Monthly Archives: May 2014

Patent Protection in the Era of Accelerating Medical Advances

The completion of the Human Genome Project at the beginning of this century, which mapped all the genes in the human body, offered scientists and researchers the opportunity to determine the characteristics of many genes and their relationships to certain diseases. The vast investment of resources necessary to conduct this research prompts those undertaking such painstaking scientific inquiry to secure patent protection for their discoveries.  The Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., et al., 133 S.CT. 2107 (2013)issued last year further defines the subject matter that is eligible for patent protection and that which is not.

The pharmaceutical company, Myriad Genetics, Inc., through considerable effort, discovered the precise location and sequence of two human genes, BRCA1 and BRCA2, mutations of which can substantially increase the risks of breast and ovarian cancer.   Myriad filed, and received, various patents for its discovery.   The patents were directed, in part, to naturally occurring segments of deoxyribonucleic acid (DNA) obtained merely through the isolation of the DNA segments, wherein the segments contained genetic code identical to genetic code residing in the DNA segments prior to their isolation.

The patents were also directed to the isolation of synthetic DNA, known as complementary DNA (cDNA), which was created by removing certain nucleotides from a segment of DNA.  As the owner of these patents, Myriad could prevent others from conducting diagnostic tests to determine the risk of breast and ovarian cancer in an individual.  Myriad refused to license these patents, and thus, controlled this type of diagnostic testing, that is, until the Supreme Court decision.

Section 101 of the Patent Act provides that “whoever invents or discovers any new and useful….composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.”  35 U.S.C. §101.  With respect to Section 101 the Supreme Court noted that “[w]e have ‘long held  this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable.'”  Natural phenomena are the tools of
scientific investigation not the products of creative development which patents are intended to protect.

The issue presented was whether Myriad’s discoveries were ‘new and useful …composition of matter’ or simply a naturally occurring phenomena, and thus, simply an attempt to patent life.  The Supreme Court ruled that the discoveries of genes
identified by merely segmenting a tiny portion of the naturally occurring DNA strands does not constitute a patentable invention; however, the creation of complementary DNA is
entitled to patent protection because it is not a “product of nature”, but rather, constitutes a composite containing sequences of nucleotides that are not naturally
occurring, and thus, is subject matter which is eligible for patent protection.   It will be interesting to see how this ruling will be applied in other biotechnology inventions.

Patent Protection for Medical Advances

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

This article is not intended to be, nor should it be considered to be, legal advice.

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How to Resolve Domain Name Disputes Outside of Court

During the 1990’s, the Internet emerged as a common platform upon which individuals and businesses, for both commercial and other purposes, could interact and conduct business via websites.  As is commonly understood, websites are identified by a domain name, such as yahoo.com.  As the Internet grew, a need evolved for the administration of domain names and for a method to resolve disputes between parties claiming rights to use a particular domain name.    The Internet Corporation for Assigned Names and Numbers (ICANN) was formed to establish a governing policy by which domain names could be registered and further, established a dispute resolution process, the Uniform Domain Name Dispute Resolution Policy (“UDRP”), by which parties could adjudicate claims over domain names in a stream-lined administrative, non-judicial context.

In simple terms, a domain name identifies the Internet location of a particular website.  The ownership of a domain name is governed, in part, by contract rights.  The mere
registration of a domain name does not establish trademark rights, but the use of a domain name could, in some instances, be challenged by the owner of a trademark that is
similar or identical to the domain name.  During the early days of the Internet, the registration of domain names that were identical to, or substantially similar to, another

party’s trademark became a paramount problem.   Some of these ‘identical’ or ‘similar’ domain names were registered to confuse the public into visiting the domain name owner’s website, and in other instances, the domain names were held hostage to demands of a high purchase price.  The cost to recover these domain names was extremely high as the only recourse was the courts.  It is, in large part, these instances for which the dispute resolution procedure has been developed; specifically, to combat these abuses and provide a cost and time efficient manner for trademark owners to recover domain names that are similar or identical to their trademark.  If a trademark owner believes that the domain name owner (“Registrant”) has, in some manner, infringed upon their legal rights by using a particular domain name or set of names in violation of trademark law, that party (“Complainant”) can elect to present their claim through an administrative proceeding administered by an ICANN-accredited Provider. Providers do not decide these claims; rather, they oversee and manage the dispute process. Instead, the dispute is resolved by a panel consisting either of a single panelist or a group of three panelists.

To initiate the process, the Complainant must file a Complaint.  To prevail in the Complaint, the Complainant must prove the following:

1.    the manner in which the disputed domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2.    why the Registrant or Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the
subject of the complaint; and

3.    why the domain name(s) should be considered as having been registered and being used in bad faith.

The Complainant should include all supporting documentation and other evidence to the Complaint as there is no hearing, or other opportunity to submit evidence, other than the
opportunity to file a reply to Respondent’s answer, assuming the Respondent answers.  Further, the only remedies allowed are the transfer or the cancellation of the domain
name registration.  Typically, a Complainant requests the transfer of the domain name since the cancellation of the domain name only takes it from the Respondent, but leaves
it available for another third party to register.  Once filed in accordance with the rules, the Complaint is transmitted to the Respondent – the holder of the domain name registration.

Once the Respondent receives the Complaint, the Respondent must, within twenty days of receipt of the Complaint, prepare and file a response addressing the statements and
allegations contained in the complaint and further, include any and all bases supporting the contention that the Respondent (domain-name holder) is entitled to retain the
disputed domain name. As with the Complaint, the Response should include supporting evidence or documentation. While the Complainant has the right to submit a reply to the Respondent’s submission, if the Complainant does not do so, the case will be forwarded to the panel which renders a decision in a relatively expeditious manner.   The decision will be rendered based upon the allegations contained in the Complaint, the evidence in support thereof, the rebuttal arguments in the Response and any evidence submitted in support of the arguments in the Response, as well as any additional information submitted in a reply by either party.

It is to be noted that if no Response is filed, the panel will review the Complaint and accept the allegations set forth therein as true.  If the Complaint fails to adequately prove one of the three required legal grounds, the decision will be adverse to the Complainant.  Thus, it is important that the Complaint clearly prove each and every listed legal ground noted above, or the Complainant risks an adverse decision, even without a Response being filed.   If the decision is adverse to the Respondent, the Panel will either order the cancellation of the domain name registration or order it transferred to the Complainant, depending upon the Complainant’s election in the Complaint.  The entire process typically takes less than four or five months from the filing of the Complaint to the rendering of a decision.  If either party is unhappy with the decision, that party has 10 (ten) days to file a federal action contesting the decision.  Assuming a decision against the Respondent, if no federal action is filed, the domain name will transfer to the Complainant or be cancelled.

As can be seen, these tribunals offer an efficient, stream-lined process to resolve these types of disputes.  If the losing party files an action in federal court, well, that process is likely to be much longer.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

Domain Name Dispute Advice-052714
This article is not intended to be, nor should it be considered to be, legal advice.