Center for Advanced Study & Research on Intellectual Property
Reconciling Competing Interests in Intellectual Property
Experimental Use Exception, Validity of Patents, Attracting
Investment, and Collaboration Among Patent Offices
CASRIP Symposium Publication
Series Number 7, July 2002
Proceedings of the 2001 High Technology Summit Conference University of Washington,
Seattle
Editors: Kraig M. Hill, Toshiko Takenaka, Kevin Takeuchi
INTERNATIONAL PERSPECTIVES ON THE EXPERIMENTAL
USE EXCEPTION
VALIDITY OF PATENTS IN THE PATENT OFFICE AND THE COURTS - USA
VALIDITY OF PATENTS IN THE PATENT OFFICE AND
THE COURTS - EUROPE AND JAPAN
ATTRACTING INVESTMENT FOR INTELLECTUAL PROPERTY - BUSINESS METHOD PATENTS
ATTRACTING INVESTMENT FOR INTELLECTUAL PROPERTY - BIOTECHNOLOGY
COLLABORATION AMONG PATENT OFFICES: MAXIMIZING THE SUBSTANTIVE EXAMINATION RESULTS OF OTHER PATENT OFFICES
What is CASRIP?
The Center for Advanced Research and Study on Intellectual Property
(CASRIP) is an independent research and policy institute focusing on problems
in patent and other property ownership rights in the products of high technology.
CASRIP aims to improve discussion and exchange of views between professionals
of various countries, particularly those countries that have major, mature intellectual
property systems, such as Japan, Europe and the United States; and to promote
discussion and study of the possible differences of intellectual property regimes
in different countries, and the impact of intellectual property on international
trade.
CASRIP sponsors conferences, lectureships and visiting scholars, and coordinates
intellectual property-related research among University of Washington faculty
and
graduate and professional students, including many from Japan, Korea, China
and other countries, both in the law school and other schools. CASRIP also sponsors
a Summer Institute for non-U.S. patent attorneys.
CASRIP disseminates research results through books and manuscripts on a variety
of intellectual property-related topics, and current developments on patent
law through a quarterly published newsletter.
CASRIP operates as a non-profit organization under the overall guidance of faculty
of rank at the University of Washington School of Law.
Director
Toshiko Takenaka, Associate Professor of Law, University of Washington.
Dr. Takenaka has extensively published on the comparative legal aspects of patentability
among the U.S., Japan and Europe. She is a Japanese patent attorney (benrishi),
and has worked in both corporate and private practice in Japan. She received
her Ph.D. in comparative law from the University of Washington in 1992. She
teaches courses on patents, international intellectual property and Japanese
law.
Associate Director
Michael Townsend, Associate Professor of Law, University of Washington,
Seattle. Professor Townsend has a law degree from Yale and a Ph.D. in mathematics
from the University of Michigan. He worked at AT&T's Bell Labs research
center and taught computer science at Columbia University and mathematics at
Harvey Mudd College. He teaches courses on copyright, trademarks, statistical
methods and contract law.
Editors
- Kraig M. Hill, Executive Editor, CASRIP
(telecommunications and environmental policy analyst; J.D., University of
Washington School of Law, past Editor-in-Chief, Pacific Rim Law & Policy
Journal), was responsible for the final editing and publication process of
this volume.
- Dr. Toshiko Takenaka, Director, CASRIP,
acted as Managing Editor, making selections of topics and speakers for the
conference and overseeing the editorial work.
- Kevin Takeuchi, CASRIP Research Consultant
(patent attorney, member of Washington State and California State Bar Associations),
supervised the preparation of typed transcripts of the conference proceedings,
as well as doing much of the initial editing.
2002 CASRIP Advisory Committee
EXECUTIVE COUNCIL MEMBERS
Professor Martin J. Adelman
George Washington University
Washington D.C.
|
Professor Rochelle Dreyfuss
New York University
New York, NY |
Professor Mario Franzosi
University of Verona
Verona, Italy
|
Dr. Heinz Goddar
Boehmert & Boehmert
Munich, Germany |
The Honorable Paul Michel
U.S. Court of Appeals for the Fed. Circuit
Washington, D.C.
|
Professor Nobuo Monya
Seikei University
Tokyo, Japan |
Professor Nobuhiro Nakayama
University of Tokyo
Tokyo, Japan
|
Dr. Jochen Pagenberg
Bardehle, Pagenberg, Dost, et al
Munich, Germany |
The Honorable Randall Rader
U.S. Court of Appeals for the Fed. Circuit
Washington, D.C.
|
Professor Dr. Joseph Straus
Max Planck Institute
Munich, Germany |
ASSOCIATE MEMBERS
Ramsey Al-Salam
Perkins Coie LLP
Seattle, WA |
Larry Bassuk
Texas Instruments, Inc.
