DOCSLIB.ORG

Evergreening" Metaphor in Intellectual Property Scholarship

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Evergreening University of Missouri School of Law Scholarship Repository Faculty Publications Faculty Scholarship 2019 The "Evergreening" Metaphor in Intellectual Property Scholarship Erika Lietzan University of Missouri School of Law, [email protected] Follow this and additional works at: https://scholarship.law.missouri.edu/facpubs Part of the Food and Drug Law Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 Akron Law Review 805 (2019). Available at: https://scholarship.law.missouri.edu/facpubs/984 This Article is brought to you for free and open access by the Faculty Scholarship at University of Missouri School of Law Scholarship Repository. It has been accepted for inclusion in Faculty Publications by an authorized administrator of University of Missouri School of Law Scholarship Repository. For more information, please contact [email protected]. DATE DOWNLOADED: Wed Jan 20 13:42:00 2021 SOURCE: Content Downloaded from HeinOnline Citations: Bluebook 21st ed. Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 AKRON L. REV. 805 (2019). ALWD 6th ed. Lietzan, E. ., The "evergreening" metaphor in intellectual property scholarship, 53(4) Akron L. Rev. 805 (2019). APA 7th ed. Lietzan, E. (2019). The "evergreening" metaphor in intellectual property scholarship. Akron Law Review, 53(4), 805-872. Chicago 7th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship," Akron Law Review 53, no. 4 (2019): 805-872 McGill Guide 9th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship" (2019) 53:4 Akron L Rev 805. AGLC 4th ed. Erika Lietzan, 'The "Evergreening" Metaphor in Intellectual Property Scholarship' (2019) 53(4) Akron Law Review 805. MLA 8th ed. Lietzan, Erika. "The "Evergreening" Metaphor in Intellectual Property Scholarship." Akron Law Review, vol. 53, no. 4, 2019, p. 805-872. HeinOnline. OSCOLA 4th ed. Erika Lietzan, 'The "Evergreening" Metaphor in Intellectual Property Scholarship' (2019) 53 Akron L Rev 805 -- Your use of this HeinOnline PDF indicates your acceptance of HeinOnline's Terms and Conditions of the license agreement available at https://heinonline.org/HOL/License -- The search text of this PDF is generated from uncorrected OCR text. -- To obtain permission to use this article beyond the scope of your license, please use: Copyright Information THE "EVERGREENING" METAPHOR IN INTELLECTUAL PROPERTY SCHOLARSHIP Erika Lietzan * Abstract... ................................... 806 I. Introduction ............................ 807 II. The Context for "Evergreening" Allegations ............ 811 A. Approval of Medicines ........... ........ 812 B. Intellectual Property Considerations .... .... 816 1. Statutory Exclusivity .......... ...... 816 2. Patent-Based Statutory Exclusivity ............... 817 3. A Generic Company's Options.... ...... 820 4. Other Statutory Exclusivity ........ ....... 822 C. Marketing, Prescribing, and Dispensing of Medicines ..................... ..... 822 III. Use of "Evergreening" in the Literature .... ..... 826 A. Definitions Offered .............. ...... 828 1. Focus on Actions ............... .... 830 2. Focus on "Extension" of Something ............. 833 3. Focus on the Market ................. 837 B. Examples Offered ..........................840 1. New Products ................ ...... 841 2. Other Examples ......... ............. 845 C. Empirical Studies Offered......... ...... 848 1. Counting Patents and Exclusivities...............848 2. Patent Litigation ............... ..... 851 3. Healthcare Expenditures ......... ..... 853 IV. The Meaning of the Metaphor .......... ..... 853 * Associate Professor of Law, University of Missouri (Columbia). I am grateful to Kristina Acri n6e Lybecker, Krista Carver, (the Hon.) Ryan Holte, Camilla Hrdy, David Korn, Glynn Lunney, Jr., Michael Madison, Liam O'Mellin, Zahr Said, Joshua Sarnoff, and Hans Sauer for comments on drafts of this article, and to Kristina Acri n6e Lybecker, David Lund, and Mark Schultz for the inspiration to write the article. I am also grateful to Henry Adams (University of Missouri School of Law, Class of 2020), Mike Figenshau (Class of 2021), Evan Weidner (Class of 2021), and as always Cynthia Shearrer (Associate Law Librarian), for research assistance. 805 806 AKRON LAW REVIEW [53:805 A. No Extension of Patent or Statutory Exclusivity 855 B. No Extension of "Exclusivity" in the Descriptive Sense .............................. 858 C. An "Extension" Therefore ... of What?.............865 V. Conclusion: A Prelude to Policymaking .... ..... 