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

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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 limiting the use inferred from the language used by information to the PTO. The Federal of inequitable conduct in patent Purdue in both the patents and the Circuit has condemned overuse of the infringement suits, the recent Federal prosecution history.” Id. at 698 inequitable conduct defense, noting its Circuit decision in Purdue Pharma L.P. v. (emphasis added). The Court found that adverse effect on both attorney Endo Pharmaceuticals Inc. demonstrates this implicit misrepresentation was collegiality and the rights of patentees. that inequitable conduct is an material because it was a “key argument” Molins PLC v. Textron, Inc., 33 U.S.P.Q. increasingly powerful defense. In this that was made “consistently and 2d 1823, 1829 (Fed. Cir. 1995) case, Purdue Pharma sued Endo, a repeatedly during prosecution to (“unjustified accusations of inequitable generic drug maker, for infringing its overcome prior art cited by the examiner conduct are offensive and unprofessional. patents for controlled release oxycodone in an obviousness rejection.” Id. at 699. ... They have been called a ‘plague’ on medication. Endo counterclaimed that From this determination of materiality, the patent system. ... Unjustified the patents were unenforceable due to and Purdue’s failure to disclose that its accusations may deprive patentees of Purdue’s inequitable conduct before the innovation was based on the inventor’s their earned property rights and impugn PTO. The Southern District of New York “insight”, and not on scientific data, the fellow professionals. They should be found that Endo’s proposed generic Federal Circuit found that Purdue condemned.”). drugs would infringe Purdue’s patents, intended to mislead the PTO. but agreed with Endo that Purdue In response to pressure from industry engaged in inequitable conduct. The The Purdue decision explicitly shows and professional organizations, on June Court enjoined Purdue from enforcing its deference to the work of the District 8, 2005, the House of Representatives patents, and Purdue appealed. Purdue Court, but it effectively equates a introduced HR 2795, an amendment to Pharma LP v. Endo Pharmaceuticals Inc., “misrepresentation” by implication, i.e., 35 U.S.C. that contemplates severe 70 U.S.P.Q. 2d 1185 (S.D.N.Y. 1004). assertion of a scientific improvement restrictions on the inequitable conduct based on insight unsupported by data, defense. This amendment would In affirming the District Court’s decision, with explicit misstatements to the PTO. preclude a defendant from basing an the Federal Circuit emphasized the Therefore, despite public pressure to limit unenforceability defense “in whole or in patentee’s “duty to disclose information the applicability of inequitable conduct part upon a violation of the duty of known to the applicants to be material to and the proposed amendment to patent candor and good faith.” HR 2795 § 136 patentability.” Purdue Pharma LP v. law, Purdue makes it even easier for (c)(3). Instead, a court would refer the Endo Pharmaceuticals Inc., 410 F.3d 690, defendants to assert the defense. Given inequitable conduct claim to a special 695 (Fed. Cir. 2005). Here, Purdue this ruling, patentees should avoid overly office appointed by the Director of the repeatedly stated that it had “discovered” aggressive statements during prosecution Patent and Trademark Office to an improved controlled release concerning the evidentiary basis for the determine whether misconduct occurred formulation. Id. at 696. In fact, this invention, and should ensure that all and, more importantly, whether the improvement was based on one statements to the PTO are well grounded Office actually relied on the misconduct inventor’s “insight,” not scientific data, as in fact.

C. YARDLEY CHITTICK HONORED By Lee Carl Bromberg Bromberg & Sunstein LLP BPLA Life Member C. Yardley Chittick, at Mr. Chittick is retired and lives in New 104 years old the nation's oldest patent Hampshire, and is a regular attendee at lawyer, was awarded an honorary degree the BPLA Annual Meeting. by Franklin Pierce Law Center in May 2005. Mr. Chittick once interviewed with The Honorable Carol Conboy, Yardley Chittick Thomas Edison for a job, but turned and Douglas Wood down Edison's offer to work for a golf club manufacturer. He became a patent Photo by John Beaudin, The Image Generation, attorney during the Great Depression. Manchester, NH; courtesy of Franklin Pierce Law Center 3 Boston Patent Law Association Newsletter

2005 JUDGES DINNER By Joseph M. Maraia, Esq. Hamilton, Brook, Smith & Reynolds, P.C.

The Boston Patent Law Association held The keynote speaker was Peter extremely well done. The evening ended its Annual Dinner for the Federal Gammons of ESPN’s Baseball Tonight. with a live memorabilia auction to benefit Judiciary on Friday, May 13, 2005 at the Mr. Gammons talked about and local area charities, including Curt’s Pitch World Trade Center, Boston, MA. There answered numerous questions related to for ALS and the Jimmy Fund. Among the were 215 members and guests in Major League Baseball, including the items that were auctioned off as part of attendance, including the Honorable Boston Red Sox Championship Season the live auction were an autographed Justices Joyce London Alexander, and Major League Baseball’s steroid Curt Schilling jersey, a World Series Marianne Bowler, Nathaniel Gorton, John issue. autographed picture of Trot Nixon, and a Greaney, J. Garvan Murtha, Kenneth World Series autographed baseball by Neiman, George O’Toole, Patti Saris, The evening began with a cocktail hour Trot Nixon and Mark Bellhorn. Richard Stearns, Mark Wolf, and Rya that featured a silent auction organized Zobel. by Lisa Michaud, Lisa Winsor, and the The evening was a tremendous success. rest of the silent auction volunteers. We thank all who attended and look Special thanks goes to them for a job forward to seeing you again next year.

Richard Wise and BPLA President Doreen Hogle

Hon. Mark L. Wolf, BPLA Secretary Mark B. Solomon, Patti Stearns, and Hon. Patti B. Saris

Kathleen Campbell, Hon. John M. Greaney and Dan Gleason Keynote Speaker Peter Gammons of ESPN’s Base- ball Tonight

BPLA Amicus Committee Co-Chair Erik Paul Belt and David Marder

BPLA International and Foreign Practice Committee Co- Chair Diedre Sanders, Adam Wise, Christine Doe and Michael Yamauchi

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BPLA SILENT AUCTION A SUCCESS! By Lisa J. Michaud, Esq. Nutter McClennen & Fish, LLP

The BPLA’s second Silent Auction held accommodations at The Coonamessett series photograph of and signed by Trot during the Annual Judges Dinner on Inn for the 4th of July, a Boston Nixon, a world series baseball signed by May 13, 2005 proved to be a success Helicopter Tour for Two, a cooking gift Mark Bellhorn and Trot Nixon, and a once again. Items to choose from basket from Stapletons Florist, Red Sox Patriots Football signed by Troy Brown. included personal training sessions at tickets, a Wachusetts Weekend with the Bodyscapes, spa packages for Elizabeth kids, a night on the town including a Overall, the auction raised over $5,600 to Grady and Giacomo & Rondi, a gold limo, dinner at Fire & Ice, and tickets to benefit the Jimmy Fund, The ALS package for Butter Brook Golf Club, The Phantom of the Opera, a fishing Association, Project Bread, The Volunteer accommodations at the Boston Harbor charter for eight, and other great times. Lawyers for the Arts of Massachusetts, Hotel with dinner at Andale Mexican Grill, This year, a live auction was also held to and The Huntington Theater. A special season tickets to the Boston raise money for ALS. The live auction thanks to all of the winners and the Philharmonic’s Weeknight Discover items included an authentic Red Sox volunteers for making the first BPLA Series, tickets to Jimmy Buffet, jersey signed by Curt Schilling, a world Silent Auction a success!