Dallas, TX |
Robert Blackburn
Chiron Corporation
Emeryville, CA |
Edward W. Bulchis
Dorsey & Whitney LLP
Seattle, WA |
Karen S. Canady
Gates & Cooper
Los Angeles, CA |
David V. Carlson
Seed IP Law Group PLLC
Seattle, WA |
Richard L. Donaldson
Intellectual Property Consultant
Dallas, TX |
Sonya F. Erickson
Venture Law Group
Kirkland, WA |
Ken Hattori
Armstrong, Westerman, Hattori, et al
Washington, D.C. |
Karl R. Hermanns
Seed IP Law Group PLLC
Seattle, WA |
Akimitsu Hirai
Lexwell Partners
Tokyo, Japan |
Thomas Hoffmann
Gray Cary Ware & Freidenrich LLP
Seattle, WA |
Paul T. Meiklejohn
Dorsey & Whitney LLP
Seattle, WA |
Tom M. Moran
Cooley Godward LLP
Palo Alto, CA |
Scott R. Mosko
Finnegan, Henderson, et.al.
Palo Alto, CA |
Chun M. Ng
Blakely, Sokoloff, et.al.
Kirkland, WA |
Bruce E. O'Connor
Christensen, O'Connor, et.al.
Seattle, WA |
Richard T. Ogawa
Townsend & Townsend & Crew LLP
Palo Alto, CA |
Shoichi Okuyama
Okuyama & Co.
Tokyo, Japan |
Craig P. Opperman
Open TV, Inc.
Mountain View, CA |
C. Larry O'Rourke
Finnegan, Henderson, et.al.
Palo Alto, CA |
Kate Sako
Microsoft Corporation
Redmond, WA |
Debra A. Shetka
Morrison & Foerster LLP
Palo Alto, CA |
Vernon M. Winters
Latham & Watkins
Menlo Park, CA |
Daniel D. Woo
Williams Kastner & Gibbs PLLC
Seattle, WA |
Yoichiro Yamaguchi
Rader, Fishman & Grauer
Washington, D.C. |
Editor's Note
The materials in this book range from formal papers to transcripts
of informal conference discussions. They are designated accordingly:
- Article - a more or less formal written piece submitted
for the conference;
- Keynote Address - a live talk given at the conference by
an honored invitee;
- Presentation - a live talk given at the conference by a
panel member;
- Discussion - a free interchange among participants.
All of the live talks have been transcribed from tape recordings and edited
primarily for grammatical clarity. For instance, where the original transcript
might read, "What is going to happen, I will, uh, make a prediction, after
the court issues a decision...," the edited version will read: "I
will predict that after the court issues a decision..."
While every effort has been made to retain the original substance of the live
talks, in a few instances material has been altered or omitted to smooth the
transition from live speech to paper. For instance, literally every presentation
began with words to the effect of, " I'd like to thank Ms. Takenaka and
CASRIP for inviting me, making this conference possible...." Many such
comments have been omitted, unless necessary to maintain a sense of flow or
when they have relevance beyond their plain meaning.
In the Presentations, quotations from judicial opinions have been rendered as
spoken by the presenters, insofar as it was sometimes difficult to distinguish
between a true quotation and a paraphrase. Thus, where absolute accuracy is
required, please consult the original opinions (citations have been added to
the text, where appropriate).
Hopefully this note will help minimize any head-scratching that the reader may
experience.
Kraig M. Hill
Opening Remarks
Welcome to the Sixth Annual Conference held by CASRIP and the
High Technology Summit. We at the University of Washington and at the law school
are delighted to have you here in the city of Seattle. As you already know,
I am the new Dean. I have been here since July 1st. Given that short tenure,
it seems somewhat unusual that I should be welcoming many of you who have spent
more time collectively in Seattle than I have. Nevertheless, let me assure you
that my welcome is genuine and heartfelt. I think this is a marvelous institution.
I am incredibly impressed by the work that has taken place in bringing together
this conference and we are delighted to have you join us.
My colleagues Toshiko Takenaka and Kevin Takeuchi, along with Kathy Kline, have
done an excellent job of combining the annual CASRIP Summer Institute with this
High Technology Summit. The list of participants is as impressive a group as
anyone will find anywhere in the world today in the field of intellectual property.
From policy makers, to practitioners, to inventors as well as academics, our
representation of more than 200 participants is outstanding. I thank each and
every one of you for your attendance. I am sure that you will walk away energized,
enthusiastic, and ready to tackle the issues that confront us not only in national,
but also in international intellectual property law. I think that you will come
up with ideas to develop manageable tools, both national and international,
which will help us protect invention and innovation.
We would also like to acknowledge the tremendous support that the law school
has received from so many. Our executive council and associate members have
provided excellent collaboration and advice in helping us to frame the particular
issues that will be discussed today. Additionally, we are particularly indebted
to our list of sponsors. In your program book, you have short descriptions of
many of our sponsors and you also have a list in your general program.
I wish to congratulate Professor Takenaka for putting together such a great
conference. Once again, I thank each and every one of you for joining us in
Seattle. I hope that you will find this conference stimulating. Next year we
will be back in this building, but I promise you that in two years we are going
to have a magnificent new facility to welcome you all again. I hope you enjoy
yourselves and if there is anything that I or anyone at the law school can do
to make this a more memorable conference for you, please let us know. Thank
you and welcome.
July, 2001
W.H. Knight
Dean, University of Washington School of Law