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03 PatentsIntroduction
First formal patent was in Venice in 1474
The Rights of InventorsRationale for Patent Law
Incentive-based rationale
Motivate inventors to invent -- economic incentive
Give inventors prospect of recuperating costs spent in developing their inventions
Prospect Theory
Facilitate more efficient use of resources by centralizing control/mgmt over the invention in
one entity
That entity will have an economic interest in ensuring that it is used, maintained, licensed, and
improved efficiently
Flaw
Someone else may have better knowledge; better ability to improve the patent, but can't,
because patent controlled by an entity
Natural Rights Theory (see p. 259)
So far, there is not much natural rights justification for patents (contrast to Copyright)
Often, inventions come from incremental updates to knowledge -- harder to ascribe an
invention to "one inventor" than it is to attribute a copyrightable work to 'one author'
Explanations?
Copyright is more protecting "creativity/expression"
Very few moral rights protections related to patents
Patents are more 'useful' -- not seen as an 'extension' of the inventor (vs. artistic/literary
works being considered an 'extension' of the author)
All patent systems today require the invention must be:
New
Sufficiently inventive
Useful
Reduced to practice (i.e. Sufficiently developed to allow someone to make and use the invention)
International Agreements: TRIPS, the Paris Convention, and the Patent Cooperation TreatyParis Convention (1883)
Formal name is the "International Convention for the Protection of Industrial Property"
First signed in 1883
Covers
"Industrial Property" - patents, tm, industrial designs, unfair competition
Established Minimum Standards
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Set forth 'some minimum standards'
Priority (Paris Art 4) to file patent applications in other countries w/in 1 yr of the first
filing
Possibility for inventor to file in one country and claim priority in foreign countries if
filing occurs w/in 12 mo's of country of origin
Independent Treatment (Art 4bis)
Establishes 'territoriality'
Patents granted based on patent law of individual countries where patent filed
Did NOT establish substantive minimum stds (i.e. minimum stds on subject matter, validity,rights, or term)
Enforcement
No enforcement mechanism (similar to Berne for Copyrights)
Membership
As of 2011, 173 countries are members
US joined early -- had strong interest in patent protection abroad (Industrial Revolution)
As opposed to Berne -- during Berne convention, US was importing int'l content, and
didn't want to be subject to int'l laws)
TRIPS (1994)
Covers
Same as Paris (i.e. TRIPS Incorporates Paris Articles 1-12, and 19)
(see TRIPS Art 2, CB p. 254)
Standards
Incorporates Paris Convention (see Art 2 TRIPS)
Sets forth substantive minimum stds
Requires that countries allow for the patenting of processes
Requires that countries may NOT deny patents based on the field of technology (e.g.
biotechnical, pharmaceutical)
Sets forth exclusive rights; length/term of protection; limitations on compulsory licenses
Requires countries to afford judicial review of any revocation/forfeiture of a patent
Enforcement
TRIPS has an enforcement mechanism (see the Council for TRIPS, below)
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Patent Cooperation Treaty (PCT)
It is a special agreement among the members of the Paris convention to simplify filing multiple
patent application for the same invention in different countries around the world
The General Approach of Paris + TRIPSPatents are Territorial in Nature
Patents effective only in territory where they are created and granted patent rights
Paris Art 4bis - Patents for the same invention, applied for by the same person, in different countries,are to be treated "independently", both as regards the grounds for nullity and forfeiture, and as regardstheir normal duration
i.e. patent duration is treated separately in different countries (unlike Berne, which establishes
a common term of copyright protection)
National Treatment
Foreigners treated same as citizens in WTO countries
Nationals of any country of the Union shall enjoy, in all other countries of the Union, the advantagesthat their laws now (or hereafter) grant to nationals (TRIPS Art 3, Paris Art 2)
Formalities
Formalities are ALLOWED (unlike Berne + TRIPS for Copyright)
Inventors must typically file separate patent applications in each country in which they want patent
protection
Rationale: Patents generally always require filing; Paris presupposes that patent filing systems
require formalities
National Treatment: Countries treat foreigners same as nationals -- i.e. formalities MUST BE
the same for foreign applicants as domestic applicants
Non-Retroactive
Countries have "no obligation to restore protection to subject matter which, on the date of application ofthis Agreement [TRIPS] for the Member in question, has fallen into the public domain (TRIPS Art70(3))
(unlike Berne, which DOES allow retroactivity w.r.t. copyright)
The Council for TRIPS
TRIPS Art 68 and 71 establish a Council for TRIPS
The Council is open to all Members
The Council monitors the member countries' compliance with, and implementation, of the TRIPS
Agreement
Member nations are obligated to notify the Council of the "laws and regulations" of their nation that
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implement their obligations under TRIPS
Council reviews the implementing laws and identifies any perceived problems in the implementing
laws.
"Utility Models" / "Petty Patents"
Some countries allow "utility models" or "petty patents" or "innovation patents"
Usually subject to relaxed requirements (e.g. no inventive step needed) and to more speedy
registration (e.g. examination occuring after grant); usually get shorter duration of protection
TRIPS does NOT directly address utility models
Patents and Economic DevelopmentLessons from Studying the International Economics of IP Rights (p. 261)
e.g. what would the effect of requiring developing countries to enforce TRIPS in a more stringent
way
The Problem with Weak IP Rights (IPRs) in Developing Countries
Weak patent rights are significant barriers to trade with developing countries, esp. with
IPR-sensitive goods
Poor countries w/o much ability to imitate products are not a competitive threat. However, as
they adopt stronger patents, their economies could be exposed to monopoly impacts w/ negative
effects on their terms of trade
Author's Proposed Solution
Increase patent rights in developing countries -- get more countries to adopt TRIPS
Short Term Effects
Potential issues w.r.t. cost of licensing
Redistribution of patent rents among developed countries
MNEs will have higher incentive to license in developing countries
That might reduce MNEs' presence in developed countries (as a trade-off -- e.g.
