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Highlights of the latest commercial leasing cases from around the country.

It is no secret that more than a few biotech and pharmaceutical companies perform drug discovery offshore and then import the results. Holders of U.S. patents on drug discovery tools (such as molecular screening methods) have wondered for years whether data or drugs resulting from such activities constitute a "product made" under The Process Patent Amendments Act of 1988 (the "Act"). The Court of Appeals for the Federal Circuit ("Federal Circuit") &mdash; in a setback to the U.S. drug discovery industry &mdash; has now held that they do not. <i>See Bayer AG v. Housey Pharm., Inc.,</i> 340 F.3d 1367 (Fed. Cir. 2003).

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In a decision interpreting Section 2(e)(3) of the Lanham Act (15 U.S.C. &sect;1052(e)(3)), the Federal Circuit Court of Appeals has adopted a new three-part test to be used by the U.S. Patent and Trademark Office (PTO) in determining whether a trademark is "primarily geographically deceptively misdescriptive" ("misdescriptive"). <i>In re California Innovations, Inc.,</i> 329 F.3d 1334 (Fed. Cir. 2003). The Federal Circuit held that the amendments to the Lanham Act resulting from the North American Free Trade Agreement (NAFTA) changed the rules under which the PTO may deny registration to misdescriptive marks.

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Highlights of the latest intellectual property news and cases from around the country.

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On September 26, 2003, the Federal Circuit decided <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,</i> 344 F.3d 1359 (Fed. Cir. 2003), which was on remand from the Supreme Court. In its opinion, the Federal Circuit summarized the current law on prosecution history estoppel and shed some light on the applicability of the Supreme Court's criteria for rebutting the presumption of total surrender that results when a narrowing amendment is made for reasons substantially related to patentability. The Federal Circuit's decision appears to be directed toward a very limited exception to the total surrender presumption, and the minority opinions illustrate that there is tension within the Federal Circuit regarding the approach to barring equivalents.

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In October, the FTC issued a report titled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy." Citing an existing system that relies on presumptions in favor of the issuance and validity of patents and that makes challenges to the validity of existing patents difficult and costly, the report contains specific recommendations on what the FTC considered to be improvements to the U.S. patent system. The report comes nearly 1 year after the FTC and the DOJ completed a series of public hearings on the proper balance between patent and antitrust law with an aim to foster innovation and maximize consumer welfare. The hearings, which took place over 24 days between February and November of 2002, attracted the participation of more than 300 panelists and more than 100 written submissions from business representatives, the independent inventor community, and leading patent and antitrust practitioners, scholars and organizations.

From humble beginnings in 1951 when the first blackboard was used in a courtroom, visual props have evolved in sophistication. The blackboard led to flip charts and photo enlargements, overhead projection, the playing of videotapes and now to the integration of sight and sound with electronic slide presentations. While props in the courtroom provide razzle-dazzle to keep jurors attentive, they should never be overlooked in situations such as settlement conferences, mediations and arbitrations where strict evidentiary rules do not apply.

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When patent issues arise, clients often need both trial counsel and opinions of counsel. Opinions are primarily needed for: 1) advice on how to avoid infringement; 2) assessment of liability risks and potential outcomes of infringement lawsuits; and 3) protection against a finding that any infringement was willful. Trial counsel are needed when a patent infringement suit is threatened, imminent, or instituted. This article discusses the advantages of employing the same attorney or law firm as both opinion counsel and trial counsel. It explains why disqualification of counsel is not as much of a concern as some commentators emphasize. Finally, it analyzes the issues surrounding attorney-client privilege and work-product protection and concludes that the dangers are minimal with experienced trial counsel.