Tuesday, December 13, 2005

Catenated misquotations in law reviews?

In "Application of the Government License Defense to Federally
Funded Nanotechnology Research: The Case for a Limited Patent Compulsory
Licensing Regime," 53 UCLA L. Rev. 279 (Oct. 2005), we have the text:

As described in the introduction of this Comment, the rate of
nanotechnology patent applications and patent issuances is increasing. The USPTO patent grant rate for the entire pool of applications is approximately 52 percent per year, and the likelihood of a single, diligently prosecuted patent being granted over the course of the years it is reviewed at the USPTO may be as high as 97 percent (taking into account continuing patent applications). n45

n45. In 2003, the USPTO granted 173,072 of the 333,452 utility,
plant, and reissue patent applications it received for an approval rate of approximately 52 percent. See U.S. Patent & Trademark Office, Fiscal Year 2003, supra note 14. For discussion of the 97 percent grant rate, see Note, Estopping the Madness at the PTO: Improving Patent Administration Through Prosecution History Estoppel,
116 Harv. L. Rev. 2164, 2165 (2003) (citing Cecil D. Quillen, Jr. &
Ogden H. Webster, Continuing Patent Applications and Performance of the U.S. Patent Trademark Office, 11 Fed. Cir. B.J. 1, 12-13 (2001-2002)).

**One notes that the 97% number of Quillen and Webster had been modified by Quillen and Webster before the 2003 "Estopping the Madness at the PTO" Note and long before the 2005 UCLA paper. The UCLA paper does not cite the second Quillen/Webster paper, the Clarke paper, or my three papers. It cites the Harvard note as the primary reference, even though the Harvard note does not support the proposition, and the Quillen/Webster article certainly does not support the proposition.

**Separately, footnote 77 states:
See Barry Newberger, Intellectual Property and Nanotechnology,
11 Tex. Intell. Prop. L.J. 649, 656 n.6 (2003) ("The "experimental use defense' to infringement should not be confused with the experimental use "exception' to [patent novelty-related] anticipation under 35 U.S.C. 102.").

Quite correct. One does recall that a well-known IP person cited to Pfaff to draw a conclusion about the experimental use defense to infringement.

**The article also mentions the CIPRO saga.

Consider the case of Bayer Healthcare, patent holder for the
antibiotic Cipro for the treatment of inhaled anthrax. In 2001, the federal government needed large quantities of Cipro fast and did not care who made it - the government felt it had a right based on need in the public interest of health and safety to insist that Bayer make it available or it would go to generic drug manufacturers.

Id. On government use, see 28 U.S.C. 1498(a) (2000) (giving patent
holders the right to sue and claim compensation for the federal government's unauthorized use of a patent, or the government's licensing of a patent to third parties acting by or for the government). This code is not relevant in the context of this Comment, as the government has explicit authorization for the use of funded patents under the Bayh-Dole Act, 35 U.S.C. 202(c)(4). On atomic energy, see The Atomic Energy Act, 42 U.S.C. 2183(e). On aerospace, see 42 U.S.C. 2457. On national security, see 35 U.S.C. 181.

Of anthrax/CIPRO, recall my article "Where have you gone, Richard K. Lyon?" IPT, p. 20 (Dec. 2001) and of avian flu/Tamiflu, see my article in the Nov. 2005 issue of IPT ("You only look twice," pp. 18-19).


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