Volume Two Abstracts




Legal Updates


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Biodiversity and Bioprospecting: From Global Policy to Local Action via National Legislation

Michael A. Gollin
Partner, Spencer & Frank, Washington, D.C.

Prospecting for biological resources raises a host of competing concerns, from protecting the rights of indigenous peoples to protecting the research and development investments of biotechnology firms. This article examines the potential impact of international environmental, free trade, and intellectual property agreements on the bioprospecting industry. The article then discusses the role of national source country legislation and source countries' rights in contractual agreements with bioprospecting firms. Finally, the article concludes that an intellectual property paradigm, in conjunction with appropriate national legislation, can protect the interests of source countries while encouraging sustainable bioprospecting.

The Expanded Hypothetical Claim Test: A Better Test for Infringement for Biotechnology Patents Under the Doctrine of Equivalents

Michael T. Siekman
Associate, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C.

This article proposes a new test for patent infringement under the doctrine of equivalents, one that is of particular use to biotechnology patents. After analyzing the shortcomings of Graver Tank's substantial differences and tripartite tests, the article discusses the hypothetical claim test recently introduced in Wilson Sporting Goods, Inc. v. David Geoffrey Associates. The article proposes an expansion of Wilson's hypothetical claim test to determine patent infringement and addresses possible criticisms of the test. Finally, the article concludes by applying the expanded hypothetical claim test to the facts of Genentech, Inc. v. The Wellcome Foundation, Ltd., the only biotechnology patent case ever reversed on appeal, and a good illustration of the failings of the present test for infringement under the doctrine of equivalents.

Essay: Legend v. Pragmatism

George W. Conk
Partner, Tulipan & Conk, P.C., South Orange, N.J.

In this essay, originally presented as a speech to the American Bar Association Standing Committee on Scientific Evidence, the author examines the legal debate over the use of scientific evidence in the nation's courts. Contrasting two views of science, Legend and Pragmatism, he draws upon the writings of epidemiologists and scientists alike, to critique the judiciary's view of scientific evidence.


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Is There a Doctor in the House? Licensing and Malpractice Issues Involved in Telemedicine

Lynette A. Herscha
B.A., 1993, Boston University; J.D. (anticipated), 1996, Boston University School of Law.

This note examines the emerging field of telemedicine and how it fits into the current legal system, with emphasis on the licensing of physicians in telemedicine networks and standards for medical malpractice. The note explores the difficulties of placing telemedicine within the confines of existing malpractice and state licensing laws, which stem from telemedicine's broad geographic range. This note proposes regulatory changes within the existing legal structure to facilitate the technological advance and utilization of telemedicine.

Recording Security Interests in Patents: Accepting the Traditional Federal System to Preserve Policies of Patent Law

Van Mahamedi
B.S., 1991, University of California at Santa Barbara; M.S., 1993, University of California at Santa Barbara; J.D. (anticipated), 1996, Boston University School of Law, Concentration in Intellectual Property Law.

Patents increasingly are being used by debtors as collateral to secure loans. Considerable confusion exists, however, as to the means by which secured creditors may perfect their security interests in these patents against subsequent creditors and assignees of the same patent. Both section 261 of the Patent Act and Article 9 of the Uniform Commercial Code arguably govern the recording of security interests in patents; insofar as Article 9's recording system is designed to promote secured transactions, it potentially conflicts with section 261 of the Patent Act and the policies that underlie patent law. The note posits that the Article 9 recording system is ill-suited for transactions that are secured by patents, and argues that to safeguard the interest of both sophisticated creditors and licensees, only section 261 of the Patent Act should govern the recording of security interests in patents.

Baby Needs A New Pair of Cybershoes: The Legality of Casino Gambling on the Internet

Nicholas W. Robbins
B.A., 1990, Connecticut College; J.D. (anticipated), 1997, Boston University School of Law.

Gambling has made its way onto the Internet: book-making, lotteries, and casino gambling currently are available to anyone with a personal computer, modem, and access to the Internet. This note analyzes the development and operation of Internet gambling, and its legality under applicable federal and state anti-gambling laws. The note argues that offering Internet gambling violates both federal and state laws, but queries whether federal law can reach individuals who are based outside the United States and who accept bets from United States residents via the Internet. The note concludes that even if the federal government can reach this activity in theory, in practice technological innovations and the nature of the Internet render enforcement impossible. Finally, the note raises the question whether in the age of the Internet, national boarders, jurisdictions, and law enforcement have become meaningless speed bumps along the information superhighway.

Tailoring Cost-Benefit Analysis to Environmental Policy Goals: Technology- and Health-Based Standards in the Age of Regulatory Reform

March Sadowitz
B.S., 1989, Rensselaer Polytechnic Institute; M.A., 1992, State University of New York at Albany; M.S., 1993, Bard College; J.D. (anticipated), 1997, Boston, University School of Law.