BPLA Vice President Lee Carl Bromberg and Pam Bromberg

BPLA Board Member Lisa Michaud, Hon. George A. O’Toole, Jr. and Patti Stearns

Hon. Nathaniel M. Gorton and Hon. Richard G. Stearns BPLA Secretary Mark B. Solomon and Keynote Speaker Peter Gammons

Hon Rya W. Zobel, Hon. J. Garvan Murtha BPLA Board and Nicole Member Neil Murtha P. Ferraro and Renee Ferraro

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U.S. POST-GRANT OPPOSITION IS COMING: A COMPARATIVE PERSPECTIVE by Christine M. Doe, Esq. Hamilton, Brook, Smith & Reynolds, P.C.

On June 7, 2005, The International and examining patent applications. Further, Oosting noted that the strengths include Foreign Practice Committee and the Mr. Cohen noted that the current the fact that the system is inexpensive Patent Office Practice Committee of The reexamination procedure has limitations, and that once the European patent is Boston Patent Law Association held an such as limits on subject matter and revoked, it revokes patents for all informative seminar entitled: “U.S. Post- tactical considerations. In addition, he designated European Contracting States. Grant Opposition is Coming: A noted that litigation has limitations in Further, he noted that the weaknesses Comparative Perspective.” The guest terms of cost, timing and standing. Mr. include the fact that oppositions take a speakers were William E. Cohen, Esq., very long time and that the European Assistant General Counsel for Policy Patent Office is not the right venue for Studies at the Federal Trade Commission; evidence taking and for revocation of Bert Oosting, partner at Lovells, one of patents based on prior use. Mr. Oosting the largest law firms in Europe; and Mary also discussed the effects on co-pending E. Porter, Esq, intellectual property litigation, including the possibility of counsel for Saint-Gobain Corporation. suspension of co-pending litigation pending resolution of the opposition. Mr. Cohen led off the discussion by According to Mr. Oosting, opposition noting that The Federal Trade decisions are not binding on national Commission (hereinafter the “FTC”), a courts, but are highly persuasive in The competition agency, is offering opinions Panelists William E. Cohen, Marry E. Porter Netherlands and Germany. He noted of patent policy for the purposes of and Bert Oosting that the opposition system generally does increasing the significance of the patent not consider evidence obtained during system and raising the awareness of Cohen stated that the purpose of the co-pending litigation. dynamic efficiency in competition policy. post-grant review is to provide something In a report by the FTC entitled “To that offers greater value than other Ms. Porter closed the seminar by Promote Innovation: The Proper Balance procedures, something faster and less presenting the corporate counsel of Competition and Patent Law and costly than litigation and something that perspective on the proposed U.S. post- Policy,” issued October 2003 (see safeguards against harassment. Mr. grant opposition. Ms. Porter began by www.ftc.gov/opp/intellect/index.htm), Cohen closed his presentation by summarizing the current U.S. post-grant the FTC agrees with the PTO discussing the elements of the proposed challenge procedures including Federal recommendations to enact legislation to post-grant system, such as subject Court litigation, Ex Parte Reexamination create a new administrative procedure to matter, timing, standing, evidence, the and Inter Partes Reexamination. Ms. allow post-grant review of, and threshold, identification of the real party Porter then discussed the benefits and opposition to, U.S. patents. Mr. Cohen in interest, discovery, the hearing, claim deficiencies of such procedures and the noted that both patents and competition amendments, the decision maker, the reason for the call to reform. Ms. Porter can promote innovation. However, evidentiary standard, the time limits, the discussed her personal experiences with invalid or overbroad patents can hinder appeal process, estoppel, settlement post-examination patent challenges in innovation and competition, which may agreements and the relationship to other jurisdictions, such as Japan and raise prices or interfere with follow-on reexamination. Europe. She then compared the AIPLA innovation. Therefore, competition and proposed U.S. post-grant system and the patent policy must work together to Mr. Oosting discussed the opposition European system and closed her provide better methods for challenging procedure before the European Patent presentation by providing her personal questionable patents. Mr. Cohen stated Office, including rules providing who can suggestions for U.S. post –grant system. that the current examination system at lodge an opposition, when to lodge an The United States Patent and Trademark opposition, discovery, evidence and Copies of slides for these presentations Office has limitations, such as limitations depositions. Mr. Oosting also discussed are available at www.bpla.org under the on available time and available the strengths and weaknesses of the “events” heading. information for Examiners to devote to European opposition system. Mr.

FINAL REMINDER REGARDING are paid, please go to the BPLA website, Leslie-Meyer-Leon www.bpla.org. Click on Members. And BPLA Treasurer UES BPLA D login. Click on the first letter of your last c/o IP Legal Strategies Group, PC name. An asterisk beside your names 1480 Falmouth Road All BPLA membership dues should have indicates that your dues have not been P.O. Box 1210 been paid. If your dues have not been paid. Please forward your dues, and the Centerville, MA 02632-1210. paid you risk possible suspension from $25.00 late fee to: the BPLA. To check whether your dues

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SUPREME COURT BROADENS RESEARCH EXEMPTION By Meredith L. Ainbinder, Esq. Bromberg & Sunstein LLP