867 ABSTRACT This article is a plea for changes in the scholarly dialogue about "evergreening" by drug companies. Allegations that drug companies engage in "evergreening" are pervasive in legal scholarship, economic scholarship, medical and health policy scholarship, and policy writing, and they have prompted significantpolicymaking proposals. This Article was motivated by concern that the metaphor has not been fully explained and that policymaking in response might therefore be premature. It canvasses and assesses the scholarly literature-morethan 300 articles- discussing or mentioning "evergreening." It catalogues the definitions, the examples, and the empirical studies. Scholars use the term when describing certain actions taken by the innovative companies that develop and introduce new medicines to market. But they are inconsistent in their descriptions of the circumstances to which the term applies. And though most claim the innovator has "extended" something in these circumstances, they do not agree on the particulars. The literature is similarly in disarray about what has been "evergreened"-an invention, a product, a price, a patent, or something else entirely. All of this makes it hard to know from the literature what exactly scholars are writing about. After sorting through the definitions and examples-and considering the legal framework and practicallandscape in which drug innovators and their generic competitors operate-thisArticle offers an answer and, more importantly, identifies the implicit normative claim. In simple terms, the normative claim in the literature is something like this: "an innovator should not enjoy an exclusive market and supra- competitive pricing for innovations that stem in some fashion from a separate innovationfor which it already enjoyed a 20-year patent term. Or at least, a drug innovatorshould not." This Article does not defend, or reject, this normative claim. Instead, it makes a different claim: that policymaking should be based on descriptive scholarship that is careful and precise about the relevant law andfacts, normative work that is clear and candid about its claim and thorough in its reasoning, and empirical studies that document the actual problem the normative proposals and 2019] THE "EVERGREENING" METAPHOR 807 policymaking proposals are meant to address. Significant policymaking would be premature today, because we have not yet produced this body of work. Constant use of the "evergreening" metaphor may be obscuring this failure. The Article concludes with recommendations for scholars continuing to work on these topics, focusing on ways that we can provide quality work to assistpolicymakers considering the normative claim. I. INTRODUCTION Allegations that drug companies engage in "evergreening" pervade legal scholarship, economic scholarship, medical and health policy scholarship, and policy writing.' English language dictionaries tell us that the primary meaning of "evergreen" is literal; unlike a deciduous tree, an evergreen tree or shrub has green foliage all year round.2 An evergreen leaf lasts from one season to the next.3 Even when the term does not refer to non-deciduous plants, its primary meaning is literal; an evergreen landscape is always green.4 But the term also has a figurative meaning.s Something is "evergreen" if it is "always fresh" or "never failing" or "enduring."' In the literature relating to drug companies, the term "evergreening" is a metaphor. The writer invokes a concrete image familiar to the audience to convey an abstract concept relating to legal and factual circumstances in the real world.' Metaphors are common in legal writing and especially common in intellectual property writing.' They are powerful because they turn the complex and unfamiliar into something simple and familiar, and sometimes they are also powerful because they 1. See infra Part III. 2. Evergreen, MERRIAM-WEBSTER DICTIONARY, at 1, https://www.merniam- webster.com/dictionary/evergreen [https://perma.cc/Z2ST-7HEB]; see also Evergreen, OXFORD ENGLISH DICTIONARY [hereinafter OED], https://www.oed.com/view/Entry/ 65314?redirectedFrom=evergreen#eid [https://perma.cc/JF9T-NYDQ]; Evergreen, THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, https://ahdictionary.com/word/ search.html?q=evergreen [https://perma.cc/YP2T-VJDP]. 3. Evergreen, OED, supra note 2, at lb. 4. Id. at 2a. 5. Evergreen, MERRIAM-WEBSTER, supra note 2, at 2a (defining "figurative" as "expressing one thing in terms normally denoting another with which it may be regarded as analogous"). 6. Evergreen, OED, supra note 2, at 2b; Evergreen, MERRIAM-WEBSTER, supra note 2, at 2a ("retaining freshness or interest"), 2b ("universally and continually relevant"); Evergreen, AMERICAN HERITAGE, supra note 2, at 3 ("automatically renewed or repeatedly made valid").
