William N. Hulsey III, Esq. - Hulsey, PC - Intellectual Property Lawyers

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William N. Hulsey III, Esq. - Hulsey, PC - Intellectual Property Lawyers

William N. Hulsey III, Esq.Principal, HULSEY, P.C.Intellectual Property LawyersThursday, February 24 th 20112011 Intellectual Property & Innovation Presentation SeriesHULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


• Developments in U.S. IP Rights & Effective InternationalCooperation• David Kappos, U.S. Under‐Secretary of Commerce forIntellectual Property• James Pooley, Deputy Director General for Innovation &Technology, World Intellectual Property Organization• U.S. Supreme Court decides BILSKI V. KAPPOS & OtherSoftware & Business Method Patent Developments• Paul Allen, Microsoft Co‐Founder sues “The Internet” forpatent infringement• U.S. Supreme Court to hear February 28, 2011 the caseStanford University v. Roche Molecular Systems• Patent Reform Legislation making genuine progress in U.S.CongressHULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


• The Bilski decision, both Supreme Court and Federal Circuitdecisions, addressed the validity of many already issuedInternet business methods• U.S. Supreme Court Justice Kennedy ‘s Balance: “ . . . . [T]hepatent law faces a great challenge in striking the balancebetween protecting inventors and not granting monopoliesover procedures that others would discover by independent,creative application of general principles.” (S.Ct. Bilski MajorityDecision)• James Pooley, Dep. Dir. Gen. of the World IP Organization, “[IPrights provide “the package in which technology travels,”[and are] essential for the commercialisation ofinnovation.”HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


Anthony M. KennedyAssociate Justice• The Court in the majority opinion authored by JusticeKennedy held as follows:• While the claims at issue in Bilski were not patent‐eligiblesubject matter, it was because “they are attempts to patentabstract ideas”, not because they failed to meet somecategorical rule formulated to address inventions from aprior century.• Left open the opportunity for the Federal Circuit to carveout new boundaries to patent‐eligible subject matter in thefuture which are consistent with the purposes of the PatentAct and are not inconsistent with its text.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


Anthony M. KennedyAssociate Justice• The Court in the majority opinion authored by JusticeKennedy further held:• The notion that the “machine‐or‐transformation” test appliedby Federal Circuit was the “exclusive” test is rejected.• That the statutory definition of “process” found in 35 U.S.C. §100(b), not some judicially grafted definition, should governwhat constitutes patent‐eligible processes is confirmed.• The Patent Act specifically provides for special defenses forpatents which cover “a method of doing or conductingbusiness” (35 U.S.C. § 273(b)(1) & (a)(3)).• So, “business method” patents cannot be per se unpatentablesubject matter.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


• This case concerns the ownership of three patents formonitoring the effectiveness of treatments for humanimmunodeficiency virus (HIV).• The patented process was developed by researchers at theLeland Stanford Junior University (Stanford) using federalfunds.• One of those scientists—Dr. Mark Holodniy—performedresearch both at Stanford and at Cetus Corporation(Cetus).• Holodniy executed agreements with both Stanford andCetus regarding rights in his inventions, and a disputesubsequently arose about the ownership of the patents atissue here.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


U.S. District Court forThe Northern District of California• In 2005, Stanford filed suit, alleging that Roche et al. was marketingHIV detection kits that infringed its patents.• Roche et al. counterclaimed, contending that they possessed ownershipinterests in the patents because of Holodniy’s agreement with Cetus.• The District Court rejected Roche’s claim of ownership on severalgrounds.• That Holodniy’s assignment to Cetus was ineffective to convey aninterest in the patents because, under the Bayh‐Dole Act, he lacked anysuch interest to convey.• The Court explained that when “the individual inventor is not acontracting party,” “the Bayh‐Dole Act provides that the individualinventor may obtain title only after the government and the contractingparty have declined to do so.”• Because “Stanford exercised its right and obtained title in the patents”under the Bayh‐Dole Act, the Court concluded, Holodniy “had nointerest to assign to Cetus.”HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


The United States Court of Appeals forThe Federal Circuit 2009• The Court of Appeals affirmed in part, vacated in part, and remanded.• As relevant here, the Court held that Stanford had obtained noownership interests in the patents from Holodniy because Holodniyhad assigned his patent rights to Cetus, leaving nothing for him toassign to Stanford.• The Court explained that the agreement between Holodniy andStanford, in which Holodniy “agree[d] to assign or confirm in writing”any invention he conceived or reduced to practice while at Stanford,was merely a promise to assign his rights “to Stanford at anundetermined time.”• By contrast, the Court viewed Holodniy’s agreement with Cetus—inwhich Holodniy stated that he “will assign and do[es] hereby assign toCETUS” his interest in inventions conceived as a consequence of hisaccess to Cetus facilities and information—as “effect[ing] a presentassignment” to Cetus of his future inventions.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


QUESTION PRESENTED• Whether a federal contractor university's statutoryright under the Bayh‐Dole Act, 35 U.S.C. §§ 200‐212, ininventions arising from federally funded research canbe terminated unilaterally by an individual inventorthrough a separate agreement purporting to assign theinventor's rights to a third party.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


• U.S. Solicitor General, essentially all U.S. Universities, and formerSenator Birch Baye: Federal contractor university's statutory rightunder the Bayh‐Dole Act, in inventions arising from federally fundedresearch cannot be terminated unilaterally by an individual inventorthrough a separate agreement• American Intellectual Property Law Association representing amembership of 16,000+ intellectual property attorneys: Thestatutory language of the Act and its implementing regulations do notsupport an interpretation that title is transferred automatically or byoperation of law from inventors simply because an invention aroseunder Federal funding.HULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


• First‐Inventor‐to‐File• Damages• Enhanced Damages• Third‐Party Challenges to Patent Rights• False Marking• Oath• Best Mode• Fee Setting AuthorityHULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−


William N. Hulsey III, Esq.Principal, HULSEY, P.C.Intellectual Property LawyersThursday, February 24 th 20112011 Intellectual Property & Innovation Presentation SeriesHULSEY IPINTELLECTUAL PROPERTY LAWYERS−IP Professionals for Entrepreneurship’s New Golden AgeTM−

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