On June 13, 2005, the United States humans, that testing on patented Notably absent from the Court’s opinion Supreme Court ruled unanimously in compounds must comply with the FDA’s was a decision on the application of the Merck KGaA v. Integra Lifesciences I, good laboratory practice regulations, that research exemption to patented research Ltd., giving a broad construction to the the research exemption does not reach tools. In a footnote, the Court explained research exemption provided by 35 experimentation on drugs that are not that the Federal Circuit’s treatment of the U.S.C. § 271(e)(1), and overturning the submitted to the FDA, and that research tool issue was unnecessary and Federal Circuit Court of Appeals’ narrower experiments that are not later included in declined to rule, “Respondents have interpretation of the language. § 271(e) a submission of information are never argued the RGD peptides were (1) reads, “It shall not be an act of infringing. Recognizing that drug used at Scripps as research tools, and it infringement to make, use, offer to sell, development is a complex, multistage is apparent from the record that they or sell within the United States or import process, and that the language of § 271 were not . . . . We therefore need not– into the United States a patented (e)(1) calls for exemption for “reasonably and do not–express a view about invention . . . solely for uses reasonably related” uses rather than solely whether, or to what extent, § 271(e)(1) related to the development and successful uses, the Court was unwilling exempts from infringement the use of submission of information under a to limit the applicability of the research ‘research tools’ in the development of Federal law which regulates the exemption based on the stage where the information for the regulatory process.” manufacture, use, or sale of drugs or patented compound is used. The Court This portion of the opinion provided veterinary biological products.” explained, “At least where a drugmaker some relief to patent holders and has a reasonable basis for believing that academic institutions. For example, life At issue in Merck was the company’s a patented compound may work, through sciences company Invitrogen funding of cancer research which a particular biological process, to produce Corporation, which had taken part in an involved experimentation on RGD a particular physiological effect, and uses amicus brief arguing against the peptides as angiogenesis inhibitors. the compound in research that, if application of § 271(e)(1) to patented These RGD peptides are the subject of successful, would be appropriate to research tools, issued a statement that patents owned by Integra Lifesciences I, include in a submission to the FDA, that the ruling “will not have a material effect Ltd., and the Burnham Institute. In use is ‘reasonably related’ to the on Invitrogen’s business.” particular, the Court examined the issue ‘development and submission of of whether preclinical research that information under . . . Federal law.’” The For large pharmaceutical companies, identifies the best drug candidate for Federal Circuit, by contrast, had given a however, this ruling is a clear victory, future FDA testing is covered by § 271(e) strict interpretation to the statutory providing some breathing room in their (1) or constitutes patent infringement. language, encouraging the application of research and testing procedures and The Court held that the “exemption from the exemption to research submitted insulation from accusations of patent infringement extends to all uses of directly to the FDA, and focusing on the infringement. While drug manufacturers patented inventions that are reasonably use of the exemption to allow for and scientists are still prohibited from related to the development and expedited approval of generic drugs using patented compounds in general submission of any information under the rather than to apply to experimentation research that bears no relationship to FDCA.” at all stages of new drug development. FDA submissions, the Supreme Court has In light of the Supreme Court’s remand, carved out the ability for researchers to The Court disregarded Integra’s the Federal Circuit has called for further use patented compounds earlier in the arguments that patented compounds briefing in Merck, “with particular drug development process could only be used to submit preclinical attention paid to the Supreme Court data related to the safety of a drug in decision.”

UPCOMING EVENTS Monday & Tuesday, October 31 - NOTICE TO COMMITTEE CHAIRS November 1, 2005 Friday, October 14, 2005 Advanced PCT Practice Seminar The newsletter would like to know of any 2:00 p.m. - 5:00 p.m. Young Lawyers IP upcoming events, whether cle or brown Primer Friday, November 18, 2005 bag lunches, that the committees are 8:30 a.m. - 4:30 p.m. Suffolk University planning. We are happy to promote your Wednesday, October 19, 2005 Law School Symposium on Biotechnology events in our newsletter listings and we 8:30 a.m. - 12:00 p.m. Trademark Year Patent Law welcome descriptions of your planned in Review events for publication. Wednesday, December 7, 2005 Annual Meeting

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KEY I.P. DECISIONS OF THE PAST YEAR AND THEIR IMPLICATIONS FOR IN-HOUSE COUNSEL Robert T. Conway, Esq., Hamilton, Brook, Smith & Reynolds, P.C. The Corporate Practice Committee of the utility design was visible near the sign Lanham Act states that use of a term BPLA held a luncheon seminar on August stands base and was entitled to trade that is descriptive of, and used fairly and 17, 2005 entitled “Key I.P. Decisions of dress protection. There is a “well- in good faith to describe a party’s goods the Past Year and Their Implications for established rule” that trade dress is not an infringement. The Court stated In-House Counsel.” The event, which protection is unavailable for product that likelihood of confusion is relevant to was held at the Ritz-Carlton Hotel in features that are functional. The the fair use defense, but the accused downtown Boston, was attended by Trademark Act in 1999 was amended to infringer does not have the burden to about 64 corporate I.P. attorneys and state that one who assents trade dress show no likelihood of confusion. their firm-side counterparts. The panel protection has the burden of proving speakers included Thomas M. Sullivan, nonfunctionality. A utility patent is In a Trademark Trial and Appeal Board Esq., of Lowrie, Lando, & Anastasi, LLP strong evidence that the features therein case, Medinol Ltd. v. Neuro Vasx Inc., 67 (Cambridge, Mass.), John L. Welch, Esq., claimed are functional. Thus, the design U.S.P.Q.2d 1205 (T.T.A.B. 2003), a of Foley Hoag LLP (Boston, Mass.), and was found functional and not entitled to trademark was registered for stents and Cynthia D. Vreeland, Esq., of Wilmer, trade dress protection. catheters. The mark was not used on Cutler, Pickering, Hale, & Dorr, LLP stents. Registrant claimed the word (Boston, Mass.). Mr. Sullivan reviewed In Moseley v. Victor Secret Catalogue “stents” had been overlooked when its and discussed key decisions in the area Inc., 65 U.S.P.Q.2d 1801 (U.S. S.Ct. verified Statement of Use form was of patent law, while Mr. Welch and Ms. 2003), the owner of the VICTORIAS completed and said it did not intend to Vreeland reviewed and discussed key SECRET trademark sued for dilution commit fraud. The Board found that “the decisions in the areas of trademark law under Section 43(a) of Lanham Action, appropriate inquiry . . . is not into the and trade secret law, respectively. which uses the phrase “causes dilution.” registrant’s subjective intent, but rather The Court found that the text into objective manifestation of that The seminar, which was hosted by Co- “unambiguously requires a showing of intent.” Mr. Welch advised that a verified Chairs James G. Cullem, Esq. (Cell actual dilution, rather than a likelihood of statement as to use of a mark had better Signaling Technology, Inc.), Walter dilution. Legislation has been proposed be true. Lack of legal advice, Dawson, Esq. (Pearson & Pearson, LLP), to amend the law to require only misunderstanding of the statutory and Faith Driscoll, Esq., is part of an “likelihood of dilution.” requirements or language difficulties or ongoing initiative by the Corporate combination thereof will not provide a Practice Committee to host educational In Dastar Corp. v. Twentieth Century Fox defense to a charge of fraud. The events relevant to I.P. practice within the Film Corp., 66 U.S.P.Q.2d 1641 (U.S. assertion of lack of fraudulent intent will corporate setting. S.Ct. 2003), Fox produced a television not help. The consequences can be series for which it never renewed the severe according to Mr. Welch. The Mr. Welch discussed a number of recent copyright leaving the series in the public application or registration is rendered U.S. Supreme Court cases directed to domain. Dastar released a video set void in its entirety. The constructive first trademarks and trade dress. In Wal-Mart made from tapes of the original version use date is lost that would have applied Stores Inc. v. Samara Brothers Inc., 54 of television series at a price substantially to the goods on which the mark has been U.S.P.Q.2d 1065 (U.S. S.Ct. 2000), Wal- less than for a Fox licensed version. Fox used. His advice if you find out that your Mart contracted with a supplier to brought a “reverse passing off” action client’s registration is overly broad is to manufacture outfits based on under Section 43(a) of the Lanham Act. amend the registration now rather than photographs of Samara. After The court held that Section 43(a) does wait for a challenge. discovering the selling of the knockoffs, not have boundless application as a Samara brought an action for remedy for unfair trade practices. Mr. Welch further touched on extra- infringement of unregistered trade dress Although it prevents “false designations territorial reach of the Lanham Act, pop- under Section 43(a) of the Lanham Act. of origin,” it does not prevent up advertisements and keywords, and The Court found that unregistered unaccredited copying of work in the gripe sites. product designs can never be inherently public domain. “Origin” refers to the distinctive, but they must have secondary producer of tangible goods, not to the Ms. Vreeland in her discussion on trade meaning to be protectable. Unlike with author of ideas. secret law stated that it has recently words or packaging, consumers are not remained relatively stable. She noted predisposed to see product shapes as In KP Permanent Make-Up, Inc. v. that five developments are worth being source indicators. Lasting Impressions I, Inc., 72 aware of 1) strict enforcement of the U.S.P.Q.2d 1833 (U.S. S.Ct. 2004), all the requirement that a plaintiff specify its Mr. Welch then discussed TrafFix Devices parties used the term “micro color” in trade secrets with reasonable Inc. vs. Market Displays Inc., 58 marketing permanent cosmetic makeup. particularity, 2) confirmation that the U.S.P.Q.2d 1001 (U.S. S.Ct. 2001). The issue was whether a defendant Massachusetts courts will exercise Market Devices claimed that its sign raising the statutory affirmative defense independence in evaluating trade secret stands were recognizable to buyers and of fair use has the burden to negate any claims under Section 93A, 3) users because the expired patent and likelihood of confusion. Section 33 of the (Continued on page 9)

