Dale L. Carlson 1 and Robert A. Migliorini 2

On September 1, 2005, Representative Lamar Smith introduced a “Coalition Print” version of a patent reform bill (Substitute bill H.R. 2795) into Congress.  That bill included a post-grant opposition procedure not later than nine months after grant.  On April 5, 2006, Representative Howard Berman introduced the “Patents Depend on Quality Act of 2006” (H.R. 5096 - the “PDQ Act”) into Congress.  The proposed PDQ Act includes a so-called “second window” for bringing an opposition, namely within six months of the alleged infringer's receiving notice of suit.

The concept of a post-grant review procedure has the support of the Director of the United States Patent and Trademark Office, Jon Dudas, and warrants consideration by the patent community at large.  The authors submit that the form and substance of any such post-grant review procedure are critical elements to its success.  The authors submit that the review procedure should not take the form of an “opposition” protocol, but rather should be woven into the existing inter partes reexamination procedure.

The authors recommend an alternative administrative patent invalidation system that differs from those suggested in the H.R. 2795 and H.R. 5096 bills.  As backdrop for the authors' proposal, the strengths and weaknesses of the existing inter partes and ex parte reexamination procedures for challenging a patent are explored.  International systems for challenging patents in Europe, Japan, China, and Taiwan are also benchmarked.  The European post-grant opposition, unlike the proposed United States system, does not include estoppel with respect to subsequent litigation, and thus does not preclude raising in the litigation the same issues of law and fact argued in an opposition proceeding.

Due to negative experiences, Japan and China have abolished their time-limited post-grant opposition systems in favor of a single non-time limited patent invalidation system.  Other potential problematic aspects associated with the proposed United States post-grant system include:  the nine-month time limitation for filing an opposition request, the lack of qualified PTO resources to adequately support a completely new system, overlap and redundancy with existing reexamination systems, and a lack of consistency with the invalidation system of one of our tripartite partners, namely Japan.

To resolve these issues, the authors propose a non-time limited invalidation system that is based off of the existing inter partes reexamination framework.  The proposed system is a 'hybrid'-combining many of the beneficial aspects of the proposed United States opposition system with the existing inter partes reexamination system.  The proposed changes to inter partes reexamination include, inter alia, making the system retroactive to patents issued from applications filed prior to November 29, 1999, expanding the grounds to be consistent with statutory patentability requirements, expanding the scope of evidence considered, expanding third party involvement via oral hearings and deposition testimony, and modifying the current estoppel provision to include only legal determinations relative to invalidity of issues actually raised in the proceeding.  The proposed invalidation system would provide a speedy, simple, low cost, and efficient method of challenging United States patents to increase their quality and certainty while obviating the overlap and redundancy associated with having both a United States post-grant opposition system and an inter partes reexamination system.

Andrés Guadamuz González 1

In recent years, there has been growing interest in the area of open source software (“OSS”) as an alternative economic model.  However, the success of the OSS mindshare and collaborative online experience has wider implications to many other fields of human endeavor than the mere licensing of computer programmes.  There are a growing number of institutions interested in using OSS licensing schemes to distribute creative works and scientific research, and even to publish online journals through open access (“OA”) licenses.  There appears to be growing concern in the scientific community about the trend to fence and protect scientific research through intellectual property, particularly by the abuse of patent applications for biotechnology research.  The OSS experience represents a successful model which demonstrates that IP licenses could eventually be used to protect against the misuse and misappropriation of basic scientific research.  This would be done by translating existing OSS licenses to protect scientific research.  Some efforts are already paying dividends in areas such as scientific publishing, evidenced by the growing number of OA journals.  However, the process of translating software licenses to areas other than publishing has been more difficult.  OSS and OA licenses work best with works subject to copyright protection because copyright subsists in an original work as soon as it is created.  However, it has been more difficult to generate a license that covers patented works because patents are only awarded through a lengthy application and registration process.  If the open science experiment is to work, it needs the intervention of the legal community to draft new licenses that may apply to scientific research.  This article will look at the issue of such OA licenses, paying special care as to how the system can best be exported to scientific research based on OSS and OA ideals.

Sara Ayazi 1

In Kelly v. Arriba Soft Corp., the Ninth Circuit held that search engines' reproduction of images for use as thumbnails is a fair use under the Copyright Act.  This Recent Development critiques the Ninth Circuit's analysis in determining whether a search engine infringed on a copyright holder's rights.  The author proposes that this ruling broadened the scope of fair use on the Internet.  As a result, Kelly does not fulfill copyright law's goal of providing a balance between the rights of the copyright holder and the rights of the general public.  However, a recent ruling against the search engine Google may be one of the first steps toward curtailing search engines' power.  

Doug Ferguson 1

The GNU General Public License (“GPL”) is the most popular license in use for free and open-source software projects.  Now in its fifteenth year, the GPL has endured both practical and legal challenges and today enjoys widespread use and a reputation as a legitimate legal instrument.  However, recently proposed changes to the GPL will harm this reputation and may prove counterproductive to the GPL's continued acceptance.  This Recent Development will briefly introduce the GPL and examine some of the more problematic changes of the proposed GPL.  Finally, this Recent Development will propose revisions which will allow the GPL to continue enjoying the legitimacy it has earned, while maintaining consistency with both its past and future intended effects.

Aaron R. Harmon 1

Methamphetamine labs can be set up anywhere.  One batch of methamphetamine produces five to seven pounds of toxic byproduct.  These contaminants are often dumped at the production site and, along with airborne contaminants from the cooking process, leave behind a “methfield.”  States have developed widely divergent standards for methfield remediation.  This Comment examines the solution proposed under the Methamphetamine Remediation Research Act of 2005 (“MRRA”).  Part II provides some background on methamphetamine use, production, and cleanup.  Part III reviews how methfields have been addressed by state and federal agencies.  Part IV evaluates the MRRA and assesses its potential contributions to the methfield remediation movement.  Parts V and VI critique the MRRA, identifying potential weaknesses and outlining opportunities for improvement.

Eva Lorenz 1

This Comment focuses on the problems associated with the use of employment-based genetic testing.  Recently, the German National Ethics Council (“NEC”) drafted a list of recommendations to regulate the use of predictive testing in the workplace.  This problem of genetic testing is not limited to Germany-similar cases have been reported in the United States.  The lack of a federal framework to regulate the use of genetic testing in the workplace creates uncertainty for employees and employers.  Though it is likely that any federal framework will require amendments, the increased certainty associated with a uniform federal law will likely outweigh any shortcomings.  This Comment analyzes the recommendations of the NEC as a possible blueprint for a uniform law in the United States.