Monday, November 22, 2004

The Oddzon precedent soon to be removed by statute?

The decision in OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 43 USPQ2d 1642 (CAFC 1997) has generated much discussion. [for example, L.B. Ebert, Written Description: Circumscribing Possession to Prevent Overreaching, Intellectual Property Today (October 2000).]

It now appears the controversial holding of the case may be reversed by statute.

from the Washington Post:

In its Oddzon decision, the Court of Appeals for the Federal Circuit found that the inventor of the Vortex ball, a patent for which was held by OddzOn Products Inc., derived the invention with the help of research collaborators who shared confidential designs among each other.

In a challenge from a rival toymaker, the court found that the information shared by the inventors could be considered evidence that the invention was not original, and thus the patent could be revoked.

Essentially, the ruling meant that sharing of information among researchers, even confidentially, could lead to challenges to the validity of patents by parties who had nothing to do with the original patent.

"It was the sword of Damocles hanging over the heads of universities that engage more and more with other universities and companies," said Andrew Cohn, spokesman for the Wisconsin Alumni Research Foundation [WARF], which coordinates patents for University of Wisconsin at Madison.

The bill, which had broad, bipartisan support, changed U.S. patent law to eliminate the threat of such challenges. [The bill remains to be signed by President Bush.]

"Today's biotech, pharmaceutical, and nanotechnology companies are among the foremost users of collaborative research strategies," Rep. Lamar S. Smith (R-Tex.), the bill's chief sponsor in the House, said in a statement.


The President signed the Cooperative Research and Technology Enhancement (CREATE) Act of 2004 into law on December 10, 2004. The Act extends the safe harbor provision of 35 U.S.C. 103(c) that shields patent claims from certain types of secret prior art. Under the new law, secret prior art of another is excluded as long as the claimed invention was made under a joint research agreement and the application discloses the names of the parties to the agreement.


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