Load more

Recommended publications
  • "Enlarged" Concept of Novelty: Initial Study
    December 2, 2004 DRAFT “ENLARGED ” CONCEPT OF NOVELTY : INITIAL STUDY CON CERNING NOVELTY AND THE PRIOR ART EF FECT OF CERTAIN APPL ICATIONS UNDER DRAFT ARTICLE 8(2) OF THE SPLT prepared by the International Bureau I. SUMMARY 1. The present initial study is submitted upon request of the Standing Committee on the Law of Patents (SCP) at its tenth session, held in Geneva from May 10 to 14, 2004, in order to provide a basis for discussion concerning a possible new novelty concept applicable to th e prior art effect of unpublished earlier applications under Article 8(2) of the draft Substantive Patent Law Treaty (SPLT). The study aims at providing broad background information and at facilitating further substantive discussion in the SCP, and thus addresses not only national and regional laws and practices regarding the prior art effect of earlier applications, but also the policy objectives underlying these different practices. 2. The divergences among national laws and practices in resp ect of the prior art effect of unpublished earlier applications seem to reflect different principles and objectives underlying the prevention of double patenting. Examining a number of national and regional laws and practices, it appears that those differ ent practices correspond mainly to one or more of the following three models: (i) Strict novelty: if a claimed invention is explicitly or inherently disclosed in an earlier application, the earlier application defeats the patentability of the claimed in vention; (ii) Broader novelty: even if the claimed invention is not fully disclosed (explicitly or inherently) in the earlier application, the earlier application defeats the patentability of the claimed invention if the differences between the two are minor (for example, a replacement with a well -known equivalent element); (iii) Novelty and inventive step (non-obviousness): the earlier application defeats the patentability of the claimed invention if the latter lacks either novelty or inventive step (non-obviousness) compared to the earlier application.
    [Show full text]
  • Public Health and Intellectual Property Management: the Challenges on Access to Medicines
    Public Health and Intellectual Property management: the challenges on access to medicines Dr. Inthira Yamabhai 1 | Public health, innovation and intellectual property Overview Intellectual property (IP) and implications on access to medicine – Trade Related Aspect of Intellectual Property Rights (TRIPS) – TRIPS+ through trade agreements Sources of information 2 | Different forms of IP Trademark: name under which product is marketed Patent: compound, crystalline forms, process, method of use, etc Protection of undisclosed data: clinical test data Copyright: package insert Design protection: packaging 3 | Patents There is nothing such as a worldwide patent! WIPO Patent Cooperation Treaty allows for worldwide filing, but applicant receives a bundle of national patents; same principle under European Patent Convention WTO TRIPS sets certain minimum standards: – Term: 20 years from filing data – Mandatory for all fields of technology – Criteria: novelty, inventive step, industrial applicability – Flexibilities: e.g. parallel importation and compulsory licensing 4 | One drug = one patent??? "…a key element of life cycle management strategies is to extent patent protection for as long as possible by filing secondary patents to keep generics off the market" (Burdon and Sloper 2003) Sofosbuvir: Expiry without patent term extension(s) • Broad compound patent (Markush) Market 2024 • WO2005003147A2 Authorization US: 2013/14 • Compound patent on prodrug • WO2008121634A2 2028 www.who.int/phi/impl ementation/ip_trade/ip • Crystalline forms _patent_landscapes/e
    [Show full text]
  • Patent Law As Public Law
    The Catholic University of America, Columbus School of Law CUA Law Scholarship Repository Scholarly Articles and Other Contributions Faculty Scholarship 2012 Patent Law as Public Law Megan M. La Belle The Catholic University of America, Columbus School of Law Follow this and additional works at: https://scholarship.law.edu/scholar Part of the Intellectual Property Law Commons, and the Litigation Commons Recommended Citation Megan M. La Belle, Patent Law as Public Law, 20 GEO. MASON. L. REV. 41 (2012). This Article is brought to you for free and open access by the Faculty Scholarship at CUA Law Scholarship Repository. It has been accepted for inclusion in Scholarly Articles and Other Contributions by an authorized administrator of CUA Law Scholarship Repository. For more information, please contact [email protected]. 2012] PATENT LAW AS PUBLIC LAW Megan M La Belle* INTRODUCTION Public law, or public impact, litigation takes many forms. The para- digm of public law litigation includes structural challenges to public institu- tions like segregated schools and overcrowded prisons,' yet it also encom- passes employment discrimination, securities fraud, antitrust, and environ- mental cases.2 In his seminal article on the subject, Professor Abram Chayes explains that public law adjudication usually concerns complaints about governmental conduct, and is characterized by complex party struc- tures and requests for ongoing remedial measures that have widespread effects on individuals not before the court.' Public law adjudication is fur- ther typified by active judges who decide substantive matters and are re- sponsible for the overall management of the suit.4 Patent litigation historically has been regarded as private law litiga- tion, meaning "disputes between private parties about private rights."5 It has been compared to property, contract, and tort litigation, all of which fall within the realm of private law adjudication.6 Were patent litigation to con- Assistant Professor, The Catholic University of America, Columbus School of Law.