MNEs would be spending more time/money in developing countries)
Long Term Effects
Stimulation of intl economic activity
Increase of technology transfer to developing countries --> Developing countries
will eventually become developed
Larger economies = more trade
Elimination of barriers to trade
Increase of Foreign Direct Investments in Developing Countries
As developing countries' economies strengthen, MNEs will invest in companies
there, or build / buy companies, etc.
Technology transfer (licensing) would rise
Special Discussion: Transitional Provisions for Developing Countries
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TRIPS attempts to accommodate the needs of developing countries by allowing them delay their
compliance with certain TRIPS patent requirements
Developing Countries in General
Get 5 yrs from date of entering TRIPS into force (which was 1/1/1995) (Trips Art 61(1) and (20)
i.e. deadline = Jan 1, 2000 to implement TRIPS obligations
Developing Countries That Had Previously Denied Patents To Certain Fields of Technology
e.g. India used to deny patents based on the subject matter -- biotech /pharmaceuticals
Got extra 5 yrs to implement TRIPS (TRIPS Art 65(4))
i.e. deadline = Jan 1, 2005
Least Developed Countries
At first: 10 yrs from the date of application of Art 65(1) of TRIPS TRIPS Art 61(1) and (2)
i.e. deadline was Jan 1, 2006
That deadline was extended first to 7/1/2013, and then to Jan 1, 2016 to comply with the TRIPS
provisions re: patenting pharmaceutical products
Note: The Jan 1, 2016 deadline does not change/negate the right of least-developed countries to seek
other extensions
Rules Governing the Transition Period
During transition pd, countries are obliged to accept patent applications for pharmaceuticals and
agricultural chemical products, under the "mailbox rule" of TRIPS Art 70(8)
The Mailbox Rule (Art 70(8))
The countries must provide a means of filing the application, AND
The patent applications must be treated with the same priority as the original filing date, or if
priority is available and claimed, the priority date, AND
Provide patent protection for those patents (as from the grant of the patent, counted from the
filing date)
India--Patent Protection For Pharmaceutical and Agricultural Chemical Products (WTO
Appellate Body 1997) (p. 269)
Facts
India did not allow patents for pharma and agricultural chemical products before
TRIPS was enacted (1/1/1995)
WTO Panel agreed with US and ruled against India
India appealed to the Appellate Body
Issue
Did India fail to establish a "mailbox" under TRIPS 70(8) during the transition pd
that ended on Jan 1, 2005?
Held
Yes (WTO Panel upheld) -- India's administrative instructions for receiving
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mailbox applications are inconsistent w/ Article 70(8) of TRIPS
India must provide a legal mechanism for the filing of mailbox applications,
which provides a sound legal basis to preserve both the novelty of the inventions and
the priority of the applications as of the relevant filing and priority dates.
Rule
Mailbox rule (see p. 270)
"Provide a means" - See p. 271
Must allow for the entitlement to file mailbox applications and the
allocation of filing and priority dates to them
Requires a "sound legal basis" for the preservation of priority and
filing date
Analysis
The Panel found
Art 70(8) requires Members to establish a means that allows for (1) the
filing of mailbox applications, (2) the allocation of filing and priority dates to
those applications, and also (3) the provision of a "sound legal basis" to
preserve novelty and priority, as of those dates.
That way, India would eliminate any reasonable doubts re: whether mailbox
applications (and eventual patents based on them) could be rejected/invalidated
because, at the filing or priority date, the subject matter was unpatentable
The text of Art 70(8) states that the mailbox rule applies, notwithstanding
the provisions of Part IV of TRIPS, which is the area that allows for the
transitional period. i.e., the Mailbox rule applies, even though India was in the
transitional period.
Appellate Body's analysis of WTO Panel
Appellate body agreed that the mailbox rule required a "means" for filing
patent applications for pharma/ag chem products, and for the allocation of
filing and priority dates to them.
Appellate Body also agreed that the "means" had to provide a "sound legal
basis" for the applications to preserve novelty/priority as of those dates
Appellate Body DISAGREED that mb rule requires a Member to establish a
means "so as to eliminate any reasonable doubts . . . "
"No sound legal basis"
Indian "administrative instructions" require Indian officials to ignore certain
mandatory provisions of the India Patents Act
India's Patent Act says that pharmaceutical products are not patentable.
India claims that its "administrative instructions" say that the patents should
be granted, but the App Body was not convinced that India's "admin
instructions' would prevail over the contradictory mandatory provisions of the
Patent Act
Thus, Appellate Body is not convinced that India's "administrative
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instructions" would survive a legal challenge under the Indian Patents Act
Notes
India did not patent pharmaceuticals, because they wanted higher access to int'l
pharma
Ownership and Formalities: Obtaining Domestic and Foreign PatentsTwo Approaches to acquiring Patent Rights & Priority
First-to-file approach
Priority goes to first to file documentation in the proper office
First-to-invent approach
Priority goes to first "inventor"
i.e. the invention works for at least one of its stated goals
If inventor cannot prove the actual date of invention
Filing date = date of the "constructive reduction to practice" of the invention
In this case, F2I resembles F2F
Pros/Cons
Pros F2F
Easier to prove
Reduces uncertainty
Fewer litigations
Pros F2I
Protects small inventors -- those w/o means to compete w/ companies that can file sooner (but
may take longer to develop a product?)
Cons F2I
Requires diligent, detailed note-keeping; research records; etc.