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Key I.P. Decisions (con’t) that the plaintiff was likely to prevail on The Massachusetts U.T.S.A. would (Continued from page 8) its trade secret claim – even though it explicitly recognize the “head start” rule. had provided relevant information to the The legislation U.T.S.A. provides: “Upon confirmation that failure to “mark” defendant without marking it application to the court, an injunction material confidential under a non- confidential. He stated that shall be terminated when the trade disclosure agreement will not necessarily “Unquestionably, the better practice secret has ceased to exist, but the preclude a trade secret claim, 4) the would have been for [the plaintiff] to injunction may be continued for an explicit recognition of software design remain utterly faithful to the written additional reasonable period of time in trade secrets, and 5) the re-introduction protection provision. But the standard is order to eliminate commercial advantage of legislation in Massachusetts of the reasonableness, not perfection.” The that otherwise would be derived from Uniform Trade Secrets Act (U.T.S.A.). court found sufficient protection of the misappropriation.” trade secrets because the information Massachusetts courts traditionally have was disclosed within a confidential The Massachusetts U.T.S.A. would required the plaintiff to specify its trade relationship, the NDA was not integrated, change the rules concerning multiple secrets with particularity. In Cambridge and the plaintiff had taken other damages. The Massachusetts trade Internet Solutions, Inc. v. Avicon Group, measures to protect the trade secrets. secret statute authorizes the court, in its 1999 WL 959673 (Sept. 1999), discretion, to increase damages “up to defendants filed motion to dismiss on In the same case, explicit recognition of double the amount found.” Chapter 93A ground that the plaintiff had not software design trade secrets was found. authorizes double or treble damages if identified the trade secrets in issue with The judge recognized that, in software the court finds the defendant’s conduct sufficient particularity. The court agreed cases, “trade secret protection is not was “willful or knowing.” The U.T.S.A. that “[a] plaintiff has no cognizable trade limited to the source code.” He granted authorizes exemplary damages, not secret claim until it has adequately the injunction (in part) – without any exceeding twice the amount found, “if identified the specific trade secrets that comparison of source code - after willful and malicious misappropriation are in issue.” The plaintiff was ordered concluding that the plaintiff was likely to exists.” The Massachusetts U.T.S.A. to provide a more definite statement of prevail on its claim that Kodak had would also change the rules concerning its claims, “identifying with greater misappropriated the “overall design” for multiple damages. Damages for trade particularity the specific customer its “client-side” oriented, distributed secret misappropriation include the material and/or trade secrets it alleges to computing software. plaintiff’s lost profits, and the defendant’s have been misappropriated.” illicit gains. The SJC has held that Ms. Vreeland noted that legislation has Chapter 93, § 42 authorizes double According to Ms. Vreeland, the courts are been re-introduced in Massachusetts for damages only when damages are taking an independent look at Chapter the U.T.S.A. Massachusetts is only one measured by the plaintiff’s lost profits. 93A claims. In Softscape, Inc. v. of six states not to have adopted some The U.T.S.A. authorizes exemplary Cambria Consulting, Inc., Case. No. 03- version of the U.T.S.A. Ms. Vreeland said damages whether damages are 2848 (Mass. Super. Jan. 2004), the that the likelihood of passage in the measured by the plaintiff’s lost profits or plaintiff filed various claims relating to current legislative sessions is unclear. the defendant’s gains. defendant’s competing software product, developed after failed merger talks If passed, the Massachusetts U.T.S.A. The Massachusetts U.T.S.A. could between the parties. The jury found for would make explicit the requirement that provide support for recognition of the plaintiff on the trade secret claim. The a plaintiff identify its trade secrets with “inevitable disclosure” doctrine. This judge found for the defendant on particularity. The Massachusetts U.T.S.A. doctrine, if recognized, would authorize a Chapter 93A claim based on same facts, would change the definition of “trade court to issue an injunction, even absent and set aside the bulk of the jury’s secrets” to “specified or specifiable” a non-compete agreement, if it appeared damages award on the trade secret information that at the time of the “inevitable” that a former employee, claim. Each side presented expert alleged misappropriation, derived leaving to work for a competitor, would witnesses that took opposite positions on economic value, actual or potential, from use or disclose the plaintiff’s trade the issue. The judge found that the jury not being generally known to, and not secrets at his new job. could have, as it seems to have, believed being readily ascertainable by proper the plaintiff’s experts, while the court means by, others who might obtain Mr. Sullivan discussed in detail three could have, as it did, believed the economic value from its acquisition, important cases, Knorr-Bremse, Phillips, defendant’s experts. disclosure, or use, and (ii) has at all and Merck. Knorr-Bremse Systeme Fuer times been the subject of efforts that are Nutzfahrzeuge GmbH v. Dana Corp., 72 The failure to mark material confidential reasonable under the circumstances to U.S.P.Q.2d 1560 (Fed. Cir. 2004) was an as required in a non-disclosure give notice that it should not be and to appeal of a district court finding of willful agreement (NDA) was highlighted in view ensure that it is not acquired, disclosed infringement and award of attorney fees of TouchPoint Solutions, Inc. v. Eastman or used without the consent of the based in part on conclusion that opinion Kodak Co., 345 F.Supp.2d 23 (D. Mass. person asserting ownership thereof, or of counsel not produced was 2004). Prior to discussions, the parties such person’s predecessor in interest. By unfavorable. had entered into a NDA that required this definition, trade secrets would confidential information to be “clearly include information of actual or potential labeled as confidential.” The judge found competitive value. (Continued on page 10) 9 Boston Patent Law Association Newsletter

