The Federal Circuit recent decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., held that methods of doing business can now be protected so long as they meet the other requirements of patentability set forth in Title 35, i.e., sections 102, 103 and 112. This development will create both opportunities and risks, especially in e-commerce and for financial institutions and other organizations dependent on the computer execution of business methods.

Neil A. Duchez, Esq.

Due to the national nature of the rights granted, enforcement actions had to be taken in separate jurisdictions but in the 1980s the District Court of the Hague in the Netherlands started to grant Europe-wide injunctions. In 1998, the Dutch Court of Appeal decided that the approach of the District Court of the Hague was incorrect and that it would rarely be appropriate for a single Court to grant a pan-European Injunction. At the same time, the English Courts’ traditional reluctance to decide cases involving foreign intellectual property matters is changing. Meanwhile the European Courts continue to wait for a definitive ruling from the European Court of Justice on the legality of cross border injunctions.

Brian Cordery, Esq. and Penny Gilbert, Esq., Ph.D.

The emergence of numerous genomics companies engaged in large-scale, high throughput sequencing of organisms' genomes, coupled with patenting the sequenced DNA fragments, has set off a storm of controversy as well as a wealth of business opportunities in the field of bioinformatics. Whether you are presently involved in bioinformatics or just planning to enter this field, it is important to have an overview of the recent developments and future directions from an intellectual property perspective. This article addresses how a genomics company should structure its intellectual property portfolio to capitalize on this rapidly evolving field. This article also identifies possible niches for start-up bioinformatics companies.

Thomas E. Ciotti, Esq., Ph.D. and Karen Wong, Esq., Ph.D.

Overseas clients frequently ask questions about the merits of obtaining Community Trade Mark Registrations (CTM’s) through the Community Trade Mark Office (OHIM). In this brief article, the author attempts to indicate some of the advantages and disadvantages of protecting trade marks by a CTM and the introduction of the Community Trade Mark system has proved, and will continue to prove, exceedingly popular with trade marks owners.

Roger D George, Esq.

"Enact strategy broadly, correctly and openly." Miyamoto Musashi 1584 1645 A.D. Musashi, one of Japan's most celebrated samurai warriors, penned this conclusion to his classic text, The Way of the Sword. It would be timely for foreign patentees to remember Musashi’s words when implementing patent litigation strategies in order to effectively compete in Japan and the overall global markets. Just as Japanese companies have become well adapted to doing business in the US or EU using their respective legal systems to protect their IP interests, there are emerging trends that patentees in Japan have taken to enforcing their patents in Japan with a vengeance. Most have successfully made the transition from consistently avoiding legal action to aggressively taking the offensive in seeking legal relief in Japanese courts against Japanese patent infringers.

Shusaku Yamamoto, Esq. and John A. Tessensohn, Esq.

In an important trademark decision, JONES NEW YORK, Heisei 10 (gyo-ke) 330 dated February 2, 1999, the Tokyo High Court was successfully persuaded by trademark counsel to favorably consider evidence of shopping and retail patterns of Japanese tourists outside Japan. The Court held that these TV news reports documenting Japanese shoppers frequenting and visiting outlet malls were material in determining whether the mark was well known amongst Japanese consumers in general.

Shusaku Yamamoto, Esq. and John A. Tessensohn, Esq.

There has been a slow but sure transformation in Japanese patent litigation in relation with the interpretation of claims. It was long held that Japan did not provide sufficient protection due to Japan's narrow scope of claims. But Japan's Supreme Court has already adopted that the Doctrine of Equivalents is now applicable under Japanese law. This article will explain the claim interpretation under literal infringement as well as how the Japanese district courts have recently applied the doctrine of equivalents.

Shusaku Yamamoto, Esq. and John A. Tessensohn, Esq.