Filing for and Prosecuting Around the WorldParis System = First-to-File system
United States joined in 1887
The Period of Paris Priority
Paris Article 4
If person
Duly files for patent in a country of the Union
Then,
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He gets a right of priority - i.e. the filing date in other countries is treated as the "prioritydate," which is earlier than the actual filing date in those countries
Time frame is:
12 months (granted to qualifying patent applicants)
Benefits
The patent application in other countries is treated as though it were filed on the Priority Date
Win priority disputes -- inventor can claim an earlier filing date
Preserve novelty
Prevent issues of novelty, prior art, obviousness from defeating the patent
There are activities that could otherwise defeat novelty
Example
Country X
Jan 5 - File in country X
Feb 1 - you give a presentation about your invention
May 1 - File in country Y
Without Paris Priority
You might lose novelty (because of your presentation)
But with Paris Priority
You keep novelty (in spite of the presentation that disclosed the invention)
Third-party activities that occur after the inventor's first filed application also do not
defeat novelty
Notes on United States
Originally, the United States was a "first-to-invent" country. Priority of invention went to the firstperson to reduce the invention to practice
However, sometimes inventors couldn't prove date of reduction to practice. They could rely ondate of "constructive reduction to practice", which was the date of filing a patent application
Thus, US sometimes resembled a First-To-File system
Since Mar 16, 2013, as a result of the America Invents Act (from Sept 16, 2011), the US has
been a "first-to-file" country
Dual-Priority System in US
Applications filed on/after 3/16/2013
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Treated as F2F
Std
Filing date, or
Date of "constructive reduction to practice"
Applications filed before 3/16/2013
Treated as F2I
Std = Date of reducing the invention to practice
For US patent applications, originally filed elsewhere in the Union, the “Parispriority date” can be used as the date of the "constructive reduction topractice" of the invention
US Grace Period for Disclosures -- Not Deemed Prior Art (AIA §3(b))
US allows a 1-year grace pd before the filing of the patent app, for certain disclosures
made by inventors.
Disclosure of the invention during the grace pd will not be considered prior art if:
(A) disclosure was made by the inventor, joint inventor, or another who obtained
the subject matter disclosed directly from the inventor/joint inventor, OR
(B) before the disclosure, the subject matter had been publicly disclosed by the
inventor, or a joint inventor, or another who obtained the disclosed subject matter
directly or indirectly from the inventor or a joint-inventor
A similar 1-year grace period is provided for disclosures appering in patents and
applications
Compare to EU Grace Period
EPC Article 55 allows a very limited 6-month grace pd for "non-prejudicial disclosures:"
i.e. the following disclosures, made within 6 months of filing, will not be considered
prior art:
(1) unauthorized disclosures that constitute "evident abuse in relation to the
applicant", and
(2) authorized disclosures at an official international exhibit"
Independent Treatment of Patents
Grant of patent depends on specific country (i.e. Paris does not grant the patent. It only grants
priority of the filing)
i.e. even if your application is rejected in the first country you applied in, you still get
Paris priority
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Whether the patent is eventually granted depends on the domestic law of the countries in which
the patent application is filed
Also note:
US provisional patent applications do not provide Paris priority
Provisional patents are 'placeholders' -- they are not actual patents (provisional owners
still need to file formal patent app to get full patent rights)
Filing an International Application Under the PCT
PCT (signed in 1970)
PCT = Special agreement among Paris countries (i.e. it is part of the Paris Convention)
Pursuant to Article 19 of Paris Convention
Purpose
Eases administrative burden of filing different patent applications for the same invention
in different countries
What it does
Extends Paris Priority period
Extends 12 month Paris Priority period to 30 months (or more, at the discretion of
countries) -- more time for inventor to file patent applications in other countries
Establishes common, uniform patent application form
PCT form must be accepted by every PCT country
Note:
Inventor has to pay the fees required by each country (application fees and
incidentals, e.g. cost of translating languages, etc)
To Qualify for Extended Priority Period
Patent applicant must file an "International Application" in the International Bureau ofWIPO, within 12 months of the first patent filing under Paris
Which Countries are PCT Members?
As of 2011, 144 countries are PCT members
The United States is a PCT Member
Phases of PCT
International Phase
Step 1
1. Inventor submits the international application w/ an International Search
Authority (ISA)
e.g. USPTO is a designated ISA
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Filing the intl app with the ISA establishes a priority date
What is the Priority Date?
If PCT application is based on a prior national application
The "PCT priority date" is the Paris Priority Date, per the
national application
(Per Paris, you have 12 months, from the Paris priority date, to
file under PCT. The 30-month filing grace period is counted from
the priority date of the national application)
If PCT application date is filed alone:
The "PCT priority date" is the filing date of the PCT
international application
You still get 30 months from the priority date before having to
file in another country
Note: Keep in mind that "PCT priority date" may not always be the
Paris Priority Date, if the PCT application is not based on an earlier filing
2. ISA Patent Office Conducts an International Prior Art Search
ISA prepares a non-binding "International Search Report" -- evaluates
whether or not other prior art may defeat the novelty of the invention
This is a non-binding report
Issues "Opinion" on whether or not invention is patentable
This is a non-binding opinion
ISA sends search report and opinion to WIPO and applicant
ISA's Deadlines for Search/Report
If PCT Application is Based on Prior National Filing
ISA typically completes search report & opinion by the end of
16 months after priority date
If PCT Application is Filed Alone
ISA typically must complete search by 9 months after priority
date (a.k.a. PCT application filing date)
3. WIPO publishes the patent application and the search report "promptly" after
the end of 18 months after priority date
(But note: the Opinion remains confidential until the end of the entire PCT
process)
Step 2
1. Applicant decides whether to demand an "international preliminary
examination" of the patentability of the claimed invention
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Deadline
3 months after receipt of search rpt, OR
22 months after priority date (whichever is later)
Requires further fees, but gives inventor 2nd chance
Inventor can amend the application
2. Examiner completes "International Preliminary Examination Report" by 28
months after the priority date; send report to International Bureau of WIPO and the
applicant
National Phase
Step 3
1. Applicant must decide whether to proceed with national patent applications in
other countries by 30 months after the priority date
Note: The 30 month deadline applies whether or not the applicant decides to
try for the Intenational Preliminary Examination
Failure to act w/in 30-month pd can negatively impact novelty and cause the
application to become prior art (which hurts the ability to actually patent the
invention)
2. If applicant filed national patent applications, then WIPO communicates the
international patentability report to the national patent offices
Note: Each country decides on its own whether to grant a patent to applicant
Priority Disputes
First-to-file approach
Determining priority disputes is easy
First-to-invent approach
Harder to determine
Especially with USA standard: first-to-invent-or-file + one-year grace period allowing certain
disclosures to be deemed as not-prior-art = confusing priority disputes (e.g. with the idea of
"constructive reduction to practice," who really was the first to invent, or reduce the invention to
practice?)
