Impact of 'Hilton Davis' on biotech is unclear; 'all-elements rule' upheld bu the high court may not be easy to apply to a DNA sequence
Article Abstract:
The US Supreme Court reaffirmed the "all-elements" rule part of the doctrine of equivalents in its 1997 ruling in Warner-Jenkinson v. Hilton Davis Chemical Co., however, the impact on the biotechnology industry is unclear. The rule may cause confusion in the biotechnology industry since inventions in molecular biology are difficult to define in terms of fixed elements as the court requires. The court held that intent should not be considered when deciding infringement under the doctrine of equivalents. The court did, however, say that evidence of independent experimentation could help prove a lack of equivalence between the accused device and that under patent.
Publication Name: The National Law Journal
Subject: Law
ISSN: 0162-7325
Year: 1997
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In light of fast-changing technology, inventors might consider reviewing their applications before the patents are granted, and filing continuing applications
Article Abstract:
Inventors and corporations should file continuing patent applications, even while initial patent proceedings are taking place, as a means of providing themselves with wider protection. Both inventors and management need to track the patent application and communicate with patent attorneys after the filing. A patent review process ensures subsequent inventor improvements can be incorporated into the patent application, which typically takes 18 months to approve. Markets and technology can evolve quickly, so the broadest patent protections are needed to deal with competitors. Reissue proceedings are also crucial, as evidenced by the 1997 Graff case.
Publication Name: The National Law Journal
Subject: Law
ISSN: 0162-7325
Year: 1997
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PTO, courts broaden rights of biotech inventors; changes in the law have paved the way for the allowance and enforcement of new claims
Article Abstract:
The courts and the US Patent and Trademark Office are developing a more detailed patent law model for the biotechnology industry, with developments occurring in areas such as enablement, claim construction, written desciption, utility and obviousness. Biotechnology patent attorneys used to have a hard time obtaining patent protection. When the industry was starting out, the threshold issue was the patentability of life forms. 16 years later, biotechnology patents have become common, but patent owners still face challenges, mainly in obtaining sufficiently broad claims to grant commercially viable protection.
Publication Name: The National Law Journal
Subject: Law
ISSN: 0162-7325
Year: 1996
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