07/11/2018

MORTIMER D. LEGGETT 1871-1874

General Mortimer D. Leggett, the thirteenth Commissioner of Patents, while demonstrating unusual ability in several fields of activity, came into his greatest prominence in his military career, and it is as a soldier that he is most widely known.

He was a warm friend of Gen. U. S. Grant and it is said when Grant became president Gen. Leggett was offered several desirable positions, but stated that there was but one particular office which he would like to hold and if it became vacant he would be glad to be considered for it, and that was the office of Commissioner of Patents. When this office became vacant by the resignation of Mr. Fisher, Gen. Leggett was appointed, his term extending from January 16, 1871, until his resignation November 1, 1874.

07/09/2018

Two’s Company: The Rise in Chinese PCT Participation and What it Means for Japan

Kevin Eugene Thomas Cunningham Jr.

Japan leads the rest of Asia and much of the world when it comes to participation in the Patent Cooperation Treaty in both total applications as well as national phase entries. However, China is swiftly making strides in its own patent regime, and has overtaken Japanese participation in the PCT in many key industries. This paper explores possible reasons why the Chinese have been able to overtake the Japanese in particular fields through looking at both historical and modern understandings of intellectual property rights. Additionally, this paper will explore whether or not Japanese PCT hegemony in Asia is waning in favor of China through statistical analysis of Japanese and Chinese filing trends in various PCT fields. Finally, this paper will examine whether Japan needs to take any affirmative steps to protect its PCT superiority, and if so, it will suggest potential actions to further that goal.

07/03/2018

SAMUEL SPARKS FISHER 1869-1870

The occasion needed the man, and when it was announced that Col. Fisher was persuaded to take the Commissionership, satisfaction among the friends of the patent system was universal and heartfelt. His administration of the Patent Office marked a turning point in its history. He was instrumental in obtaining remedial legislation and instituting reforms in the processes and conduct of the Office that were not only essential to correct manifest abuses that had been gradually acquired, but which placed it upon a higher plane of usefulness and efficiency than it had ever attained before.

07/02/2018

2 + 2 = 5: The Canadian Patent Agent Examination Board and the Doctrine of Essential Elements

Wissam Aoun

Tremendous confusion has revolved around the theory and application of the doctrine of essential elements in Canadian patent law ever since the Supreme Court of Canada first introduced the doctrine in Free World Trust c. Électro Santé Inc. In recent years, the Canadian Intellectual Property Office’s (CIPO) interpretation and application of the doctrine in its patent application examination guidelines has been the subject of considerable criticism from the Canadian patent profession. However, CIPO’s misapplication of the doctrine in recent years’ Patent Agent Qualifying Examination has received relatively little attention. This paper examines the application of the doctrine of essential elements in recent years’ Canadian Patent Agent Qualifying Examination. The analysis begins with a thorough and comprehensive review of the doctrine of essential elements under Canadian patent law. The analysis reviews the last ten years’ Canadian Patent Agent Examination, with a focus on recent years’ emphasis on the doctrine of essentiality. Despite the fact that the doctrine itself is still unsettled under Canadian law, the approach taken on recent years’ Patent Agent Exams is at best an ambiguous, and at worst an inaccurate application of the doctrine. This paper concludes by demonstrating that the concerns surrounding the doctrine of essentiality may be significant contributing factor to invalidity issues surrounding recent years’ Patent Agent Exams.

06/26/2018

ELISHA FOOTE 1868-1869

Elisha Foote, the eleventh Commissioner of Patents, may be regarded as being the last Commissioner of the "old regime", prior to the revised laws of 1870. His term of office covered the period from July 25, 1868, to April 25, 1869, the interval between his term and that of his predecessor, Commissioner Theaker, being supplied by the Chief Clerk of Theaker's administration, who held the office of Acting Commissioner from January 20 to July 24, 1868.

06/25/2018

Lexmark, The Overruling of Mallinckrodt and The Future of Restraints on Alienation For Patented Goods

James B. Kobak, Jr.

The Supreme Court in its recent Lexmark decision ruled unanimously (with Justice Gorsuch not participating) that a patent owner could not enforce contractual restrictions on resale of patented products in domestic transactions through patent infringement suits because all patent rights were exhausted by the first sale. This decision, authored by Chief Justice Roberts, rejected the theory, articulated by the Federal Circuit in Mallinckrodt v. Medipart, Inc. more than twenty five years ago: that a patent owner could circumvent exhaustion by conditioning a grant of its patent rights in a sales agreement as a legitimate means of obtaining compensation for the value of its invention. The Supreme Court decisively rejected the logic and the treatment of earlier precedent used in the Mallinckrodt opinion along lines that I had criticized at the time and others have criticized since to little avail, until now, over a quarter century later.

06/20/2018

THOMAS C. THEAKER 1865-1868

The Civil War having given an impetus to creative genius as applied to the useful arts, entirely without precedent, it was to the problems of this period that the tenth Commissioner of Patents turned his attention, his term of office being recognized as one of the most important, in one aspect, in the history of the Patent Office.

06/18/2018

Patent Holder’s Equitable Remedies in Patent Infringement Actions Before Federal Courts and the International Trade Commission

Richard L. Stroup, Susan Tull, Mindy Ehrenfried

A United States patent grants the patent holder the right to exclude others from practicing the claimed inventions within the territorial limits of the United States. When its patent is infringed, the patent holder can seek remedies in the form of monetary recoveries or equitable relief. This article addresses the equitable relief the federal courts or the United States International Trade Commission (“ITC”) can grant. That relief can be in the form of injunctions, orders, or even monetary awards, granted in equity.

The patent statute provides that an issued patent "shall contain … a grant to the patentee of the right to exclude others." It provides that the federal courts “may grant injunctions in accordance with the principles of equity.” And for actions before the ITC, the statute provides that that Commission “shall” enter an exclusion order, after a trial finding a violation, and “may” enter a preliminary order, before trial–if in both instances the patent holder can prove it has a domestic industry in the United States and the public interests or the President’s review do not preclude entry of such injunctive relief.

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