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Volume 3 | Number 2

Volume 3 | Number 2 (Spring 2003)

You may download and read the Full Edition, or click on a citation below for the individual articles.

PROSECUTION LACHES:
CAN AN EQUITABLE DEFENSE WORK IN MODERN PATENT PRACTICE?
David R. Higgins
3 Wake Forest Intell. Prop. L. J. 79

This paper discusses the recent Federal Circuit decision in Symbol Technologies, Inc. v. Lemelson Medical, Education & Research Foundation in light of modern patent practice. The court’s holding expressly permits a party to a patent infringement claim to raise the defense of prosecution laches as a means of invalidating an otherwise enforceable patent. First, the author discusses the facts, holding, and historical context that led to the controversial decision. The author proceeds to discuss precedential justifications for the Federal Circuit holding. An assessment of some of the criticisms inspired by the holding follows. The author concludes with an analysis regarding the current parameters of the doctrine in modern patent practice as well as a prediction regarding the continuing vitality of the doctrine.

THE HATCH-WAXMAN ACT: A DELICATE BALANCE BETWEEN COMPETING NEEDS
Anna Carr
3 Wake Forest Intell. Prop. L. J. 100

This paper examines the effect of the Hatch-Waxman Act on pharmaceutical patents and the production of generic drugs. The author begins with a historical look at the enforcement of pharmaceutical patents prior to the Hatch-Waxman Act. This is followed by an analysis of critical portions of the Hatch-Waxman Act and a discussion of several enforcement problems that have arisen as a result of antitrust violations and complications resulting from the Uruguay Round Agreements Act (URAA). The author concludes with a look to the future of the Act, including a summary of proposed legislation amending the Act. Although such legislation is unavoidable, the author cautions that the legislature must strive to ensure that any amendment continues to balance the needs of the industry with the public desire for inexpensive prescription drugs.

CONFLICTS BETWEEN THE ON SALE BAR TO PATENTABILITY AND MODERN SUPPLY CHAIN MANAGEMENT TECHNIQUES
Jitendra Malik
3 Wake Forest Intell. Prop. L. J. 121

Modern business practices have revolutionized the way American businesses compete in the global market. Three such business practices are the Keiretsu system, Transfer pricing, and Activity Based Costing. The Keiretsu system involves independent companies forming one large “super” company, though each until still maintains its own independence. Transfer pricing methods involve one large company requiring each of its internal units to act as independent companies, even though each unit still shares the same corporate owner. Activity Based Costing describes a method to assign costs more specifically to the products that generate them. However, while these business practices may increase a company’s competitive position, when innovations occur within a business that employs one of these business methods, the inherent structure of the business method may raise on sale bar to patentability concerns. This paper explores the impact of the on sale bar to patentability to these three business practices.