AIA (September 16, 2011)
Starting in March 16, 2013 the US will switch from a first-to-invent to a first-to-file system
The new standard regards applications filed on or after March 16, 2013
The old standard has relevance for: (1) all existing patents and (2) any patent application
filed before March 16, 2013
Consider also: Paris priority; PCT applications
Frazer v. Schlegel (Fed Cir 2007) (p. 293)
Facts
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Frazer & Zhou = scientists, developing a vaccine for use against HPV
Frazer/Zhou published their idea/work in a scientific journal on May 21, 1991
Note -- at this time in US, system was First-To-Invent (not file)
Frazer filed patent app in Australia, July 19, 1991, based on the work in the May 21
article
Schlegel filed patent app in US on June 25, 1992, for the same vaccine
Frazer filed PCT on July 20, 1992
Frazer presented his research in the US on July 22, 1991
Frazer filed patent app in US on Jan 14, 1994
Interference action btwn Frazer's patent application and Schlegel's patent application
Issue
Priority battle - Is Frazer entitled to priority based on Australian filing date?
Held
Frazer is entitled to the priority benefit of the Australian filing date
Rule
First-to-invent system
When the priority claim is based on subject matter disclosed in a foreign patent
application whose filing date is properly claimed, 35 U.S.C. 119(a), the foreign application
has the same effect as if filed in the US
Disclosure must be made "in the manner provided by the first paragraph of §112)
Principle of Independent Treatment"
The application must sufficiently disclose the subject matter of the application
Disclosure must be made in the manner provided by the first paragraph of 112 =>
written description and enablement
[Principle of Independent Treatment]
Analysis
Constructive reduction to practice (CRP) does not invoke a different standard whether
the priority document is foreign or domestic
Schlegel could not prove date of reduction to practice
So he had to use the 'constructive' reduction to practice date, which was the date of
the patent application filing
The Board erred in denying Frazer's priority entitlement
The Board said the patent was invalid due to insufficient description because, at
the time Frazer filed in Australia, he believed he needed the expression of 2 proteins
from a specific gene to create the vaccine
Btwn 1991 and 1992, the level of knowledge in the art changed -- at that time, it
was known that you could obtain the vaccine only 1 protein
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The Board ruled that Frazer was not entitled to any date of disclosure until he
accurately and fully understood the mecahnism
Fed Cir said
Frazer's Australian application contained complete details of the method that is the
subject of the interference action
Frazer testified that at the time, he believed both proteins were involved. His later
discovery that the either 1 protein, or both, does not negate or contradict his
disclosure and constructive reduction to practice of the method
Working Requirements(see pp. 298 - 300) -Paris Art 5, TRIPS Art 27(1)
What is a Working Requirement?
A law that obligates a patentee to produce an/or sell the patented good locally, as a condition of the
patent
Failure to "work" the invention may result in the grant of compulsory licenses for others to
manufacture the patented good locally
e.g. this is the law in India
Working requirements are controversial! The issue tends to arise in the Developed/Developing
Country debate
Developed countries tend to disfavor them
Developing countries tend to favor them
Paris Contemplates Local Working Requirements
Paris Convention Art. 5(A):
(1) Countries cannot impose forfeiture of a patent based on importation of the product into the
country from another Paris country (or lack thereof) (well, they actually can... see below)
(2) Each Country shall have the right to [legislate to grant] compulsory licenses (CL) can to
prevent abuses of the exclusive rights conferred by the patent, such as failure to work the
patent/invention
(3) If the grant of compulsory licenses is not sufficient to prevent the said abuses in (2), then
the Country may impose forfeiture, but only after two years have passed since the grant of the
compulsory license
(4) A compulsory license may not be applied for, on the ground of failure to work, until after
(i) four years from the pass from the date of filing of the patent application or (ii) three years pass
from the date of the grant of the patent, whichever period expires last
No CL if there is justification
CL shall be non-exclusive and not transferable
No compulsory license can be granted for failure to work "if the patentee justifies his inaction
by 'legitimate reasons'"
TRIPS Qualifies (if not Prohibits) Working Requirements
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TRIPS Art. 27(1) => “ ... patents shall be available and rights enjoyable without discrimination as to
... whether products are imported or locally produced” => NO forfeiture for violation of working
requirements
Open issue: is the grant of a compulsory license for failure to work a “discrimination” under
art. 27 TRIPS?
TRIPS art. 31 provides under which condition a country may order the grant of a compulsory license for a
patented invention
OwnershipTRIPS Art. 28 says
A patent shall confer on its owner certain exclusive rights
Patent owner has the right to assign the patent to others
But TRIPS does not specify who the owner is
Art. 4ter Paris says
Inventor shall have the right to be mentioned "as such" in the patent (i.e. as the inventor)
WTO countries have discretion to decide who is the owner
But Paris also does not delineate a standard for initial ownership of patent
Important Issue
How a country's law determines the initial ownership of patent rights in the context of
employment
Teets v. Chromalloy Gas Turbine Corporation (Fed Cir 1996) (p. 303)
Facts
GE Aircraft Co hired DRB Industries (a division of Chromalloy) to design new jet engine
blades
DRB project manager assigned Teets (an employee) as project lead. Teets spent 70% of his
time on the project
Teets was employee at will
No contract regulating ownership of invention
Teets had designed some changes to the design, on his own time, while also working on
designs that DRB instructed him to make
The DRB designs failed tests (e.g. structural/stress tests), but Teets' designs worked
GE had final say in whether to accept Teets/DRB's designs
GE used the Teets designs
Teets filed for patent
At one point, Teets had listed DRB as the developer of the designs, but later he sued, seeking a
declaration of ownership
Dist Ct held that Teets owned the design
Issues
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Who is the owner of the invention?