Key I.P. Decisions (con’t) Implications and recommendations for in- The Supreme Court reversed the Federal (Continued from page 9) house counsel from Mr. Sullivan are that Circuit and held that exemption does the duty of due care is unchanged. apply. Where a developer has a The court answered four questions Counsel should consider totality of reasonable basis for believing that a regarding opinions and attorney-client circumstances (at least those in patented compound may work . . . and privilege. First, when the attorney-client existence), likelihood of litigation and uses the compound in research that if privilege and/or work-product privilege is potential damages in determining need successful, it would be appropriate to invoked by a defendant in an for opinion of counsel. A well-reasoned include it in a submission to the FDA. infringement suit, is it appropriate for the opinion of counsel is still best defense The use is “reasonably related” to the trier of fact to draw an adverse inference against willful infringement according to development and submission of with respect to willful infringement? Mr. Sullivan. information under federal law. Leaving Answer: No, there is no adverse data out of submission does not make inference from invocation of the The second case discussed by Mr. experiment less “reasonably related”. attorney-client privilege and/or work Sullivan was Phillips v. AWH Corp., 75 The use of patented compounds in product privilege. U.S.P.Q.2d 1321 (Fed. Cir. 2005). The preclinical studies is protected under issue in the case was interpretation of Section 271(e)(1) as long as there is a Second, when the defendant has not “means disposed inside the shell for reasonable basis for believing that the obtained legal advice is it appropriate to increasing its load bearing capacity experiments will produce the types of draw an adverse inference with respect comprising internal steel baffles information that are relevant to a to willful infringement? Answer: No, the extending inwardly from the steel walls.” submission. issue is not of privilege, but whether there is a legal duty upon a potential The Federal Circuit found that an earlier Mr. Sullivan comments on the case infringer to consult with counsel, such case placed too much emphasis on include that developers should be careful that failure to do so will provide an dictionaries. Specification and to characterize their development work inference or evidentiary presumption that prosecution history should be given the such that it would come within the such opinion would have been negative. most weight. Since claim term was not exemption, patentees are lobbying to ambiguous, the court did not have to change/clarify ruling by statute (Patent Third, if the court concludes that the law address the doctrine of construing claims Reform Act), and that it is unclear where should be changed, and the adverse to preserve their validity. this leave developers/patentees of inference withdrawn as applied to this research tools. case, what are the consequence for this Mr. Sullivan said that the lessons from case? Answer: Finding of willful Phillips include continue to avoid Also, Mr. Sullivan touched on a number infringement and award of attorney fees limitations of invention in specification, of cases that dealt with extraterritorial were vacated and remanded for further include multiple embodiments in (outside United States) activities and its consideration. specification with specific statements that effect on Section 271(f)(l). “Whoever invention is not limited to any particular without authority supplies or causes to Fourth, should the existence of a embodiment, and include a variety of be supplied in or from the United States substantial defense to infringement be claims using different terms. all or a substantial portion of the sufficient to defeat liability for willful components of a patented invention, infringement even if no legal advice is The third case discussed by Mr. Sullivan where such components are uncombined secured? Answer: No, but it may be a was Merck v. Integra, 74 U.S.P.Q.2d in whole or in part.” In addition, Mr. factor considered among others in a 1801 (U.S. S.Ct. 2005). The question Sullivan reviewed a number of cases on totality of circumstances analysis. before the court was whether the use of Section 102 activities and references. patented inventions in preclinical In the dissent, Judge Dyk stated that he research, the results of which are not would eliminate the “due care” ultimately included in the submission to requirement that exists upon notice of the Food and Drug Administration (FDA) another’s patent rights. are exempted from infringement.

SUPREME COURT OF JAPAN CONFIRMS PATENTEE’S RIGHT TO INJUNCTION NOTWITHSTANDING EXCLUSIVE LICENSE GRANT by John A. Tessensohn, Esq. Shusaku Yamamoto In a significant pro-patentee decision, the though the patentee had granted an granted an exclusive license of the Supreme Court in Sumisho Computer exclusive license under the patent. patented invention. On appeal, the Tokyo Systems Corporation v. A & Institute of High Court, Case No. H13 (ne) 1223 Medicinal Molecular Design, Inc., Case In the first instance hearing, the Tokyo dated Feb. 27, 2004, overruled the No. H16 (uke) 997 dated June 17, 2005, District Court issued a decision, Case No. District Court and held that the patentee ruled to allow a patentee’s right to seek H13 (wa) 21278 dated Feb. 6, 2003, could obtain an injunction against the an injunction against an infringer even refusing the patentee’s injunction request accused infringer. The accused infringer on the grounds that the patentee had (Continued on page 11)

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Supreme Court of Japan invention to the extent that the practical benefit for the patentee to (con’t) exclusive licensee exclusively remove an infringing act in order to Continued from page 10) possesses the right to work the ensure its royalty income, or, to patented invention (Patent Law, avoid a decrease thereof. In subsequently appealed to the Supreme Section 68). Thus, in this case, it addition, if an act of infringement Court of Japan. The Supreme Court becomes a matter as to whether of the patent right is left granted leave to hear the appeal from the patentee loses the right to unchecked, there is a risk that the the Tokyo High Court, and in a succinct demand an injunction based on the patentee will suffer detriment three paragraph judgment, it maintained patent right. where the exclusive license is the Tokyo High Court’s position. The annulled for some reason, and the translation of the Supreme Court’s self- From the wording of Patent Law, patentee itself tries to work the explanatory reasoning is as follows. Section 100(1), there is no basis patented invention. Thus, it should for finding that the right of a be understood that it is necessary A patentee has a right to require a patentee who has granted an to recognize the patentee’s right to person who is infringing that exclusive license to demand an demand an injunction. patentee’s patent right to injunction is restricted.. Further, discontinue or refrain from such from a substantive point of view, John A. Tessensohn is a Board Member, infringement (Patent Law, Section where an exclusive license SHUSAKU YAMAMOTO, Osaka, Japan. 100(1)). Further, it is stipulated agreement stipulates that an Any questions about this article should e- that a patentee who grants an amount of royalty is to be mailed to John A. Tessensohn at exclusive license will lose a right to determined based on an amount of [email protected]. commercially work the patented sales, there clearly exists a