    [Show full text]
  • Confusing Patent Eligibility
    CONFUSING PATENT ELIGIBILITY DAVID 0. TAYLOR* INTRODUCTION ................................................. 158 I. CODIFYING PATENT ELIGIBILITY ....................... 164 A. The FirstPatent Statute ........................... 164 B. The Patent Statute Between 1793 and 1952................... 166 C. The Modern Patent Statute ................ ..... 170 D. Lessons About Eligibility Law ................... 174 II. UNRAVELING PATENT ELIGIBILITY. ........ ............. 178 A. Mayo Collaborative Servs. v. Prometheus Labs............ 178 B. Alice Corp. v. CLS Bank Int'l .......... .......... 184 III. UNDERLYING CONFUSION ........................... 186 A. The Requirements of Patentability.................................. 186 B. Claim Breadth............................ 188 1. The Supreme Court's Underlying Concerns............ 189 2. Existing Statutory Requirements Address the Concerns with Claim Breadth .............. 191 3. The Supreme Court Wrongly Rejected Use of Existing Statutory Requirements to Address Claim Breadth ..................................... 197 4. Even if § 101 Was Needed to Exclude Patenting of Natural Laws and Phenomena, A Simple Statutory Interpretation Would Do So .................... 212 C. Claim Abstractness ........................... 221 1. Problems with the Supreme Court's Test................221 2. Existing Statutory Requirements Address Abstractness, Yet the Supreme Court Has Not Even Addressed Them.............................. 223 IV. LACK OF ADMINISTRABILITY ....................... ....... 227 A. Whether a
    [Show full text]
  • Update on Discovery of Patent Prosecution Communications by Jeffrey Thomas, Anne Brody and Pamela Lee
    Portfolio Media. Inc. | 111 West 19th Street, 5th Floor | New York, NY 10011 | www.law360.com Phone: +1 646 783 7100 | Fax: +1 646 783 7161 | [email protected] Update On Discovery Of Patent Prosecution Communications By Jeffrey Thomas, Anne Brody and Pamela Lee Law360, New York (June 20, 2017, 5:19 PM EDT) -- In general, communications between an attorney and his client relating to the filing and prosecution of a patent application are privileged. Last year, the Federal Circuit found that such communications between a patent agent and his client are also privileged.[1] But under the joint attorney-client privilege or the common interest doctrine, communications between attorneys and two or more clients may not be privileged in a later dispute between these clients. This article discusses the challenges that courts and companies continue to face in determining whether a party can access these patent prosecution communications in disputes: (1) between two joint owners; (2) between an employer-owner and an employee- inventor; and (3) with respect to a patent agent, in other Circuits and state courts. Jeffrey Thomas Do Joint Owners Share a Joint Attorney-Client Privilege During Patent Prosecution? When a dispute arises between two joint owners, one owner may seek to access the other owner’s communications with the patent attorney relating to the patent prosecution process. In that case, a court would look at a few factors to decide. One factor would be whether the patent prosecution process was handled by only one attorney (e.g., an in-house attorney), or by two attorneys separately representing the two owners.
    [Show full text]
  • Invention and Patent Policy (00015747-10).DOC
    Patent and Invention Policy The University of North Carolina at Chapel Hill Effective as of January 1, 2009 Updated April 22, 2013 Patent & Invention Policy I. Preamble The University of North Carolina at Chapel Hill is dedicated to education, research, and public service, including economic development in North Carolina. Inventions and discoveries sometimes arise in the course of research conducted by University faculty, students, and staff. The Board of Governors of the University of North Carolina has determined that patenting and commercialization of these inventions and discoveries is consistent with the mission of the University. Service to the public is an integral part of the University's mission. Where possible, the University should enable inventions and discoveries resulting from its research to reach the public in a manner that will maximize their impact on society and, at the same time, provide adequate recognition and reward to inventors. This policy has been established to ensure that those inventions and discoveries in which the University has an interest will be utilized in a manner consistent with the public good through patent protection or other mechanisms as appropriate. In addition, the University is obligated under the Bayh-Dole Act and other statutes to be responsible stewards of inventions resulting from research funded with public money. The provisions of this policy are subject to any applicable laws, regulations or specific provisions of the grants or contracts which govern the rights in inventions or discoveries made in connection with sponsored research. Under the terms of certain contracts and agreements between the University and various agencies of government, private and public corporations and private interests, the University is or may be required to assign or license all rights to inventions or discoveries that arise in the course of work conducted under such agreements to the contracting party.