Held
Teets was not sole owner (dist ct erred in holding that Teets owned the process)
Analysis
Ownership springs from invention
i.e. inventor owns his own invention
Teets repeatedly acknowledged DRB's involvement in the development of the process (Hot
Forming Process -- HFP)
Even the patent application listed that Teets worked with a co-inventor
There was an implied-in-fact contract between Teets and employer (DRB) -- so Teets cannot
be deemed to have developed invention on his own
Shop rights
Rights that permit employer to use employee's invention w/o liability for infringement
Nakamura v. Nichia Kagaku Kogyo K.K. (Tokyo District Court 2004) (p. 306)
Facts
Ptf = researcher who invented the Blue LED light when working for def
Def = leading manufacturer in the Blue LED industry, and a registrant of the patent that covers
the invention of the Blue LED
Ptf claimed that he invented the Blue LED and never transferred ownership to the def
Ptf sued Def for transfer of ownership of the patent
Issue
Who owns the patent?
Held
The company owns the patent
But Inventor was entitled to at least 50% of company's profits (in this case, 60 billion yen, But
since he only asked for 20 billion, that's what he got)
Rule
Japanese Patent Act
The inventor has the right to obtain a patent on his/her invention
An employer may request assnment of the right to obtain a patent for the invention made
by its employee, without making any further separate assignment, if:
The invention, by its nature, falls w/in the scop of business, and
The invention fell w/in the present or past duties of both the employer and the
employee, and
The employer sets out a contract, service regulation, or other agreement by which
employee assigns the right to obtain the patent to the employer
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Analysis
Japanese ct found that the def had been properly assigned the right
However, the ptf's contribution to the patent was huge (company had weak R&D; employee
did most of the work)
The inventor has the right to obtain a patent for his invention
The inventor participates in the profit that the employer makes based on his invention
Assignment occur in case of:
Service invention
Separate contract
Reasonable remuneration
Is determined by considering the profits which the employer will obtain from the
invention and the degree of contribution of the employer in making the invention
Harmonizing Scope and Allocation of Patent Rights in Europe -- Towards a New European Patent
Law
European Law: no harmonized rules
National Law
Germany:
Both inventions made as service invention and inventions outside the share of
employment belong to the employee
The employer has the right to use the invention but needs to pay remuneration
UK: statutory right to compensation in cases where the invention belongs to the employer
France: distinguish:
Inventions made as required by the employment contract => employer
Other inventions in which there is some contribution of the employer => employee, but
the employer can claim the invention after payment of compensation
Different countries have different law
Examples
Germany
United Kingdom
France
TODO Add notes for Harmonizing Scope article -- p. 308
Patent RequirementsTRIPS’s minimum standards:
Subject matter
Novelty
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Nonobviousness
Utility
Enablement
Subject MatterGeneral Rules
Art 27(1) TRIPS
Patents available for
Any inventions
Whether products or processes
In all fields of technology
Art 27(2)
Members MAY exclude inventions from patentability
To protect "ordre public" or morality
e.g. to protect human, animal, or plant life
Such exclusion may not be made merely because exploitation is prohibited by their law
i.e. countries MUST have a reason that ties into protecting "ordre public" or
morality
Art 27(3)
Members MAY also exclude
Diagnostic, therapeutic, and surgical methods for the treatment of animals
Plants and animals other than micro-organisms (and more -- see p. 314)
BUT!
Members SHALL provide for the protection of plant varieties either by patents or by an
effective sui generis system
Patentability of Higher Life Forms
Harvard College v. Canaca Comm'r of Patents (Supreme Ct of Canada 2002) (p. 315)
Facts
Harvard tried to patent:
Genetically-modified mouse (more prone to get cancer, for cancer research)
Process of modifying the mouse
Canadian patent statute allows for the patentability of "manufactures" and "compositions
of matter"
Patent examiner rejected the mouse as being outside the scope of "invention" in the
Canadian Patent law, but allowed the process claims
Issue
Can a 'higher life form' be considered a "manufacture" or a "composition of matter" for
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the purpose of the patent act?
Held
No -- The "oncomouse" is NOT patentable subject matter
Parliament of Canada did not intend to include "higher life forms" witin the
definition of "invention" found in the Patent Act
Dissent
The oncomouse should at least be considered patentable subject matter
This does not mean the claims should be granted
Other countries have held the onocomouse patentable
Canada needs uniformity in the law
Furthermore, Canada has sought to harmonize it concepts of IP with other
like-minded countries
(so why not with the oncomouse?)
Analysis
Chakrabarty case
Patent issue re: man-made oil-eating bacteria
Held that the US Patent Act allows patentability of "anything under the sun that is
made by man"
Very broad understanding of patentable subject matter
Canadian court REJECTED Chakrabarty reasoning
Parliament chose to adopt an exhaustive definition that limits invention to any
"art, process, machine, manufacture or composition of matter"
} i.e. no qualifiers to show that that list was _NOT_ exhaustive
Parliament did NOT indicate that invention included anything new and useful
made by man
} i.e. Parliament intended to exclude certain subject matter from the Patent
Act
"Manufacture"
Oxford Dictionary definitions:
Manufacture -- does not connote 'higher life forms'
"Composition of matter"
Connotes "mixing" of compounds to create matter
The actor doing the mixing should be a human
A mouse is alive -- the "mixing" of the essential ingredients to make a mouse
takes place on its own (except for the spliced gene part -- humans made the gene, but
humans don't make the mouse)
The Scheme of the Patent Act
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The Canadian Patent Act was ill-equipped to handle this type of patent case
It is up to Parliament to assess the validity of the distinction drawn by the Patent
Office between higher life forms and lower life forms
Rule
Patentable subject matter includes any "art, process, etc…" (see p. 318)
Notes
Motivation for trying to patent the mouse itself
Prevent someone from buying the mouse, and then breeding the mouse
Proving infringement
If you control the PRODUCT, you have an easier time proving infringement
If you only control the METHOD, it's harder to show that someone else infringed
on your method of creating this type of mouse
Moral Issues?
