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Opposition in the European Patent Office

The EPO opposition procedure provides a relatively easy route for attacking in its entirety the set of National patents resulting from a European patent. It is therefore important to monitor progress of one’s competitors' European Patent applications to ensure plenty of time is available for filing full arguments against the European Patent, before the nine-month opposition period expires.

David I. Huntingford, Esq.

The Likelihood of Confusion Over Trademark Dilution

In 1996, the United States added a new weapon to the arsenal of trademark owners to protect their marks from damaging uses by others. This trademark dilution law is emerging in the United States as a potentially far-reaching means of extending trademark protection beyond conventional boundaries. There are important incentives to learn more about the power and pitfalls of U.S. trademark dilution law since if care is not taken, trademark owners may either see the strength of their marks diminished through imitation or face severe penalties for their own acts of trademark dilution. This article will review the law of trademark dilution, as well as current trends.

Stephanie K. Wade, Esq. and Emerson V. Briggs, Ⅲ, Esq.

Cybor Corp v. FAS: Seizing Control of Claim Construction in the Federal Circuit

With twelve judges sitting en banc, the Federal Circuit U.S. Court of Appeals decided, in Cybor Corp v. Fas Technologies, that claim construction, as a purely legal issue, is subject to de novo review on appeal, and that the Federal Circuit need not defer to a trial court’s claim interpretation. While on its face this decision may appear an uncontroversial and natural extension of Markman v. Westview Instruments, the fact that six different opinions were issued in the case belies a deep division within the circuit regarding the proper role of the Federal Circuit in deciding claim interpretation issues.

Michael K. Kelly, Esq. and Daniel R. Pote, Esq.

U.S. Patent Law and Biopharmaceutical Technology in the 21st Century

Bottlenecks to developing clarity in patent law dealing with the biotechnology industry should be eliminated. The courts must be creative when they address biotechnology, and should not be bound by rules developed for other technologies but conservative in recognizing that the cases presented to them have limited records and they should take small steps in shaping the law. To the extent the courts permit greater numbers of rehearings with friend of the court briefings, the size of their steps in a particular case can be increased. A mechanism is needed whereby an interested third party can effectively challenge a patent’s validity once the USPTO has granted the patent. The current reexamination system in too limited to be of significant use. A sophisticated opposition procedure, such as a modified version of the JPO and EPO procedures would be a good model.

Robert Blackburn, Esq.

The Biotech Written Description Requirement In the United States

The written description requirement for inventions in biotechnology has changed in recent years. With its landmark decision in Regents of the University of California v. Eli Lilly and Co. ('Lilly'), the United States Court of Appeals for the Federal Circuit set forth a rigorous written description requirement that is uniquely applicable to the field of biotechnology. This decision, which follows a series of Federal Circuit rulings in biotechnology cases, raises the hurdle for those wishing to patent inventions in biotechnology. It particularly restricts the validity of broad claims.

James F. Haley, Jr., Esq., Ph.D and Jennifer T. Weissman, Esq., Ph.D.

The Influence of European Court Decisions on Community Trade Mark Prosecution

In the beginning were the Examination Guidelines and these were largely without form or void. Examiners at OHIM trying to make decisions about the registrability of a mark filed by a hopeful proprietor were given principles so broad that the strangest marks became accepted. Certainly the guidelines said for example that a trade mark must not consist exclusively of signs or indications that are used in the trade for the goods or services in question. The examples given however were blindingly obvious as opposed to the type of borderline cases which are so helpful in formulating decisions.

Carrollanne Lindley, Esq.

From the European Licensing Scene

A licensing project and in particular the details of the licensing contract are custom tailored to the specific situation as to the rights and obligations of each party, and particularly in terms of compensation of the licensor. The negotiation of a license contract and in particular of the financial terms is sometimes a sort of power play, especially if one side is more interested in the deal than the other, because a so called "typical" license fee does not exist, and the actual figures need to be determined individually for each case.

Bernhard A. Kugele, Esq., Ph.D.

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