    [Show full text]
  • Patent Law: a Handbook for Congress
    Patent Law: A Handbook for Congress September 16, 2020 Congressional Research Service https://crsreports.congress.gov R46525 SUMMARY R46525 Patent Law: A Handbook for Congress September 16, 2020 A patent gives its owner the exclusive right to make, use, import, sell, or offer for sale the invention covered by the patent. The patent system has long been viewed as important to Kevin T. Richards encouraging American innovation by providing an incentive for inventors to create. Without a Legislative Attorney patent system, the reasoning goes, there would be little incentive for invention because anyone could freely copy the inventor’s innovation. Congressional action in recent years has underscored the importance of the patent system, including a major revision to the patent laws in 2011 in the form of the Leahy-Smith America Invents Act. Congress has also demonstrated an interest in patents and pharmaceutical pricing; the types of inventions that may be patented (also referred to as “patentable subject matter”); and the potential impact of patents on a vaccine for COVID-19. As patent law continues to be an area of congressional interest, this report provides background and descriptions of several key patent law doctrines. The report first describes the various parts of a patent, including the specification (which describes the invention) and the claims (which set out the legal boundaries of the patent owner’s exclusive rights). Next, the report provides detail on the basic doctrines governing patentability, enforcement, and patent validity. For patentability, the report details the various requirements that must be met before a patent is allowed to issue.
    [Show full text]
  • An Overview of Changes to the Patent Law of the United States After the Patent Law Treaty, 26 J
    UIC Law Review Volume 26 Issue 3 Article 3 Spring 1993 An Overview of Changes to the Patent Law of the United States after the Patent Law Treaty, 26 J. Marshall L. Rev. 497 (1993) Richard C. Wilder Follow this and additional works at: https://repository.law.uic.edu/lawreview Part of the Comparative and Foreign Law Commons, Intellectual Property Law Commons, International Law Commons, International Trade Law Commons, and the Transnational Law Commons Recommended Citation Richard C. Wilder, An Overview of Changes to the Patent Law of the United States after the Patent Law Treaty, 26 J. Marshall L. Rev. 497 (1993) https://repository.law.uic.edu/lawreview/vol26/iss3/3 This Article is brought to you for free and open access by UIC Law Open Access Repository. It has been accepted for inclusion in UIC Law Review by an authorized administrator of UIC Law Open Access Repository. For more information, please contact [email protected]. AN OVERVIEW OF CHANGES TO THE PATENT LAW OF THE UNITED STATES AFTER THE PATENT LAW TREATY RICHARD C. WILDER* INTRODUCTION A. The Negotiations on the PatentLaw Treaty In 1984, negotiations began under the auspices of the World In- tellectual Property Organization ("WIPO")' to harmonize "grace period" provisions.2 These negotiations soon developed beyond their original scope and eventually led to the Diplomatic Confer- ence for the Conclusion of a Treaty Supplementing the Paris Con- vention as Far as Patents are Concerned ("Diplomatic Conference"). The first part of the Diplomatic Conference was held June 3 to 21, 1991. While a second part of the Diplomatic Con- ference was scheduled for July 12 to 30, 1993, 3 this has been post- 4 poned at the request of the United States of America.