Patenting a living thing?
Assigning IP rights to a living thing? What about a person?
Note 3, p. 321
The Harvard court said the egg itself COULD be a "composition of matter" --
there was enough manipulation made by the inventor (human)
Conceivably, Harvard could have patented the genetically-modified egg of the
mother
Note 8, p. 322
Monsanto case
Patentability of Business Methods
US Approach
Patent Act does not explicitly specify that business methods are not patentable (though the
court
Bilski v. Kappos (US Supreme Ct, 2010) (p. 337)
Note - we read this for IP for Corp Transactional Lawyer
FP
Company wanted patent for business method
For protecting/hedging against the risk of price changes
Key claims = Claims 1 & Claim 4
Claim 1 describes steps instructing how to hedge risk
Claim 4 puts Claim 1 into math formula
Patent examiner rejected
Board of Patent Appeals & Interferences affirmed patent examiner
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US Ct of App for Fed Circuit (CAF) heard case en banc, and affirmed BPAI
Ct of App ruled that the machine-or-transformation test was the sole test to
be used
Ct produced 5 opinions
Plurality
Concurrence
3 Dissents
Sup Ct granted certiorari
Issue
Was the method/business 'process' patentable?
i.e. was it a patentable "process"?
Was it an unpatentable "abstract idea"?
Rule
Statute: 101 of Patent Act defines patentable subject matter
4 categories of inventions/discoveries eligible for protection:
Processes
Machines
Manufactures
Compositions of Matter
3 Exceptions to patent-eligibility principles
Laws of Nature
Physical Phenomena
Abstract Ideas
Machine-Or-Transformation Test
If the method (i) is tied to particular machine or apparatus or (ii) transforms
a particular article into a different state or thing, then the method may be
patentable
Held
HELD - Majority Opinion: In general, business methods may be patented.
However, in this case, the method cannot be patented, because it is an abstract idea
Sup Court applied statutory construction (Patent Statute)
S Ct directs lower courts not to grant patents to abstract ideas
Analysis
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Plain Language of Statute
There is no express exclusion of Business Method Patents in US law
The statute, on its face allows "methods" to be patented
Precedent
State Street Bank case
Fed Cir held
Business method = patentable
Before State Street Bank, ct precedent held that business methods !=
patentable
BUT!
w Nothing on face of Statute §101 prevents patenting of
business methods
The "machine or transformation" test is not the sole test to apply. Still need to look
to see whether or not the subject matter is an abstract idea
An abstract idea can be defined as “a principle, in the abstract,” or “a fundamental
truth; an original cause; a motive,”
EU Approach
What may be Patented?
Any "inventions" which are capable of "industrial application", which are "new" , andwhich involve an "inventive step" (EPC Art 52(1))
What Is NOT Considered an Invention? (EPC Art 52(2))
Discoveries, scientific theories, mathematical methods
Aesthetic creations
Schemes, rules, and methods for performing mental acts, playing games, or doing
business
Computer programs
Methods for treatment of the human or animal body by surgery or therapy
Diagnostic methods practiced on the human body
(But note: products, substances [drugs, e.g.] related to medical treatment MAY be
patented)
BUT!
Business methods "of technical character" may be patented
("Technical character" is decided by the European Patent Office)
(The methods would still need to meet the inventive step and new/novel test)
The provisions of EPC Art 52(2) exclude patentability of the listed subject-matter only
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to the extent to which a European patent application or European patent relates to the
subject matter "as such"
Countries in EU refer to the physical implementation of the business method as its "technical
feature" or "technical character", and the pure-abstract concept as the "non-technical" feature of
the method.
Hitachi, Ltd (Technical Board of Appeal, European Patent Office, 2004) (p. 342)
Facts
Claim 1 was an "automatic auction method executed on a server computer"
Claim 3 is a "computerized auction apparatus", comprising a server computer
The "examining division" rejected a patent claim for an auction method, calling it
a "business method as such," which is not patentable under the EPC (European Patent
Convention)
The ED also said that even if the claimed subject matter were an "invention"
within the meaning of the Art 52(1) EPC, it did not involve an inventive step as
required by Art 56 EPC
Issue
Were the claimed methods/apparatus "inventions" within Art 51 EPC?
Held
The apparatus of claim 3 is an invention -- it has technical features, such as
"server computer," "client computers" and a "network"
The method of claim 1 is not excluded -- it is in invention
HOWEVER, the court later found that the "invention" was obvious. Therefore, the
appeal was dismissed, because it lacked the required "inventive step"
Rule
A method involving technical means is an invention w/in the meaning of Article
52(1) EPC
Analysis
Per EPC Art 52(2), the business methods are only excluded from patentability "as
such." However, a mix of technical and non-technical features may be patentable
Prior art should not be considered when deciding whether claimed subject-matter
is such an invention (referring to "mixed technical/non-technical inventions"??)
Note
This case is fucking confusing to read
This case does not say
Compare Art 52 EPC and Art 27 TRIPS
There is no conflict between Art 52 and 27 (business vs technology)
Art 27 does not discuss "business methods" -- it only discusses "fields of technology"
Art 52 applies "technology" to business methods
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So there's really no issue
Patentability of Computer Software and Computer-Implemented Methods
TODO -- see pp. 347 - 350
Utility of Capability for Industrial ApplicationNote--this wasn't assigned on the syllabus. Just know you need it, in order to patent stuff
NoveltyArt 27 TRIPS
... patents shall be available for any inventions, whether products or processes, in all fields oftechnology, provided that they are new, involve an inventive step, and are capable of industrialapplication
Two Conceptions of Novelty
(1) No geographic limitation on prior art (EPC Approach)
A prior foreign public use or knowledge of an invention anywhere in the world defeats novelty
EPO Case - Opposition Division Decision Revoking the European Patent No EP-B-0436257
(p. 357)
Facts
December 20, 1990: US filed for patent in Europe (on fungicide)
Claimed priority of an earlier US application
June 14, 1995: EU Opponents filed of opposition filed
Issue
Paris Priority dispute
Held
Not novel
Analysis
There were field trials conducted in India that constituted prior use, which
defeated the novelty of the patent
Notes
This case illustrates the world-wide EPC approach
The field tests would not defeat novelty in the United States (because this
happened before 3/16/2013)
If the same thing happened later (say, May 2013), then the same result would
occur in USA and Europe
(2) Prior art is geographically limited in all or some respects (US Approach)
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Before AIA Geographical limitations on novelty under §102(a) (i.e. date of first INVENTION
Before March 16, 2013)
Foreign knowledge and public use did NOT constitute prior art in the US (i.e. did not
defeat novelty)
Under the AIA patent applications filed (i.e. date of FILING On March 16, 2013 or later)
NO geographic limitations. Foreign knowledge and public uses DO constitute prior art,
and can defeat Novelty
Using Patent Filings as Prior Art, To Defeat Novelty
Issues
Are patent applications considered prior art by countries around the world?
