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Boston Patent Law Association Newsletter Serving the BOSTON PATENT LAW New England Intellectual ASSOCIATION NEWSLETTER Property bar Since 1924 September 2005 EDUCATION, SERVICE, COMMUNITY Volume 36, Issue 3 PRESIDENT’S MESSAGE I hope that like to thank everyone who worked so Biotechnology Patent Law: Safe Harbor/ everyone has hard to give us a fun-filled, memorable Experimental Use, Invention and Utility”. had an enjoyable evening. Distinguished speakers, including John summer, with Whelan and Stephen Walsh from the some time off for We’ve had two very informative and well- Office of the Solicitor for the USPTO, much-needed attended seminars this summer: “Post- Kenneth Burchfiel from Sughrue Mion, rest and Grant Opposition” and “Key IP Decisions and John Duffy from George Washington relaxation. All of of the Past Year”. We also had a great University Law School, as well as a Doreen M. Hogle us probably turn-out for the Summer Outing at number of attorneys from private and agree that Fenway Park to see the Red Sox beat the corporate practice in the Boston area, will September has arrived much too quickly. Tampa Bay Devil Rays on a very humid provide insights on biotechnology July evening. practice in light of recent court decisions. The Annual Judges Dinner was held May 13 at the World Trade Center Boston. We have some great seminars planned Finally, I'd like to ask that all members Over 200 members and guests attended for the fall/winter season, including an take some time to read the article that including many judges from around the “IP Primer” on October 14th by the appears in this Newsletter detailing the Commonwealth. Peter Gammons, now a Young Lawyers Committee; “Trademark proposed new policy for the appointment Hall of Fame Sportswriter, was the guest Year in Review” on October 19th by the of committee chairs and term limits for speaker and treated us to some great Trademark Committee; the third seminar committee chairs. The Board also plans sports stories based on “insider” in our series on “Interference to add an additional committee to cover knowledge. The evening ended with a Practice” (date to be announced); and “Contested Matters”. The Board believes live auction (complementing the silent the “Advanced PCT Practice Seminar" on that adding committees and initiating auction held during the cocktail October 31-November 1. Please see the these new policies will permit more reception). Activities Chair, Joe Maraia, Upcoming Events in this Newsletter, or members to become actively involved and Pro Bono Committee Chair and Board the BPLA website, for more details. And with the BPLA. Please feel free to send member, Lisa (a/k/a “Vanna White”) “save the date” for the Annual Meeting your comments on the new policy to the Michaud, did a great job encouraging on December 7, 2005. Board for our consideration. bids for the donated items. The highlight of the auction was an autographed Curt We are also pleased that on November Schilling Red Sox jersey getting top 18 the BPLA will be co-sponsoring a dollar. We all had a great time and seminar with Suffolk University Law raised over $5,500 for local charities. I’d School “Resolving Uncertainty in IN THIS ISSUE Proposed Bylaw Change for Standing Committees....................2 Supreme Court Broadens Research Exemption........................7 BPLA Presents Award at Massachusetts State Upcoming Events...................................................................7 Science Fair...........................................................................2 Key I.P. Decisions of the Past Year and Patentees Beware: Purdue’s Reinforcement of Their Implications for In-House Counsel..................................8 Inequitable Conduct as a Defense to Infringement...................3 Supreme Court of Japan Confirms Patentee’s C. Yardley Chittick Honored....................................................3 Right to Injunction Notwithstanding Exclusive License Grant.........................................................10 2005 Judges Dinner...............................................................4 Challenge an Offending Patent with Interference....................11 BPLA Silent Auction a Success!...............................................5 Positions Available................................................................12 U.S. Post-Grant Opposition is Coming: Committees..........................................................................15 a Comparative Perspective.....................................................6 Board of Governors...............................................................16 Final Reminder Regarding BPLA Dues......................................6 Boston Patent Law Association Newsletter PROPOSED BYLAW CHANGE FOR STANDING COMMITTEES By Grant