CHALLENGE AN OFFENDING PATENT WITH INTERFERENCE By Michael T. Siekman, Esq. Wolf, Greenfield & Sacks, P.C. It seems every company has at one time issuance. If the opposer prevails, the to a patent challenger. Few patent or another seen a competitor’s issued patent office revokes the patent. While attorneys are comfortable with U.S. patent and said, “How did they get there are growing calls for such a post- interferences, however, and few that?” or “Everybody knew that.” or grant opposition procedure in the US, recognize their potential. “That doesn’t work.” All that may very none exists. Instead, the United States well be true. A company might even has experimented over the years with a To have the patent office consider the obtain an opinion from its patent hodge-podge of reexamination patentability of an issued patent, a attorney stating that the offending patent procedures where a company can company needs to have a pending is invalid on one of those grounds. But request, or put political pressure on the application claiming the same invention. the USPTO issued the patent, and the patent office to decide on its own, that If a company is developing a patent patent is statutorily entitled to a an offending patent be reexamined. portfolio and the offending patent covers presumption of validity in any U.S. court. Those reexamination procedures, its technology, it will often have such an If the offending patent covers the however, continue to be unsatisfactory, application pending before the patent company’s technology, every time the largely because the deck is stacked in office. company seeks to raise funds, the value favor of the patent owner. Rather than of its business will be discounted by the request a likely unsuccessful Moreover, the application need not uncertainty the patent creates, even if reexamination (and forfeit certain rights presently claim the same invention. As 100 people agree the patent is invalid. in any subsequent litigation with the long as a pending application supports patent owner) most companies are well claims to the “same patentable Unfortunately, the United States does not advised legally to do nothing. Of course, invention,” the company can add claims have an effective way of eliminating the this does nothing to resolve the to it (“copy claims from the patent”) to uncertainty created by such an offending uncertainty. provoke an interference. If no such patent. Unless the patent owner actually application exists, a company might file sues, or sufficiently threatens to sue, the Fortunately, many companies may have for reissue of an issued patent and use company, patent litigation is not another alternative available to them for the reissue application to provoke an available. Moreover, no company wants challenging an offending patent. To interference. The claims must be present to invite a patent litigation, which is very determine the first to invent among at some time before one year from the expensive, invasive, and distracting. competing inventors, the patent office patent’s issue date, and they must be conducts “interference” proceedings. allowable. Finally, the challenger must be Many other countries address the Since 1984, the patent office has also able to show that it is at least possible problem of such offending patents by determined patentability issues in that it could establish an earlier date of providing a post-grant review process by interferences. This provides a potential invention than the patent owner. If which parties can oppose in the patent avenue for challenging the validity of an these conditions are met, the patent office the grant of a patent soon after its issued patent-one that is highly favorable (Continued on page 12)

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Challenge an Offending Patent trained, understand the inventions. attorneys are aware of its existence. with Interference (con’t) Fourth, a patent is not entitled to the Nonetheless, it should be considered (Continued from page 11) statutory presumption of validity in an when deciding whether to provoke an interference proceeding, and the interference to challenge the validity of office should declare an interference challenger’s burden of proof is lower in an offending patent. Indeed, for patent between the pending application and the an interference than in a district court challenges likely to depend upon issued patent. litigation. Fifth, “interference estoppel,” discovery (such as invalidity due to a which prevents a losing party from prior sale) or live testimony (such as The patent office has recently indicated a obtaining in its patent portfolio claims inequitable conduct), a district court reluctance to declare any interference that it could have pursued in the might offer a more favorable forum, and that is a mere “post-grant cancellation interference, potentially puts the patent the risk of estoppel from an interference proceeding.” Nonetheless, if a challenger owner’s entire portfolio (as well as the should be avoided entirely. meets those threshold requirements for challenger’s) at risk, increasing the provoking an interference, the patent incentive to settle. Interferences potentially provide a highly office should consider the validity favorable and relatively inexpensive challenges to the offending patent. Before attempting to provoke an forum for challenging the validity of an interference to challenge the validity of a issued patent. A company faced with a Interferences have numerous advantages patent, a company should consider blocking patent it believes is for challenging an offending patent. First, whether traditional estoppel (collateral unpatentable should consider the with essentially no discovery and no live estoppel and issue preclusion) could availability of an interference to challenge testimony, interferences are much less prevent it from asserting in a subsequent the offending patent. expensive than district court litigation. litigation validity challenges that it Second, unlike reexaminations, previously lost in the interference. One Michael T. Siekman is counsel with the interferences can consider all old case that is binding precedent for all Biotechnology, Interference, and patentability issues. Third, patentability patent litigation, Coakwell v. United Pharmaceutical Practice Groups of Wolf issues will be decided by administrative States, arguably supports the application Greenfield, a leading Boston IP law firm. patent judges who, unlike judges and of such an estoppel. Coakwell’s scope is He can be contacted at (617) 646.8336 juries, regularly find inventions uncertain, in over 40 years it has never or [email protected]. unpatentable and, being technically been applied in this way, and few patent

POSITIONS AVAILABLE Bromberg & Sunstein LLP, a leading Key responsibilities include: accredited law school with three to five Boston law firm with a focus on plus years of experience including two intellectual property seeks patent □ Performing legal services related to the years as patent agent and/or attorney. procurement and enforcement of attorney with 2-5 years’ experience, □ Candidate must be a member of at strong academic credentials, and protection for the Company’s least one state or federal bar and the intellectual property rights on a world- exceptional analytical skills and writing US PTO patent bar. ability. While our patent practice wide basis □ Familiarity with recent court decisions emphasizes portfolio development using □ Providing counsel to management with relating to patents, licenses, antitrust, strategic filings, our patent attorneys also respect to such rights and for secrets, and unfair competition is work with our IP litigators in developing avoidance of infringement on the necessary. enforcement and defense strategies. technical proprietary rights of others. □ Ability to analyze and recognize the Patents from our office, in a wide range □ Management of IP portfolio’s of technologies, have been involved in significance of complex developments multi-million dollar litigation recoveries. □ Writing of patent applications for in several technological areas, such as Our ideal candidate is a vigorous Research and Development projects molecular biology and pharmacology. advocate who enjoys working in a □ Leading the intellectual property role in □ Ability to work independently and to congenial atmosphere. Send resume to: assessing licensing opportunities communicate and deal with technical □ Interaction with outside counsels on and non-technical people HR Director, [email protected] the drafting and prosecuting patent □ Excellent writing skills required BROMBERG & SUNSTEIN LLP applications 125 Summer Street □ Candidates with a Ph.D. degree who are patent agents with significant Boston, MA 02110-1618 Position Requirements: Winning Intellectual Property experience and are presently attending Visit our website at: www.bromsun.com □ Position will report to the SVP Legal law school are also welcome to apply. Affairs and Chief Patent Counsel. ——————————————— Please send resumes to: [email protected] □ This position minimally requires a DYAX CORP located in Cambridge, MA Master’s degree in a biologic based ——————————————— seeks a In-house Patent Counsel to join scientific field (Ph.D. preferred) and a our legal team. Doctor of Laws Degree (JD) from an 12 Boston Patent Law Association Newsletter