Generally, yes. Foreign patents and applications are considered prior art by countries
around the world
When does a patent application become prior art?
Domestic Patent Applications
Patent application becomes prior art as of the Filing Date
Caveat:
The patent application must later be published OR the related patent must
be granted
i.e. if the patent application is abandoned and never published, then it
cannot defeat novelty
Foreign Patent Applications
Patent application are treated as prior art on the day they are published
In USA
Foreign Patent Apps must fall w/in the category of "printed publication" in
order to be prior art (this makes it harder for foreigners to establish prior art, so
that US inventors could patent the same invention more easily)
How Does the Paris Priority Date Affect Prior Art?
What happens if an inventor filed several patent applications within the Paris
Priority period? Can a 3rd party use the Paris priority date (i.e. the filing date),
established by the first foreign filing, as the date that subsequent national applications
became prior art?
In Europe and Japan
Yes, a 3rd party can rely on the Paris Priority date in someone else's foreign
patent application, as the date on which all subsequent national filings become
prior art, as long as the application is later published or a patent is granted
The FILING DATE of the foreign application becomes the eff date
for establishing prior art as long as the application is later published or a
patent is granted.
In US (BEFORE Mar 16, 2013):
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Hilmer Doctrine: --> filing date of foreign application DOES NOT become
the effective date for establishing prior art in the US (this is the rule from the
Eastman Kodak case)
The PUBLICATION DATE counts
(The Hilmer rule makes the prior art date later -- i.e. a foreign inventor
would have a harder time obtaining patent, because riskier -- greater chance of
being defeated by prior art)
Note: The AIA harmonizes US law w/ Europe and Japan for Patent Applications
filed on/after 3/16/2013
Note -- we skipped Studiengesellschaft Kohle v. Eastman Kodak -- but see above -- it illustrates the
Hillmer doctrine, which was abolished by the America Invents Act
Patenting or Biopiracy?(Only 1 assignment here -- pp. 369 - 376)
NOTE: We didn't talk about this during class...
Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge
and Folklore (p. 369)
Nonobviousness / Inventive StepArt. 27 TRIPS:
... patents shall be available for any inventions, whether products or processes, in all fields oftechnology, provided that they are new, involve an inventive step, and are capable of industrialapplication
The "Inventive step" is synonymous with "non-obvious" analysis
Nonobviousness requires examination of prior art
Key Dates
First-to-file countries
Key date = Filing Date
US
Patents Existing or Applications Filed Before 3/16/2013
Date of invention or reduction to practice
Patents Filed On/After 3/16/2013
Filing Date
Paris Convention
The US, EU, and Japan
Paris Priority Date of a foreign application should NOT be used to establish the date on
which it becomes prior art in the domestic country
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so we don't have the same issue as we have with novelty
Rules
US Law
Patent Act §103
(The KSR case -- not assigned)
Held
A person of "Ordinary skill" in the art means someone with an undergraduate
degree
"Non-obvious" means that a person of "ordinary skills" would not have seen the
'inventive step' as obvious
EU Law (see casebook p. 381)
European Patent Convention Article 56
An invention shall be considered as involving an inventive step if, w.r.t to the state of theart, it is not obvious to a person skilled in the art.
If the state of the art contains "documents w/in EPC Art 54(3)", those documents
(namely, patent applications) are NOT to be considered in determining whether there has
been an inventive step
EPC 54(3)
The content of European patent applications, as filed
Sandoz GmbH v. Roche Diagnostics GmbH (High Ct of Justice Chancery Division (England &
Wales 2004) (p. 381)
Facts
Invention was a method for preserving proteins when being prepared for multi-dose medical
application
Priority is claimed from Aug 15, 1991
Issue
Was the process "obvious" at the priority date?
i.e. was the claimed process obvious to the skilled man as at the priority date or it required any
degree of invention?
Held
Yes, obvious
Rule
4-step Test
Identify the Inventive Concept
The "Skilled Person" standard
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(see p. 383)
Person/Team must have general knowledge of the field, AND must not be creative
enough to apply for the patent on their own
Differences between the "known/used" and the alleged invention
Determine what the "common knowledge is
Assess the differences -- would the skilled person have considered the differences
obvious (at the time of invention, given the general knowledge)
Analysis
Inventive Step
No dispute -- this test is satisfied
Step 3
(See p. 385) journals etc represented the common knowledge at the time of invention
Determine in the context of the present invention:
The identity of the PHOSITA => The common general knowledge => the content of
eight works that were current in 1991
Obviousness over common knowledge => would have been obvious to any formulation
scientist (including his team) in 1991 to try to combine what were conventional
preservatives and test their reaction upon a protein based formula?
NO. In 1991 to try a range of preservatives and their synergistic combination was
the product of hindsight
Notes
Note 8, p. 387 - Paris Priority Dates for Obviousness purposes
EU, US and Japan agree that the Paris priority date of a foreign application should NOT be
used to establish the date on which it becomes prior art in the domestic country, for determining
nonobviousness.
