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In last month's issue, we discussed the prerequisites for a patentee to recover a royalty for his provisional rights. Provisional rights are intended to give a patent applicant interim protection for the disclosure of his invention from the date on which a patent application is published through the date of patent issuance. In the absence of provisional rights, infringement of the invention as published in the patent application would leave the patentee without redress for infringement while the application is being prosecuted. Without provisional rights, the patentee can stop infringement when a patent issues, but cannot seek compensation for prior infringement of the published patent application. <br>To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the American Inventors Protection Act of 1999. Notable among a patent applicant's provisional rights is the right to assess a "reasonable royalty" for use of an invention as claimed in the published application. 35 U.S.C. &sect;154(d) (2000). As the Director of the USPTO commented, "In practice, this would serve as a brake on potential infringers ... from blatantly infringing because they know once the patent is issued, they're liable [for infringing the patent application]." Sabra Chartrand, <i>A New Law Removes Some Secrecy From the Applications</i>, N.Y. Times, Dec. 4, 2000, at C6. <br>Last month's installment of this article described the prerequisites required to raise a patentee's provisional rights. First, the USPTO must grant a patent from the patent application. Second, the accused infringer must have actual notice of the published patent application. Third, provisional rights are only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. Last month's installment also described the nuances of each requirement, and also explored unsettled legal questions relating to each. This month's article explores the interplay between the publication requirement and the Provisional Rights Subsection.

When considering a broadening reissue application, patent owners often confront a recurring issue: Can a limitation added or argued during prosecution of an original patent to gain allowance over prior art later be broadened during reissue? Recent developments in case law at the Federal Circuit Court of Appeals and U.S. Patent and Trademark Office ("USPTO") suggest a way to permissibly broaden such limitations through reissue and still avoid recapture. We call it reclaiming the ring.

Some recent estimates suggest that by 2007 brand name pharmaceutical companies will lose more than $80 billion in drug sales because of patent term expirations. Patent term expirations, of course, usher the entry of generic drugs into the marketplace. On average, the market share for branded products decreases by 15% to 30% when a first generic version reaches the market, and as much as 75% to 90% when subsequent generics launch. Such significant losses provide incentive to extend patent life and maximize the period of market exclusivity for a patented drug.

Your client International Marketers, Inc. (IMI) owns U.S. and foreign patents for an improved football. IMI wants to license the patent and make direct sales of identical balls around the world, while making its own sales to the U.S. market. However, IMI knows that the price consumers will pay for its football is much higher in the United States than elsewhere. IMI is concerned that footballs sold by it and its licensees to distributors outside the United States might be purchased by third parties and imported back into the United States at a price below what it hopes to charge distributors in the United States.

Recent cases in entertainment law.

Recently filed cases in entertainment law, straight from the steps of the Los Angeles Superior Court.

Recent developments in entertainment law.

The digital age and widespread, unauthorized Internet downloading have raised doubts about the strength of copyright protection. But the durability of entertainment content has nevertheless kept renewal interests in copyrights alive. It is often the children and spouses of deceased artists who are involved in fights over the economic promise of these copyright renewals. <br>Primary issues in cases claiming renewal-interest rights include the limitations period for filing a claim and how the renewal interests should be divided among an artist's heirs. Two recent cases demonstrate how these claims play out.

Forty years ago, it was next to impossible to tape or film a stage production on Broadway or Off-Broadway in New York City. The various unions hadn't crystallized their demands, but for the most part, they didn't want to see it done. The feeling was that any taping of a play would shorten the run.<br>But it was inevitable that arrangements would be made so that stage productions could be taped and filmed for archival purposes, for teaching purposes and for commercial presentations in other media. It was also inevitable that there would be a price to pay for this.

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