    [Show full text]
  • Intellectual Property Rights and the Evergreening of Pharmaceuticals
    A Service of Leibniz-Informationszentrum econstor Wirtschaft Leibniz Information Centre Make Your Publications Visible. zbw for Economics Boscheck, Ralf Article — Published Version Intellectual property rights and the evergreening of pharmaceuticals Intereconomics Suggested Citation: Boscheck, Ralf (2015) : Intellectual property rights and the evergreening of pharmaceuticals, Intereconomics, ISSN 1613-964X, Springer, Heidelberg, Vol. 50, Iss. 4, pp. 221-226, http://dx.doi.org/10.1007/s10272-015-0546-y This Version is available at: http://hdl.handle.net/10419/172664 Standard-Nutzungsbedingungen: Terms of use: Die Dokumente auf EconStor dürfen zu eigenen wissenschaftlichen Documents in EconStor may be saved and copied for your Zwecken und zum Privatgebrauch gespeichert und kopiert werden. personal and scholarly purposes. Sie dürfen die Dokumente nicht für öffentliche oder kommerzielle You are not to copy documents for public or commercial Zwecke vervielfältigen, öffentlich ausstellen, öffentlich zugänglich purposes, to exhibit the documents publicly, to make them machen, vertreiben oder anderweitig nutzen. publicly available on the internet, or to distribute or otherwise use the documents in public. Sofern die Verfasser die Dokumente unter Open-Content-Lizenzen (insbesondere CC-Lizenzen) zur Verfügung gestellt haben sollten, If the documents have been made available under an Open gelten abweichend von diesen Nutzungsbedingungen die in der dort Content Licence (especially Creative Commons Licences), you genannten Lizenz gewährten Nutzungsrechte. may exercise further usage rights as specified in the indicated licence. www.econstor.eu DOI: 10.1007/s10272-015-0546-y Intellectual Property Ralf Boscheck Intellectual Property Rights and the Evergreening of Pharmaceuticals Escalating healthcare expenditures and the need to ensure access to affordable medicine in both emerging and emerged economies are fuelling calls to contain the so-called evergreening practices of drug producers around the world.
    [Show full text]
  • Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World
    Washington University Law Review Volume 81 Issue 1 2003 Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World Jonathan G. Musch Washington University School of Law Follow this and additional works at: https://openscholarship.wustl.edu/law_lawreview Part of the Evidence Commons, Intellectual Property Law Commons, Legal Ethics and Professional Responsibility Commons, and the Legal Profession Commons Recommended Citation Jonathan G. Musch, Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World, 81 WASH. U. L. Q. 175 (2003). Available at: https://openscholarship.wustl.edu/law_lawreview/vol81/iss1/5 This Note is brought to you for free and open access by the Law School at Washington University Open Scholarship. It has been accepted for inclusion in Washington University Law Review by an authorized administrator of Washington University Open Scholarship. For more information, please contact [email protected]. ATTORNEY-CLIENT PRIVILEGE AND THE PATENT PROSECUTION PROCESS IN THE POST- SPALDING WORLD I. INTRODUCTION One of the oldest traditions of the Anglo-American judicial system is the concept of attorney-client privilege.1 This privilege and its much younger sibling, the work-product doctrine,2 limit the discoverability of private communications between attorney and client.3 Private communications4 between a patent attorney and a client, however, have not always enjoyed this protection.5 Due to a misconception of the role of a patent attorney within the patent prosecution process, courts denied attorney-client privilege first to all patent prosecution documents, and later to documents containing technical information. This effectively denied the privilege to most documents generated during a prosecution.6 More recently, courts afforded certain documents containing technical information protection, but under a patchwork of different standards.7 Frequently, a disagreement existed between different district courts within a circuit,8 as well as among different circuits.9 The exponential technology 1.
    [Show full text]
  • "Reasonably" Compensate Employee Invento Rs in Japan
    By Calvin GRIFFITH, MICHIRU Takahashi & Nobutaka KOMIyAMA bly" Compe ona nsat as e E "Re m o pl t o g ye n e i il In a v F e f n o t o s r l s l i a n f J t i a P p a e N h : T EMPLOYERS BEWARE The United States is generally considered a more litigious paying seven-figure sums in compensation for employee country than Japan, where customs traditionally favor a less inventions, having expected that the compensation provided confrontational approach to dispute resolution. But there is in the ordinary employment contract or internal employment one exception—employee invention lawsuits. A recent series regulations would be accepted by courts as reasonable. of lawsuits filed by aggrieved employee inventors against This stunning development in Japanese courts is based on their employer companies, demanding “reasonable remu- Japan’s unique employee invention system under Article neration” for the employees’ inventions, has brought atten- 35 of the Japan Patent Law, and foreign companies doing tion to this unique area of Japanese patent law—and raised business in Japan, especially those with R&D facilities there, concern in the business community. Japanese companies should be familiar with the provisions of Article 35 and the were shocked to find themselves facing the possibility of case law applying it. 14 orIgIn oF thE FUss—ArtIclE 35 AnD thE olyMPUs CasE be entitled to remuneration based on income from the pat- Article 35 of the Japan Patent law. Japan has a unique ents. Pursuant to those regulations, Olympus acquired a pat- employee invention system under Article 35 of the Patent ent on employee Tanaka’s invention.
    [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]