Trade law Part 62

English Trade Mark Law in the Eighteenth Century: Blanchard v Hill Revisited – Another ‘Case of Monopolies’?
Norma Dawson
Journal of Legal History
Volume 24, Number 2, August 2003 p.111-142

LIABILITY FOR THE “THREAT OF A SALE”: ASSESSING PATENT INFRINGEMENT FOR OFFERING TO SELL AN INVENTION AND IMPLICATIONS FOR THE ON-SALE PATENTABILITY BAR AND OTHER FORMS OF INFRINGEMENT
Timothy R. Holbrook
Santa Clara Law Review
Volume 43, Number 3, 2003 p.751

The class of conduct that constitutes patent infringement has evolved since the Patent Act was adopted in 1952. In 1994, Congress amended 35 U.S.C. § 271(a) to include an offer to sell a patented invention as a form of infringement pursuant to our obligations under the Trade-Related Aspects of Intellectual Property agreement (TRIPS). This article addresses this new form of infringement and reaches two conclusions: that commercialization, and not merely a formal commercial offer, should constitute an infringing “offer,”and that an enabling disclosure, rather than a physical embodiment of the accused device, should be sufficient for infringement. With regard to assessing what constitutes an infringing “offer,”the article evaluates three sources. First, the article compares infringement by offers to sell with the on-sale bar to patentability of 35 U.S.C. § 102(b), which precludes patentability if the invention was on sale more than one year prior to the filing of a patent application. Second, since the purpose of this amendment was to harmonize U.S. law with the international standards adopted in TRIPS, the article compares the international and domestic standards for sales and offers to sell. Third, the article evaluates the economic consequences of an infringing “offer to sell”to determine the threshold of infringement necessary to cause the patent holder injury sufficient to require redress. Weighing these three sources, the article concludes that the present standards for both infringement for offers to sell and the on-sale bar are insufficient; a broader “commercialization”standard should be used in lieu of the present requirement for a formal commercial offer. In addressing the article’s second conclusion-that a physical embodiment of a device is not required for infringement-the article reviews the traditional standard that required a complete, tangible embodiment of the invention for a finding of infringment. The addition of “offers to sell”as a form of infringement suggests that this requirement is antiquated. The article posits that, for infringing offers to sell and sales, a physical embodiment is not required; a disclosure sufficient to enable one of ordinary skill in the technological field to make the invention should suffice.

PRESUMED FUNCTIONAL UNTIL REBUTTED: THE INCREASED DIFFICULTY OF OBTAINING TRADE DRESS PROTECTION WITH AN EXPIRED UTILITY PATENT
Nancy Sya
Santa Clara Law Review
Volume 43, Number 3, 2003 p.971

A subset of trademark law, the law of trade dress protects the total image of a product, enabling consumers to identify the source of the product. Recently, trade dress has evolved into a complex and contentious area of intellectual property law, in which enormous interests are at stake. Recently, the Supreme Court reshaped the law surrounding trade dress in Traffix Devices, Inc. v. Marketing Displays, Inc. Representing a departure from many federal circuit court decisions, the Court compared the functionality of the disputed feature with the presumption of functionality of that feature’s functionality stemming from an expired utility patent claiming the feature. The decision left significant room for debate, and intellectual property scholars and practitioners were left to sort out the future of trade dress cases as it relates to trademark and patent law. The Court’s ruling left more questions than answers because it did not effectively balance the overall aims of trademark and patent law. The ruling prevented the subversion of patent law through the trade dress loophole, while leaving consumers and businesses open to uncontrolled product design copying. As Congress and the courts further refine the definition of functionality, a stronger emphasis should be placed on the balancing of trademark and patent law interests and the promotion of a consistent, compatible, and harmonized policy applicable to both trademark and patent law. While this area of law will evolve and eventually develop greater clarity, at present companies are likely to use their competitive advantages both to protect their respective investments and market their products.

A DIGITAL FREE TRADE ?ONE AND NECESSARILY-REGULATED SELF-GOVERNANCE FOR ELECTRONIC COMMERCE: THE WORLD TRADE ORGANIZATION, INTERNATIONAL LAW, AND CLASSICAL LIBERALISM IN CYBERSPACE
Kristi L. Bergemann
John Marshall Journal of Computer & Information Law
Volume 21, Number 4, Summer 2003 p.595

Author: international

.

Mentioned in these Entries</h.

Mentioned in these Entries</h.

Mentioned in these Entries</h.

Mentioned in these Entries</h.

Mentioned in these Entries</h.