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In the wake of the U.S. Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories (March 20, 2012), valuation analysts of medical diagnostics and biotech properties now have to reassess their take on risk.
Michael P. Dougherty of King & Spalding describes how Prometheus may have fundamentally changed the law, making it more difficult to obtain and enforce patent claims that include a law of nature. The decision, which specifically addressed methods to optimize drug efficacy, was of interest primarily to the medical diagnostics industry. However, the Supreme Court, in light of Prometheus, has now vacated and remanded last year’s Federal Circuit finding in Myriad (Association for Molecular Pathology v. U.S. Patent and Trademark Office and Myriad Genetics) that isolated genes and shorter DNA sequences are patent-eligible.
IPNav has developed a useful questionnaire to help IP owners establish a patent monetization strategy. Here are some sample questions:
- What are the patent owner’s financial goals? Is there an immediate need for cash? Is earning a high return a priority? A patent sale and indirect licensing (licensing to a nonpracticing entity that enforces the patent) can bring in cash up front, but at the cost of reduced upside potential.
- How risk-averse is the owner? Patent sales and indirect licensing can be lower risk than direct licensing since these methods produce cash up front.
- How actively does the owner want to be involved in the monetization process? Direct licensing of patents requires the owner to be involved in making decisions about the monetization campaign.
- Is the patent in question on technology that is part of the organization’s core business? Does the organization plan to develop additional technology in this area? If the technology is part of the patent owner’s core business, the owner will need to retain ownership rights or at least broad and irrevocable license rights.
- What is the patent’s remaining economic life? A patent with only a short “shelf life” remaining must be monetized quickly or its value will be lost.
The U.S. Copyright Office issued a policy statement to clarify its practices relating to the examination of claims in compilations, particularly in claims of copyrightable authorship in selection and arrangement of exercises or of other uncopyrightable matter. The statement also clarifies the Office’s policies with respect to registration of choreographic works.
The Copyright Office concluded that a compilation must fall within one or more of the categories of authorship listed in Section 102 of the Copyright Act:
Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.
Thus, the Office will not register a ‘‘compilation of ideas’’ or a ‘‘selection and arrangement of hand tools’’ or a ‘‘compilation of rocks.’’ “Neither ideas, hand tools, nor rocks may be protected by copyright (although an expression of an idea, a drawing of a hand tool or a photograph of a rock may be copyrightable).”
An example of a compilation wherein the registration would be looked upon favorably might be an original compilation of the names of the author’s 50 favorite restaurants. While neither a restaurant (nor the name of a restaurant) may be protected by copyright, the list may warrant registration based on the author’s original selection and/or arrangement of the author’s 50 favorite restaurants.
Another example offered by the Copyright Office involves the ability to copyright the selection and arrangement of preexisting exercises, such as yoga poses. Under the policy stated herein, a claim in a compilation of exercises or the selection and arrangement of yoga poses would be refused registration, since “exercise” is not a category of authorship in the Section 102 list. The Copyright Office would, however, entertain a claim in the selection, coordination, or arrangement of photographs or drawings of exercises.
In another example, the Copyright Office has relied upon Congressional intentions that the subject matter of choreography not include ‘‘social dance steps and simple routines.’’
“A compilation of simple routines, social dances, or even exercises would not be registrable unless it results in a category of copyrightable authorship [it has to reach the level of “choreography,” see Number 4 in Section 102]. A mere compilation of physical movements does not rise to the level of choreographic authorship unless it contains sufficient attributes of a work of choreography. And what are those? “A claim in a choreographic work must contain at least a minimum amount of original choreographic authorship. Choreographic authorship is considered, for copyright purposes, to be the composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole.”
Detailed legislative history available for AIA
Thanks to Dennis Crouch in his blog, Patently-O, for uncovering a useful legislative history of the America Invents Act, written by Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, and recently appearing in the Federal Circuit Bar Journal. Absent judicial review, legislative history is the only way to determine Congressional intent.
Others monitor developments with new generic domain names from ICANN, while Amazon makes a land grab
Expected requests from Amazon for new generic top level domains (gTLDs) might have included “.kindle” and “.amazon.” But Amazon has applied for over 70 domain names from the Internet Corporation for Assigned Names and Numbers (ICANN). (Google has applied for over 100.) If the online sales company gets even some its wishes, we may see a different Amazon in the future. The coveted URLs include the following: .shop, .movie, .app … you get the idea.
NASA creates a technology transfer portal
NASA has created a technology transfer portal to open the agency’s intellectual property assets to others via licenses, patents, and other intellectual property agreements. To access NASA’s technology transfer portal, visit http://technology.nasa.gov
Oracle agrees to accept ‘zero’ damages and prepares an appeal
Oracle told a skeptical Judge William Alsup it agrees to accept “zero” damages for the outstanding copyright infringement claims in its lawsuit against Google over its use of Java in Android. This takes care of all outstanding issues and clears the way for an Oracle appeal.
Anheuser-Busch files trademark registration applications for 42 airports
Clearly Anheuser-Busch/InBev sees growth in localizing its offerings. Last July, it filed trademark registration applications for 14 U.S. telephone area codes. Now it has filed applications for 42 U.S. airports, suggesting it might not be long before, instead of an O’Doul’s or a Michelob, you might be able to order an O’Hare or a Midway in Chicago.
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