Reacting Rationally to Recent Changes in IP LAW

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Reacting Rationally to Recent Changes in IP LAW

• John K. Williamson
• Assistant General Counsel
• PPG Industries, Inc.

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2004 IP LEGISLATION
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Intangible Assets as a of SP 500 Market
Capitalization
13
38
62
87
62
38
1982
1992
2002
Source Brookings Institute
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PATENT DONATIONS
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PATENT FEES
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COOPERATIVE RESEARCH
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35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by interim rule
(70 FR 1818)

• Example
• Company A and University B have a joint research
  agreement (JRA) in place prior to invention X.
• Professor BB from University B communicates
  invention X to Company A. University B files a
  patent application on invention X on November 12,
  2004.
• Company A files an application disclosing and
  claiming invention X, an obvious variant of
  invention X, on December 13, 2004.
• University B retains ownership of invention X and
  Company A retains ownership of invention X.
• Company A files an information disclosure
  statement citing the University Bs patent
  application of invention X.

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35 U.S.C. 103(c) as Amended by the CREATE Act
(P.L. 108-453) and as implemented by interim rule
(70 FR 1818)

• Example (contd)
• Examiner makes a rejection of the claims of
  invention X under 35 USC 103(a) as being obvious
  in view of the application of invention X.
• Company A properly invokes the prior art
  disqualification under 35 U.S.C. 103(c) as
  amended by the CREATE Act.
• Examiner makes an obvious double patenting
  rejection of the claims of invention X in view
  of the claims of invention X.
• The Office action can be made final (provided
  that no other new ground of rejection that was
  not necessitated by amendment is introduced)
  regardless of whether the claims themselves have
  been amended.
• Company A files a proper terminal disclaimer
  under new 37 CFR 1.321(d) to overcome the double
  patenting rejection.
• Note Both parties of the JRA must agree to
  commonly enforce their patents in addition to a
  common term requirement.
• Examiner may allow the application of invention
  X, assuming no other issues need to be resolved
  in the application.

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USTR EXPANDED ROLE
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AIPLA/IPO/JIPA/UNICE letter to WIPO dated
9/20/2004

• We are writing on behalf of the Industry
  Trilateral to express our strong opposition to
  the proposal by the World Intellectual Property
  Organization (WIPO) to raise the International
  Filing Fee by 12 beginning January 1, 2005
  (document PCT/A/33/5).