(Positions Available potential to be a leader on litigation evaluation and patent preparation and Continued from page 12) teams. License to practice law in prosecution (both in-house and through Massachusetts or the ability to be so management of outside counsel); licensed. Law degree from accredited law evaluation of third party patents, GUERIN & RODRIGUEZ, LLP school. High academic achievement in including noninfringement and invalidity both technical and law degrees. analyses and opinions; copyright Patent Attorney: Minimum of three years Demonstrated ability to work directly with clearance (including open source patent prosecution experience. clients. Strong writing and analysis); some transactional work Candidates must have a minimum of a communication skills. (contracts and licensing) and due Bachelor of Science degree, preferably in diligence; trademark clearance and IP Electrical Engineering, Physics, or If you would like to step out of the pack enforcement involving local client Computer Science. The candidate should and into a highly visible role on our support. USPTO registration as well as also have at least three years of technical litigation team, please send your resume state bar membership required. Technical or scientific work experience. The ideal to: degree (preferably advanced or candidate should have experience in one equivalent experience) in software or more of the following technology Deirdre Sanders, Job Code: ECB development or engineering, or computer areas: telecommunications, computer Hamilton, Brook, Smith & Reynolds, P.C. science preferred. This position is networking, digital and analog circuitry, 530 Virginia Road located in Cambridge, MA. and electrical and optical devices. PO Box 9133, Concord, MA 01742-9133 Send resumes to: Patent Administrator: At least two years Email: [email protected] Julie Dennis experience with patent administrative Fax: 978-341-0136 [email protected] and clerical tasks. The administrator will work with the firm’s attorneys to assist in We offer a competitive salary and excellent ——————————————— prosecution matters involving U.S. patent benefits. applications and PCT patent application. LOWRIE, LANDO & ANASTASI, LLP Please visit our web site at www.hbsr.com. EEOE Responsibilities will include the preparation of paperwork for filing ——————————————— IP Litigation Paralegal: Minimum 2-4 applications, amendments, responses, years litigation experience. Experience in declarations, assignments, powers of HAYES SOLOWAY P.C., an intellectual IP litigation preferred, but not required. attorney, information disclosure property firm with a worldwide client Must have strong communication and statements, etc. Must have knowledge base, has immediate openings in their organizational skills, and should be able of PTO rules and regulations. Tucson, Arizona and Manchester, New to manage multiple projects Hampshire offices for intellectual simultaneously. Knowledge and use of For consideration of one of the above property attorneys experienced in: computer assisted document control opportunities, please send your resume BioTech, Optics/Physics, Patent Litigation software a must. Familiarity with as an email attachment in Microsoft Word and Chemistry. Please respond if you Concordance a plus. Bachelor’s degree format to: have excellent credentials, are strongly and/or a paralegal certificate required. motivated and work well in a team Guerin & Rodriguez, LLP environment. Compensation will be Docketing Paralegal: Maintain firm [email protected] commensurate with experience and docketing database. Enter all data into productivity. Computer Packages, Inc. (CPI) database. or by U.S. mail to: Review incoming and outgoing correspondence, all PTO filings and Guerin & Rodriguez, LLP Email resume, legal writing sample and references, with an indication of Foreign Agent communications for 5 Mount Royal Avenue availability to: Ashley L. Kirk, Esq., 130 accuracy. Communicate discrepancies. Mount Royal Office Park Understand Patent and Trademark (U.S. Marlborough, MA 01752 W. Cushing Street, Tucson, AZ 85701 • Email: [email protected] for the and Foreign) Prosecution. Knowledge of PTO and Foreign filing requirements and ——————————————— Tucson, Arizona office or Todd A. Sullivan, Esq., 175 Canal Street, rules. Provide a firm wide service in all aspects of IP. HAMILTON, BROOK, SMITH & REYNOLDS, Manchester, N.H. 03101 • Email: P.C. seeks IP Litigation Attorney. [email protected], for the Manchester, New Hampshire office. Patent Legal Secretary: Minimum 3 years You can have it all! Be a part of a IP patent experience. Must have strong dynamic IP litigation practice and avoid ——————————————— knowledge of PTO rules and regulations. the hassles of the urban commute. IBM LOTUS SOFTWARE DIVISION (within Salary commensurate with experience. Requirements: Minimum of 5 years the IBM Software Group) is currently LL&A offers a competitive benefits experience as an IP Litigator. Technical seeking an Intellectual Property Attorney package. degree from a quality college or with at least 3 years experience to join its university. Track record of effective legal team to provide full range of IP Law client advocacy. Experience as or support including: invention disclosure (Continued on page 14)

13 Boston Patent Law Association Newsletter

Positions Available filing and prosecution of patent Reply in confidence to: (Continued from page 13) applications with outside counsel Kevin M. Farrell □ Develop and manage patent portfolios Pierce Atwood LLP Please send resume to: One New Hampshire Avenue, Suite 350 □ Counsel on offensive and defensive [email protected] Portsmouth, NH 03801 patent-related IP issues to support (603) 373-2017 direct ——————————————— licensing and litigation projects (603) 433-6372 fax mailto:[email protected] LOWRIE, LANDO & ANASTASI, LLP is Experience/Education Needed: continuing to grow and has the following □ A technical background in electronics, ——————————————— opportunities for associates: computers or physics □ JD and Bar membership, in good Patent Associate having 2-5 years of standing, with a minimum of 5 years of experience with primary focus on patent legal support experience either as in- prosecution. Technical degree in house or outside counsel to the Electrical Engineering or Computer software industry Science required with industry experience □ At least 3 years experience with and/or masters degree preferred. Strong Patent Attorneys/Paralegals writing and interpersonal skills required. software patent preparation and prosecution Central New York’s Largest IP firm seeks IP Litigation Associates having 2-6 years □ Excellent analytical, communication, highly qualified patent attorneys for of experience in IP litigation with focus and writing skills and effective at immediate openings in its growing and on patent litigation. Technical degree multitasking diversified practice. and law degree with strong academic □ Critical thinking and excellent oral and credentials required. Strong writing and Open Positions: written communication skills communication skills required. □ Exposure to MATLAB and Simulink a Metro-Boston, MA: LL&A is an intellectual property law firm significant plus Patent Attorney: Partner-level, any founded on a work model that promotes discipline, with significant portable balance in the legal profession. Focusing Contact: business on balance leads not only to more Jeff Moore satisfying careers and lives, it also Legal Recruiter Ithaca, NY: supports LL&A’s commitment to providing The MathWorks Patent Attorney: Partner-level, any the highest quality intellectual property [email protected] discipline, with significant portable counseling. Within this balanced 508-647-7569 business environment, LL&A provides competitive ——————————————— salaries and challenging career Syracuse, NY: opportunities. If you would like more Patent Attorney: 2+ years experience, PIERCE ATWOOD LLP information please see our website at large law firm experience preferred, backgrounds in EE/CS and www.LL-A.com. Please forward all Large general practice firm seeks patent biotechnology (PhD) strongly preferred resumes to [email protected]. associates in all technical disciplines for growing Portsmouth, NH practice. ——————————————— IP Paralegal: 2+ years corporate or Portsmouth, NH is located on the New law firm experience, TM experience Hampshire Seacoast, 55 miles north of THE MATHWORKS seeks Patent Attorney. preferred Boston. We offer challenging Join our IP Group and take a lead role in professional opportunities securing and Compensation is commensurate with expanding the patent portfolio of a enforcing patent rights for clients ranging experience, and is comparable to that successful engineering software from startups to Fortune 500 companies offered by large firms in NYC and Boston. company. Your proven software patent in a small town setting with a broad Send Resume and cover letter in prosecution skills, coupled with your range of recreational opportunities. confidence by facsimile or e-mail to: strong interest to learn new technologies Portsmouth is a great town in which to and applications will allow you to have a raise a family. Managing Partner positive impact. Wall Marjama & Bilinski LLP Specific needs included: [email protected] Responsibilities include: or facsimile (315)425-9114 Junior Associate with electrical, electro- □ Work closely with engineers to obtain mechanical or software background for WEB: www.wmb-iplaw.com appropriate patent protection for a prosecution in related disciplines. wide range of technologies ——————————————— □ Manage the invention disclosure Senior Associate with Ph.D. in biotech- process, including oversight of the related discipline for prosecution/ supervision in related disciplines.

