Patent Law

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By Adam Jones

How many of you have ever cleaned out your garage, dusted the cobwebs off of old ski boots, exercise equipment and children’s toys that have been outgrown or forgotten, and put all the stuff that you don’t use anymore in front of your house for a weekend garage sale? Or maybe, when you could really use some extra cash, you decided that you were finally willing to part with your commemorative Star Trek shot glass collection and listed it for sale on ebay, hoping it would trigger a ferocious bidding war between a few obsessed Trekkies around the world. Auctions, whether held online or in your front yard, have long been a great way for buyers and sellers to come together and exchange goods for mutual benefit. If auctions are a great way to sell your old junk, can they work for the sale of less tangible assets like intellectual property?
Continue Reading Looking to Sell Your Patent Portfolio? Put it on Ebay

By Audrey Millemann

In an interesting decision in the biotechnology area, the Court of Appeals for the Federal Circuit recently held that certain nucleic acid sequences had no utility and were not enabled. In re Fisher (Fed. Cir., September 7, 2005).

The owner of the patent at issue is the biotechnology giant, The Monsanto Company. The patent application claimed five purified nucleic acid sequences known as expressed sequence tags (ESTs) that encode certain proteins in maize plants. Although the inventors identified the ESTs, they did not know the function of the genes or the proteins. The application described several uses for the ESTs, including gene mapping in maize, providing primers to use in polymerase chain reaction processes to duplicate genes, determining the presence of polymorphisms, isolating promoters, controlling gene expression, and locating genes in other plants.

The examiner rejected the claim under 35 U.S.C. ��101 on the grounds the ESTs had no specific and substantial utility. The examiner found that the uses described by Monsanto were not specific as they were no different from the uses of any EST, and were not substantial as the proteins encoded by the ESTs had no identifiable function. The examiner also rejected the claim on the grounds that it was not enabled under 35 U.S.C. ��112, first paragraph, finding that the application could not teach how to use the ESTs because they had no specific and substantial utility.
Continue Reading How Useful is Useful

By R. Todd Wilson

The U.S. Court of Appeals for the Federal Circuit held on July 13, 2005 that the export of software from the United States to foreign computer manufacturers which copy and install the software and then sell computers loaded with the software abroad constitutes an infringing supply of a patented component in violation of Section 271(f) of the United States Patent Act. The case is AT&T Corp. v. Microsoft Corp., 2005 WL 1631112 (Fed. Cir. July 13, 2005). This case, considered together with Eolas Technologies Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005), lays out the Federal Circuit’s current interpretation of Section 271(f) regarding the exportation of software code.
Continue Reading Exported Software Copies Are Infringing Supply of Components in Microsoft Cases