(This is to prevent foreigners from getting the prior art key time too soon, and making it more
difficult for domestic inventors to get patents)
Exclusive RightsNote -- we skipped a lot of stuff here.. picked up from Compulsory Licenses
Compulsory LicensesGeneral Doctrine
Art 31 TRIPS: Compulsory Licenses (see p. 419 - 420)
Compulsory Licenses are Exceptions to exclusive rights provided by patent law
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Allows a 3rd party to use patent w/o owner's permission
Each case shall be decided individually
Can only be used if
Proposed user has made prior efforts to get authorization from rights holder, on reasonablecommercial terms
Efforts have not been successful w/in reasonable pd of time
Scope
Use must be limited to the purpose for which the Compulsory License was authorized
Predominantly for the supply of the domestic market of the Member authorizing use of
the compulsory license
Duration
Compulsory license ends when the need ends
Exclusive/Non-Exclusive
Must be non-exclusive
Transfer
Must be non-assignable (except with the part of the enterprise or goodwill which enjoys
such use)
License Fees
Licensee must pay Right holder "adequate remuneration"
Decisions about remuneration are subject to judicial review
Waiver of Compulsory License
In case of emergency, circumstances of extreme urgency (patent holder must be notified
as soon as practicabaly possible), and non-commercial use
Validity
Validity of CL is subject to judicial review
Anti-competitive practice
Compulsory licenses can be used to remedy anti-competitive practices (e.g. antitrust)
The "Second-Patent" Rule
Where use of the compulsory license is authorized to permit the exploitation of a
"second patent", which will infringe a "first patent", then:
The invention claimed in the 2nd patent shall involve an "important technical
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advance" of "considerable economic significance" in relation to the inventionclaimed in the 1st patent, AND
The owner of the 1st patent shall be entitled to a cross-license on reasonable termsto use the invention claimed in the 2nd patent
The use/rights authorized by the 1st patent shall be non-assignable except with theassignment of the 2nd patent
Compare Compulsory Licenses for Copyright vs Patent
Compulsory licenses for patents encroach more on patent holders' rights - issues
Matter of scale?
e.g. potentially millions of say, drug users ==> losses for patent holder?
Licensor/Licensee relationship
Much more is transferred to licensee (with patents vs copyright)
W/ compulsory licenses, companies lose ability to choose licensees carefully --
licensees they can trust
Possibility to create competition for yourself
You're essentially giving the licensee the tools to become a competitor in the
future
Compulsory Licenses and Patented Life-Saving Medicines
Working Requirements (Note this was also covered above)
e.g. product must be produced/sold in the country
Motivation:
economic incentives -- e.g. ensure that the patent owner provides jobs
Prevent owner from merely blocking others from making the product
PARIS Conv Art 5
Importation of the product into the country from another Paris country cannot constitutethe reason for forfeiture of the patent
At least, if the product is imported (without being made/produced, etc in the
country), then the patent won't be forfeited
Compulsory licenses can be granted to prevent abuses such as failure to work
If CL not sufficient to prevent said abuses then --> forfeiture after 2 yrs from grant of CL
i.e. if you didn't solve the problem of abuse (i.e. not importing product) w/in 2
years, then patent can be forfeited
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No CL b4 4 yrs from date of filing, or 3 yrs from date of patent grant, whichever expires
last
No CL if there is 'justification'
"Justification" can be, e.g.
e.g. lack of infrastructure to produce product; lack of resources
e.g. war
CL shall be non-exclusive and non-transferrable
TRIPS Art 27(1)
"Patents shall be available and rights enjoyable w/o discrimination as to whether
products are imported or locally produced"
i.e. no forfeiture for violation of working requirements
Open issue: Is the grant of a compulsory license for failure to work a
"discrimination" under Art 27 of TRIPS?
TRIPS Art 31
A Country may order the grant of a compulsory license for a patented invention
Brazil -- Measures Affecting Patent Protection (WTO 2011) (p. 424)
Facts
Brazil AIDS compulsory license led to successful program
Other developing countries wanted to use similar compulsory license
Large US pharma co's challenged the validity of the compulsory license to the WTO
Issue
Is the Compulsory License valid?
Held
No holding. Both sides dropped the issue
Analysis
Ultimately, the Pharma co's were taking an unpopular position
The Doha Declaration (pp. 428 - 429)
Point (4)
TRIPS does not and should not prevent members from taking measures to protect public health
TRIPS should be interpreted and implemented to support protection of public health and
promote access to medicines
WTO co's have the right to fully use TRIPS provisions that provide flexibilities In this context
Point (5)
TRIPS should be integrated in light of its objective and purpose
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Countries have
The right to grant compulsory licenses
The freedom to determine the grounds upon which such licenses are granted
The right to determine what constitutes a national emergency or other circumstances of
extreme emergency
The right to establish their own regimes for exhaustion of IPRs
Point (6)
TRIPS Council must find an expeditious solution to the problem of countries w/ insufficient or
no manufacturing capabilities
Reconcile w/ TRIPS Art 31 -- Compulsory license is limited to the domestic market
where needed; but what happens if they can't manufacture?
Point (7)
Developed countries commit to transfer technology to least-developed Members
The Implementation Decision
TRIPS Incorporated Paragraph 6 of the Doha Agreement
Definition of “pharmaceutical product” (see p. 430)
Definition of “eligible importing member”
Least-developed countries
Other members with insufficient manufacture capability
Definition of “exporting member”
The obligations of Art. 31(f) shall be waived for pharmaceutical products and in the case of
“eligible exporting countries” based on the following terms:
Notification by the importing country
Name of the product and quantity ...
Compulsory licenses’ conditions:
Specified amount and importing country
Labeling, special packaging ...
Information on website
Notification by the exporting country
Measurers to prevent importation in markets other than those indicated in the compulsory
license
Thailand's Compulsory Licenses and Retaliation (see pp. 434 - 438)
Note: I don't have lecture notes on this.. Also, it's not in Prof's lecture slides
But I DO remember talking about it. sooooo
Thailand had mandated several compulsory licenses for drugs
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US drug companies retaliated by withdrawing other drugs from the marketplace
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