BAYH-DOLE 175 In 1980, Congress enacted the Bayh-Dole Act to do just that.8 Simply put, the Bayh-Dole Act was intended to create a three-tiered, hierarchical system distributing intellectual property rights in federally funded inventions.9 First, the Act was intended to grant federally funded small businesses and nonprofit organizations (“federal contractors” or “contractors”) exclusive patent rights to inventions developed by their employees using federal funds.10 In return for granting contractors these exclusive rights, federally funded nonprofits were required to share royalties with their employee-inventors.11 Second, Bayh-Dole was to give the federal government the opportunity to acquire full title to federally funded inventions only if the federally funded contractor first elected not to 8 See generally 35 U.S.C. §§ 200-211 (1980). 9 See 35 U.S.C. § 202 (1980) (describing contractor’s property rights and employee-inventors’ financial rights to federally funded inventions); 35 U.S.C. § 203 (1980) (describing the government’s “march-in rights” to contractor owned inventions); Fenn v. Yale Univ., 393 F. Supp. 2d 133, 137 (2004). 10 35 U.S.C. § 202(a) (1980) (“Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to ay subject invention . .”); 35 U.S.C. § 201(e) (1980) (“The term 'subject invention' means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.”). 11 35 U.S.C. § 202(c)(7)(C) (1980) (“[A] requirement that the contractor share royalties with the inventor.”). 175 176 J. OF LEGAL TECH. AND RISK MGMT [Vol. 6 retain title.12 Third, the Act’s drafters intended for employee-inventors to receive title to federally funded inventions, including their own inventions, only if both their employer-contractor and the federal government elected not to retain title to the inventions.13 Although granting inventions to federally funded employers instead of the actual employee- inventors may offend our basic understanding of property and patent rights,14 the Bayh-Dole Act’s legislative history makes it very clear that this is precisely what Congress intended.15 Congress intended to unequivocally subordinate inventors’ rights to both the contractor’s and the federal government’s rights.16 Congress did so, however, for a particular purpose.17 Congress enacted Bayh- 12 35 U.S.C. § 202(c)(2) & (3) (1980). 13 35 U.S.C. § 202(d) (1980) (“If a contractor does not elect to retain title to a subject invention in cases subject to this section, the federal agency may consider and after consultation with the contractor requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder.”). 14 This was, in fact, the principal reason why the Supreme Court in Stanford v. Roche held that the Bayh-Dole Act did not automatically divest inventors of the rights to their federally funded inventions. See Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 131 S.Ct. 2188, 2198 (2011) discussed infra at Part V. 15 See infra Part III. 16 See infra Part VI.A. 17 Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., 131 S.Ct. 2188, 2201 (2011) (Breyer, J., 176 2012] RENEWING BAYH-DOLE 177 Dole to incentivize private industry to commercialize
Load more

Recommended publications
  • The Bayh-Dole Act at 25
    The Bayh-Dole Act at 25 A publication of BayhDole25, Inc 242 West 30th, Suite 801 New York, New York 10001 phone: (646) 827-2196 web: www.bayhdole25.org e-mail: [email protected] April 17, 2006 © 2006 Bayhdole25, Inc. Table of Contents INTRODUCTION....................................................................................................................................... 1 Overview .............................................................................................................................................. 2 Diagram 1: Commercialization of Federally-Funded Research Before the Bayh Dole Act.................. 3 HISTORICAL ORIGINS OF BAYH-DOLE................................................................................................4 Property rights framework .................................................................................................................... 4 Public financing of higher education .................................................................................................... 4 Universities engage in research........................................................................................................... 6 World War II: role of technological innovation...................................................................................... 7 Science: the endless frontier................................................................................................................ 8 Table 1: Federal Support for Academic R & D, 1960-2000 (millions of 1996 dollars)
    [Show full text]
  • MPEP Identifying and Evaluating Each Claim Limitation