Houston, Esq. Houston Eliseeva LLP To improve the BPLA's committee ARTICLE X: Standing Committees 6. Committee on Chemical Patent structure, the Board is proposing changes Practice The Chairpersons of the standing in the bylaws to specify the tenure of 7. Committee on Computer Law committee chairpersons. committees of the Association shall be appointed by the President-Elect subject 8. Committee on Contested Matters The Board believes that there are a to approval of the Board of Governors no before USPTO number of potential advantages, later than the meeting of the Board 9. Committee on Copyright Law including: 1) increase in planned immediately preceding the Annual 10. Committee on Corporate Practice activities; 2) broader involvement for Meeting. Each standing committee shall active members, even in the context of have one or more Chairpersons. 11. Committee on Ethics and Grievances current chairs who move to new Appointments of the Chairpersons will be 12. Committee on International and committees (success in previous announced at the Annual Meeting, at Foreign Practice committees can be used as a metric for which time their terms shall commence. 13. Committee on Licensing assigning them as chairs of new The Chairpersons shall serve (1) for not 14. Committee on Litigation committees); and 3) an expansion of more than three years or (2) until their involvement of new members in the successors shall have been appointed by 15. Committee on Patent Law operation of the BPLA. the President. 16. Committee on Patent Office Practice 17. Committee on Pro Bono Also, the new bylaw provides for a "8. The standing committees of the Committee on Contested Matters before Association shall be as follows: 18. Committee on Trademark and Unfair USPTO" to cover interference practice Competition and potentially post-grant opposition, as 1. Committee on Activities and Public 19. Committee on Trade Secrets Law Relations distinct from litigation. 20. Committee on Young Lawyers and 2. Committee on AIPLA Moot Court Law Students Please direct any comments or 3. Committee on Amicus Briefs suggestions to the Board. Special committees may be appointed 4. Committee on Antitrust from time to time by the President. The following bylaw will be presented for 5. Committee on Biotechnology a vote at the annual meeting: BPLA PRESENTS AWARD AT MASSACHUSETTS STATE SCIENCE FAIR By Ingrid A. Beattie, Esq. Mintz, Levin, Cohn, Ferris, Glovsky and Popeo P.C. On May 7, 2005, the BPLA participated in fair and over 60 schools were the 56th year of celebrating student represented. 274 projects were entered achievement and innovation in science into the competition. Entries are made and technology at the Presentation of as individuals or as a team. This year Awards for participants in the 214 individual and 60 team entries were Massachusetts State Science Fair (MSSF). submitted. Nearly $350,000 worth of prizes were awarded, including the BPLA award of Entries are judged on the following $1,350 to first place winner Anupama criteria: 1. Scientific Approach to the Khan. Problem; 2. Original Project Journal/ Scientific Notebook/Log; 3. The MSSF program is open to high school Massachusetts Science Fair Winner Anupama Khan Thoroughness; 4. Ingenuity and students and middle school students Creativity; and 5. Exhibitor's from all public, private and home students. These students presented their Advancement in Science. The field was environments in the Commonwealth. research in a public forum in a poster impressive and highly competitive, and The event in which the BPLA participated session format on par with the most the entrants were passionate experts in was held at Johnson Athletic Center at prestigious professional societies in the their chosen area of work. MIT for allow Senior High School world. 340 students participated in the 2 Boston Patent Law Association Newsletter PATENTEES BEWARE: PURDUE’S REINFORCEMENT OF INEQUITABLE CONDUCT AS A DEFENSE TO INFRINGEMENT By Rebecca L. Hanovice, Esq. Bromberg & Sunstein LLP Over the past few decades, the in its decision to allow the patent. If Purdue did not have clinical evidence inequitable conduct defense has become there is no clear and convincing evidence supporting its improvement. The Federal increasingly popular in patent of reliance by the Office on a patentee’s Circuit acknowledged that “Purdue never infringement lawsuits. Defendants fraudulent behavior, any misconduct expressly stated that the discovery of the accused of infringement routinely would not render the patent four-fold dosage range was based on the counterclaim that the asserted patent is unenforceable. results of clinical studies,” but held that unenforceable because the patentee “that conclusion was clearly to be withheld or misrepresented material Despite the push towards
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