14 Boston Patent Law Association Newsletter

BPLA COMMITTEES The Boston Patent Law Association (BPLA) is an association of intellectual property professionals, providing educational programs ACTIVITIES & PUBLIC RELATIONS INTERNATIONAL & FOREIGN PRACTICE and a forum for the interchange of ideas and [email protected] [email protected] information concerning patent, trademark, and copyright laws. Through a volunteer Board of Joseph M. Maraia 978-) 341-0036 Deirdre E. Sanders (978) 341-0036 Governors and committees, it organizes and John N. Anastasi (617) 395-7000 hosts educational seminars, social events, and AIPLA MOOT COURT conventions, and comments on rules and [email protected] LICENSING legislation impacting the profession. Visit the Thomas M. Johnston (617) 542-5070 [email protected] BPLA at www.bpla.org. William G. Gosz (617) 951-7000 Membership in the BPLA is available to AMICUS Peter C. Lando (617) 395-7000 attorneys and other professionals practicing [email protected] intellectual property law within the Federal Erik Paul Belt (617) 443-9292 LITIGATION First Judicial Circuit (Maine, New Hampshire, Peter F. Corless (617) 439-4444 [email protected] Massachusetts, Rhode Island and Puerto Rico). Applications for membership can be obtained Ronald E. Cahill (617) 432-2782 from our web site at www.bpla.org. Full ANTITRUST LAW Matthew B.Lowrie (617) 395-7000 membership for 2005 (available only for [email protected] attorneys practicing within the First Circuit) Robert J. Spadafora, Jr. (781) 398-2548 PATENT LAW costs $65.00, Associate membership (available Ernie Linek (617) 720-9600 [email protected] to non-attorney intellectual property professional) costs $55.00. Mailing list-only Kathleen B. Carr (617) 951-3326 affiliation costs $35.00 BIOTECHNOLOGY John T. Prince (617) 871-3346 [email protected] The BPLA Newsletter is published four times a Doreen M. Hogle (978) 341-0036 PATENT OFFICE PRACTICE year by the Boston Patent Law Association. Leslie M. Levine (617) 429-7809 [email protected] Articles appearing in the newsletter represent the views of the authors and do not J. Grant Houston (781) 863-9991 necessarily carry the endorsement of the CHEMICAL PATENT PRACTICE David G. Conlin (617) 439-4444 BPLA. [email protected] Jeffrey D. Hsi (617) 439-4444 PRO BONO Editor: Lee Carl Bromberg, Esq. Lisa A. Dixon (617) 444-6396 [email protected] Contributors: Lisa J. Michaud (617) 439-2550 Meredith L. Ainbinder, Esq. COMPUTER LAW Lisa E. Winsor (617) 395-7000 Ingrid A. Beattie, Esq. [email protected] Lee Carl Bromberg, Esq. Edward W. Porter (617) 494-1722 TRADE SECRETS Robert T. Conway, Esq. John J. Stickevers (617) 443-9292 [email protected] Christine M. Doe, Esq. Rebecca L. Hanovice, Esq. Stephen Y. Chow (617) 854-4000 Doreen M. Hogle, Esq. COPYRIGHT LAW Grant Houston, Esq. [email protected] TRADEMARKS & UNFAIR COMPETITION Joseph M. Maraia, Esq. Charles L. Gagnebin, III (617) 542-2290 [email protected] Lisa J. Michaud, Esq. Cynthia J. Walden (617) 542-5070 Michael T. Siekman, Esq. CORPORATE PRACTICE John A. Tessensohn, Esq. John L. Welch (617) 832-1000 [email protected] Created by: Joanne M. Creedon Walter F. Dawson (978) 452-1971 Young Lawyers & Law Students Faith F. Driscoll (781) 326-6645 [email protected] Letters to the editor and articles are James G. Cullem (978) 867-2311 Michelle Z. Bielunis (617) 439-2481 encouraged. Mail all correspondence to: Gregory J. Sieczkiewicz, (617) 832-6067 Ethics and Grievances BPLA Newsletter c/o Lee Carl Bromberg, Esq. [email protected] Bromberg & Sunstein LLP Timothy A. French (617) 521-7015 125 Summer Street, Boston, MA 02110

©2005 BPLA—All rights reserved.

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15 Boston Patent Law Association Newsletter

2005 BOARD OF GOVERNORS

President Doreen M. Hogle, Hamilton, Brook, Smith & Reynolds, PC, P.O. Box 9133, Concord, MA, ph 978-341-0036, fax 978-341-0136, [email protected] President-Elect Ingrid A. Beattie, Mintz, Levin, Cohn, Glovsky & Popeo, PC, 1 Financial Center, Boston, MA, ph 617-542-6000, fax 617-542-2241, [email protected] Vice President Lee Carl Bromberg, Bromberg & Sunstein LLP, 125 Summer Street, Boston, MA, ph 617-443-9292, fax 617-443-0004, [email protected] Treasurer Leslie Meyer-Leon, IP Legal Strategies Group, P.O. Box 1210, Centerville, MA, ph 508-790-9299, fax 617-790-1955, [email protected] Secretary Mark B. Solomon, Hamilton, Brook, Smith & Reynolds, PC, P.O. Box 9133, Concord, MA, ph 978-341-0036, fax 978-341-0136, [email protected] Member Peter F. Corless, Edwards & Angell, LLP, 101 Federal Street, Boston, MA, ph 617-439-4444, fax 617-439-4170, [email protected] Member Lisa J. Michaud, Nutter, McClennen & Fish, LLP, 155 Seaport Boulevard, Boston, MA, ph 617-439-2000, fax 617-310-9000, [email protected] Member J. Grant Houston, Houston Eliseeva, LLP, 4 Militia Drive, Suite 4, Lexington, MA, ph 781-863-9991, fax 781-863-9931, [email protected] Member Neil P. Ferraro, Wolf, Greenfield & Sacks, P.C., 600 Atlantic Avenue, Boston, MA, ph 617-626-8000, fax 617-720-2441, [email protected]

ARTICLE SUBMISSION If you would like to write an article for an upcoming issue of the Boston Patent Law Association’s Newsletter please contact: Lee Carl Bromberg at Bromberg & Sunstein LLP, 125 Summer Street, Boston, MA 02110-1618, phone (617) 443-9292, fax (617) 443-0004, [email protected]

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