    Chapter 2100 Patentability 2101 [Reserved] 2121.03 Plant Genetics Ð What Constitutes -2102 Enabling Prior Art 2103 Patent Examination Process 2121.04 Apparatus and Articles Ð What 2104 Patentable Subject Matter Constitutes Enabling Prior Art 2105 Patentable Subject Matter Ð Living 2122 Discussion of Utility in the Prior Art Subject Matter 2123 Rejection Over Prior Art's Broad 2106 Patent Subject Matter Eligibility Disclosure Instead of Preferred 2106.01 [Reserved] Embodiments 2107 Guidelines for Examination of 2124 Exception to the Rule That the Critical Applications for Compliance with the Reference Date Must Precede the Filing Utility Requirement Date 2107.01 General Principles Governing Utility 2124.01 Tax Strategies Deemed Within the Rejections Prior Art 2107.02 Procedural Considerations Related to 2125 Drawings as Prior Art Rejections for Lack of Utility 2126 Availability of a Document as a 2107.03 Special Considerations for Asserted ªPatentº for Purposes of Rejection Therapeutic or Pharmacological Under 35 U.S.C. 102(a) or Pre-AIA 35 Utilities U.S.C. 102(a), (b), and (d) 2108 [Reserved] 2126.01 Date of Availability of a Patent as a -2110 Reference 2111 Claim Interpretation; Broadest 2126.02 Scope of Reference's Disclosure Reasonable Interpretation Which Can Be Used to Reject Claims 2111.01 Plain Meaning When the Reference Is a ªPatentº but 2111.02 Effect of Preamble Not a ªPublicationº 2111.03 Transitional Phrases 2127 Domestic and Foreign Patent 2111.04 ªAdapted to,º ªAdapted for,º Applications as Prior Art ªWherein,º and ªWherebyº Clauses 2128 ªPrinted Publicationsº as Prior Art 2111.05 Functional and Nonfunctional 2128.01 Level of Public Accessibility Descriptive Material Required 2112 Requirements of Rejection Based on 2128.02 Date Publication Is Available as a Inherency; Burden of Proof Reference 2112.01 Composition, Product, and Apparatus 2129 Admissions as Prior Art Claims 2130 [Reserved] 2112.02 Process Claims 2131 Anticipation Ð Application of 35 U.S.C.
    [Show full text]
  • Patents and the Public Domain: Improving Patent Quality Upon Reexamination
    Patents and the Public Domain: Improving Patent Quality Upon Reexamination Prepared by Policy Intern Raeanne Young [email protected] May 2008 ELECTRONIC FRONTIER FOUNDATION eff.org Table of Contents EXECUTIVE SUMMARY ........................................................................................................................3 PATENTS AND THE PUBLIC DOMAIN .....................................................................................................4 The Problem With Patent Quality ..................................................................................................4 Policy Rationale: Encouraging Innovation .......................................................................................4 PATENT REEXAMINATION ...................................................................................................................6 Ex parte and Inter partes .............................................................................................................6 OVERALL REEXAMINATION TRENDS ......................................................................................................8 Ex Parte Reexamination Filing Data: July , 98 - December 3, 2007 ...............................................8 Inter Partes Reexamination Filing Data: November 29, 999 - December 3, 2007 .............................0 Comparison of Ex Parte and Inter Partes ......................................................................................0 PROMOTING FAIRNESS IN THE PATENT SYSTEM THROUGH REEXAMINATION .............................................2
    [Show full text]
  • Patentable Software: Analyzing Alice Under a Law-And-Economics Framework and Proposing a New Approach to Software Claims
    THIS VERSION MAY CONTAIN INACCURATE OR INCOMPLETE PAGE NUMBERS. PLEASE CONSULT THE PRINT OR ONLINE DATABASE VERSIONS FOR THE PROPER CITATION INFORMATION. NOTE PATENTABLE SOFTWARE: ANALYZING ALICE UNDER A LAW-AND-ECONOMICS FRAMEWORK AND PROPOSING A NEW APPROACH TO SOFTWARE CLAIMS Christian R. Ruiz I. INTRODUCTION Software is a pervasive component in modern inventions, and companies are interested in using patents to protect software. By the early 1990s, the Court of Appeals for the Federal Circuit (the “Federal Circuit”) established that software was patentable.1 This article analyzes the discernable contours of what falls within patentable subject matter regarding software technology in view of Alice v. CLS Bank2 and its precedent. This note also applies policy arguments and a cost-benefit analysis to argue what patent doctrine should dictate regarding the patentability of software. Today, after Alice, what may constitute a patentable software claim is not en- tirely clear. Alice made it harder to patent software technology.3 The majority opinion in Alice indicates that attaching an abstract method to a computer, which is a physical machine, is not enough to render a claim patentable.4 Further, the Supreme Court (the “Court”) subjected patent claims containing software ele- ments to a higher scrutiny than the scrutiny used for patent claims that do not 1 See Diamond v. Diehr, 450 U.S. 175, 192-93 (1981) (affirming the Federal Circuit de- cision that a claim for technology including computer software is patent eligible); In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (finding that a memory containing a data structure should be considered patentable subject matter); State St.
