Intellectual Property Boston College Law School March 12, 2007 Patent – Defenses, Remedies

Defenses Defenses to infringement action –Experimental Use –Inequitable Conduct –Patent Misuse

Patent Misuse Types of activity implicating patent misuse –Extension beyond patent term (impermissible) –Tying to staple article (impermissible) –Tying to non-staple article (permissible) –Non-metered licenses (impermissible) –Grant-back clauses (permissible) –Field of use restrictions (permissible, ususally) –Patent suppression (permissible)

Patent Law - Remedies Injunctions –Preliminary Reasonable probability of success Irreparable harm if no injunction (presumed) Possibility of harm to third parties Public interest –Permanent

International Patent Law Governed by each country’s domestic patent laws Major differences –Most have first to file systems –No one-year grace period after public use,... –Most permit prior users rights

Treaties Paris Convention –Once file in a member country, get priority date –Have one year to file in other country –Shielded from consequences of publication, etc. Patent Cooperation Treaty –File separate document with domestic agency –Gives additional 20 months to file –Up to 30 months if file earlier

Substantive Minima GATT-TRIPS imposes certain minima –Cover all important commercial fields –Test patents for inventive step, application –Include right to control imports –Curtail use of compulsory licenses Changes in U.S. law –Patent term now 20 years from application –Open up first to invent to foreign inventors –Provide for provisional applications –Publication after 18 months of filing, for patent applications that are also filed overseas

Administrative Assignment for next class –Begin new section on Software Read into V.B.1 – Copyright Scope – through Computer Associates and Problems.