    [Show full text]
  • NTP V. RIM: the Diverging Law Between System and Method Claim Infringement
    The University of New Hampshire Law Review Volume 5 Number 2 Pierce Law Review Article 7 January 2007 NTP v. RIM: The Diverging Law Between System and Method Claim Infringement Stephen P. Cole Franklin Pierce Law Center, Concord, NH Follow this and additional works at: https://scholars.unh.edu/unh_lr Part of the Intellectual Property Law Commons Repository Citation Stephen P. Cole, NTP v. RIM: The Diverging Law Between System and Method Claim Infringement, 5 Pierce L. Rev. 347 (2007), available at http://scholars.unh.edu/unh_lr/vol5/iss2/7 This Notes is brought to you for free and open access by the University of New Hampshire – Franklin Pierce School of Law at University of New Hampshire Scholars' Repository. It has been accepted for inclusion in The University of New Hampshire Law Review by an authorized editor of University of New Hampshire Scholars' Repository. For more information, please contact [email protected]. NTP v. RIM: The Diverging Law Between System and Method Claim Infringement STEPHEN P. COLE* I. INTRODUCTION Almost thirty years after the landmark decision of Decca Ltd. v. United States,1 the Federal Circuit had an opportunity to reevaluate the extraterri- torial limits of U.S. patent law in NTP, Inc. v. Research in Motion, Ltd.2 After withdrawing its initial opinion (“NTP I”) and issuing a second opin- ion (“NTP II”), the court held that a system having a component located outside U.S. jurisdiction could be subject to U.S. patent law.3 The court held as a matter of law, however, that a process in which a step is per- formed outside U.S.
    [Show full text]
  • The “Article of Manufacture” Today
    Harvard Journal of Law & Technology Volume 31, Number 2 Spring 2018 THE “ARTICLE OF MANUFACTURE” TODAY Sarah Burstein* TABLE OF CONTENTS I. INTRODUCTION .............................................................................. 782 II. BACKGROUND .............................................................................. 785 A. Design Patentable Subject Matter ............................................ 785 B. Design Patent Claiming & Infringement ................................. 786 C. Remedies for Design Patent Infringement ............................... 788 III. WHAT IS THE “ARTICLE OF MANUFACTURE” IN § 289?.............. 789 A. The Apple/Nordock Rule .......................................................... 791 B. The Supreme Court Weighs In ................................................. 791 IV. WHY COURTS SHOULD NOT ADOPT THE GOVERNMENT’S APPROACH .................................................................................... 793 A. The Test .................................................................................... 794 1. The Underlying Premise ........................................................ 795 2. The Factors ............................................................................ 797 B. The Nature of the Inquiry ......................................................... 802 1. A Case-by-Case Inquiry? ...................................................... 802 2. Is it a Question of Fact or Law? ............................................ 807 C. The Burden of Proof................................................................
    [Show full text]
  • Senator Birch Bayh a Lasting Legacy on the Constitution and Beyond
    Celebrating the Impact of Senator Birch Bayh A Lasting Legacy on the Constitution and Beyond Wednesday, October 16, 2019 3:30 p.m. Check-in 4 – 6:30 p.m. Program Bateman Room | Second Floor Fordham Law School This program is presented by The Feerick Center for Social Justice at Fordham Law School; The American Bar Association; the American Constitution Society for Law and Policy; Federalist Society for Law and Public Policy Studies; Fordham Advocates for Voter Rights; Fordham Intellectual Property, Media & Law Journal; Fordham Law Review; the Fordham Urban Law Journal; Fordham Law Women; the Stein Center for Law and Ethics; and the Student Bar Association. Agenda About the program This program will explore the legacy of Indiana Senator Birch 3:30 – 4 p.m. Bayh, the only person other than James Madison to draft Check-in more than one constitutional amendment. Four decades after he left the Senate, his achievements continue to reap benefits 4 – 4:50 p.m. and resonate in the national political discourse. Speakers Panel 1: Women’s Rights will focus on an array of Bayh’s accomplishments, including MODERATOR: Linda Klein, Past the 25th Amendment, the 26th Amendment, Title IX, the President, American Bar Assiciation proposed Equal Rights Amendment, the Bayh-Dole Act, PANELISTS: Stephanie Gaitley, Head and Senator Bayh’s nearly successful campaign to abolish the Women’s Basketball Coach, Fordham University; Billie Jean King, Tennis Electoral College. Fordham Law has a special history with Legend and Feminist Icon; Kelly Senator Bayh, which began when former dean and current Krauskopf, Assistant General Manager, professor John D.
    [Show full text]
  • Kennedy Tops List of Democratic Contenders
    The Harris Survey For Release: Thursday, July 3, 1975 - KENNEDY TOPS LIST OF DEMOCRATIC CONTENDERS BY LOUIS HARRIS Sen. Kennedy holds a wide lead over the 23 other potential Democratic nominees for the Presidential election. 1 A 31 percent plurality votes for Kennedy as first choice, and he is 16 percentage points ahead of his greatest competitor, Alabama Gov. Wallace. If Kennedy decides not to run, Wallace would move into first place with 18 percent, followed by Sen. Humphrey at 12 percent, Senators Hackson and Muskie at 10 percent each, and Sen. McGovern at 9 percent. Of the Democratic top runners, the only new faces to show any signs of rising strength are Ohio Sen,. Glenn and California Gov. Brown. But most of the possible Democratic candidates with any standing are old faces, which is ironic because more than seven in 10 voters have said they would like to vote for new and different politicians. The problem of most of the possible nominees is that they are relatively unknown. Sen. Bentsen, Rep. Udall, Wallace, Jackson, ex-Gov. Carter, ex-Gov. Sanford and ex-Sen. Fred Harris are still unknown to 49 percent of all likely Democratic and independent voters, and the collective vote for all of these hopefuls is no more than 26 percent. From June 4 to 10, the Harris Survey asked a cross section of 1,028 likely Democratic and independent voters: "Here is a list of people who have been mentioned as possible .nominees of the Democratic Party for President in 1976. (HAm RESPONDENT CARD) Now which one on that list would be your first choice for the nomination for President in 1976 if you had to choose right now?" With Kennedy In With Kennedy Out X X Sen.
    [Show full text]
  • Bayh-Dole of United States for Purposes of This Chapter by Execu- Act
    § 187 TITLE 35—PATENTS Page 88 tion is amended by striking ‘‘of this title’’ each CHAPTER 18—PATENT RIGHTS IN INVEN- place that term appears. See 2011 Amendment TIONS MADE WITH FEDERAL ASSISTANCE note below. Sec. HISTORICAL AND REVISION NOTES 200. Policy and objective. Based on Title 35, U.S.C., 1946 ed., § 156 (Feb. 1, 1952, 201. Definitions. ch. 4, § 6, 66 Stat. 5, 6). 202. Disposition of rights. Language is changed. 203. March-in rights. 204. Preference for United States industry. AMENDMENTS 205. Confidentiality. 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after 206. Uniform clauses and regulations. ‘‘181’’ and after ‘‘184’’. 207. Domestic and foreign protection of federally 1988—Pub. L. 100–418, which directed the insertion of owned inventions. ‘‘willfully’’ after second reference to ‘‘whoever’’, was 208. Regulations governing Federal licensing. executed by making the insertion after ‘‘or whoever’’, 209. Licensing federally owned inventions. as the probable intent of Congress. 210. Precedence of chapter. 211. Relationship to antitrust laws. EFFECTIVE DATE OF 2011 AMENDMENT 212. Disposition of rights in educational awards. Amendment by Pub. L. 112–29 effective upon the expi- AMENDMENTS ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after 2000—Pub. L. 106–404, § 4(b), Nov. 1, 2000, 114 Stat. 1744, that effective date, see section 20(l) of Pub. L. 112–29, substituted ‘‘Licensing federally owned inventions’’ for set out as a note under section 2 of this title. ‘‘Restrictions on licensing of federally owned inven- tions’’ in item 209.
    [Show full text]
  • Bayh-Dole-Sign-On-Letter | AUTM
    712 H Street NE Suite 1611 Washington DC 20002 +1.202.960.1800 April 5, 2021 Secretary Gina Raimondo U.S. Department of Commerce 1401 Constitution Avenue NW Washington, DC 20230 James K. Olthoff Acting Under Secretary of Commerce for Standards and Technology National Institute of Standards and Technology 100 Bureau Drive Gaithersburg, MD 20899 Eric S. Lander Director, Office of Science and Technology Policy The White House 1600 Pennsylvania Avenue NW Washington, DC 20006 Dear Secretary Raimondo, Dr. Olthoff, and Dr. Lander, In 1980, lawmakers passed the groundbreaking Bayh-Dole Act and ignited four-plus decades of American innovation. The bipartisan law enabled universities and non-profit institutions to secure patent rights on government-funded breakthroughs. Before the Act, there was no simple path from academic laboratory to consumer. By encouraging technology transfer from universities to the private sector, this seemingly simple reform laid the groundwork for extraordinary economic growth. As past Presidents/Chairs of AUTM, the leading organization of technology-transfer professionals, we strongly support maintaining and improving the Bayh-Dole Act. To that end, AUTM supports the current proposal from the National Institute of Standards and Technology (NIST) to clarify the original intent of the law. Since 1996, Bayh-Dole has led to the creation of more than 14,000 start-ups1 in fields ranging from agriculture to software to biotech. It dramatically accelerated biopharmaceutical innovation, contributing to the development of nearly 300 new drugs and vaccines.2 Products like Honeycrisp apples34 and high-definition televisions56 to services like Google’s search engine7 include the Bayh-Dole Act in their origin stories.8 Beyond inventions like these, between 1996 and 2017 Bayh-Dole contributed up to $865 billion to U.S.
    [Show full text]
  • According to the Patent Office, the Machine-Or-Transformation Test Is Alive and Well
    According to the Patent Office, the machine-or-transformation test is alive and well By Marc S. Kaufman Nixon Peabody attorneys will be continuously monitoring the state of the law and patent practice in view of Bilski v. Kappos and will issue periodic Alerts as new information comes available. This Alert is the second in the series following Monday’s ruling. In wake of the recent Supreme Court ruling in Bilski v. Kappos (95 U.S.P.Q.2d 1001; 2010 U.S. LEXIS 5521) the United States Patent and Trademark Office (USPTO) has issued a Memo to Examiners indicating that the “machine-or-transformation test” should continue to be used to evaluate whether a patent claim is directed to patent eligible subject matter under 35 U.S.C. Section 101. The USPTO is relying on the fact that the majority Opinion in the Bilski case, while stating the machine-or- transformation test is not the sole test, called the machine-or-transformation test a “useful and important clue” in ascertaining whether a claim is patent eligible. The Memo sets up a rebuttable presumption of patent eligibility based on the test as set forth below: Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101. If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea.
    [Show full text]
  • Presidential Succession and Impeachment: Historical Precedents, from Indiana and Beyond
    REMARKS: PRESIDENTIAL SUCCESSION AND IMPEACHMENT: HISTORICAL PRECEDENTS, FROM INDIANA AND BEYOND JOHN D. FEERICK* I thank you for the opportunity to address you today on presidential succession and the impeachment provisions of the Constitution. Two heroes in my life as a lawyer are from this state. The first is former U.S. Senator Birch Bayh, who I first met in January 1964 when the American Bar Association assembled twelve lawyers and their guests to develop a position with respect to the subjects of presidential inability and vice-presidential vacancy. Bayh became the undisputed leader of the movement for change as a way of honoring a fallen President, John F. Kennedy, whose assassination two months before the ABA conference focused the nation on the gaps in the presidential succession system. Bayh also inspired me in the importance of a lawyer rendering public service. It is inspiring for me to give these remarks below the Speaker’s chair that he occupied. The second hero is Dean James White, a longtime professor at this law school, who served for thirty years as a consultant to the ABA in the areas of admission to the bar and legal education. He helped me transform from a practicing lawyer to an academic lawyer as a dean and professor at Fordham Law School. Today’s program on Indiana’s Vice Presidents of the United States is also part of my Indiana history. In 1966, I was asked to write a book for high school students, a first of its kind, on the vice presidents, which I proceeded to do with the help of my wife, Emalie.1 I learned in the process of four of the six Vice Presidents from Indiana: Schuyler Colfax, Thomas Hendricks, Charles Fairbanks, and Thomas Marshall.
    [Show full text]