The regulatory reform movement currently underway in the United States Congress is demanding that environmental regulations better promote economic efficiency. This note examines the strengths and weaknesses of health- and technology-based standards under the Clean Air Act and the Clean Water Act, and argues that the uniform application of cost-benefit analysis to these standards would limit their success. The note argues instead that lawmakers should evaluate health- or technology-based standards according to whether they are aspirational, feasible, or protective against unacceptable risk. The note concludes that aspirational health- and technology-based standards should not be judged under a cost-benefit test, because such a test would eliminate their aspirational purpose. Feasible technology- based standards, and health-based residual risk standards, on the other hand, should be evaluated under a cost-benefit est in order to promote economic efficiency and the consideration of risk tradeoffs.


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Virtual Reality Evidence

Gregory P. Joseph
Partner, Fried, Frank, Harris, Shriver & Jacobson, New York, N.Y.

The advent of virtual reality has yielded a technology that is being used to present visual evidence, such as re-creations of past conditions or events, in the courtroom. The use of virtual reality evidence raises typical evidentiary issues of authenticity and hearsay; in addition, its unique interactivity raises new questions, including what kind of access jurors should have to the technology. The author argues that existing principles governing computer-generated evidence provide benchmark legal standards, and that existing evidentiary standards, combined with judicial flexibility, should allow for the increased use of virtual reality evidence in the courtroom.

Internet Telephony Architecture and Federal Access Charge Reform

Christopher Libertelli
Associate, Dow, Lohnes &Albertson, Washington, D.C.

Recently, a number of start-up software companies have begun marketing Internet telephony applications to Internet subscribers, enabling consumers with a personal computer and modem to make long-distance calls without paying for the long-distance service. Users of the software can make calls to others using similar software, or dial conventional telephones connected to public-switched telephone networks. The author provides a working definition of Internettelephony software applications and the underlying Internet transmission architectureoffered, and discusses the federal regulatory environment in which Internet telephonyoperates, including the recent passage of the Telecommunications Act of 1996.

Copyright Protection for Photographs in the Age of New Technologies

Michael S. Oberman
Partner, Kramer, Levin, Naftalis, Nessen, Kamin & Frankel, New York, N.Y.

Trebor Lloyd
Associate, Kramer, Levin, Naftalis, Nessen, Kamin & Frankel, New York, N.Y.

In the age of new technologies, in which photographic images can be transformed into digital images and incorporated into new and different works, the authors conclude that traditional copyright doctrines remain capable of protecting the rights of copyright owners. In this column, the authors discuss recent case law developments in the area of copyright and its effect on the rights of photographers in the images they create.

CGL Insurance Coverage for Patent Infringement

Jason Reyes
Associate, Fish & Richardson, Boston, MA

"[W]hether CGL advertising injury coverage includes liability for patent infringement [has become] one hotly litigated topic in insurance coverage law." That was how one court described the ongoing struggle between insurers and insureds over CGL insurance coverage for patent infringement. In an update to his 1995 note on the same topic, the author surveys the latest developments in the case law. He concludes that despite innovative arguments by insureds, courts have continued to uphold the denial of coverage by insurers. A few courts have bucked the trend, however. Furthermore, the recently-added extension of infringement liability to "offer[ing] to sell" renders the future uncertain.

Legal Updates

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Biotechnology and Biotechnology Patent Updates

These updates discuss Recombinant Bovine Somatotrophin-Stauber v. Shalala, in which the District Court for the District of Wisconsin upheld the Food and Drug Administration's approval of the use of synthetic bovine growth hormone to increase milk production in livestock; the controversial doctrine of equivalents test articulated in Hilton-Davis Co. v. Warner-Jenkinson Co.; and S 1111, recently enacted legislation that prohibits obviousness rejections of patent applications for biotechnology processes.

Copyright, Communications, and Computer Law Updates

These updates review the National Information Copyright Protection Act, which seeks to clarify and improve intellectual property rights protection over the National Information Infrastructure by amending the current copyright laws to suit the digital environment of the informationsuperhighway; the oral arguments in Lotus v. Borland, which were heldbefore the Supreme Court on January 8, 1996; and S 227, signed into law on November 1, 1995, which provides sound recording owners with exclusive performance rights in digitally transmitted performances of sound recordings.

Patent Law Updates

TThese updates review several recent decisions from the Court of Appeals for the Federal Circuit, including In re Chu, Quantum Corp. v. Rodime, PLC, Rite-Hite Corp. v. Kelley Co., King Instruments Corp. v. Perego, In re Ochiai, and In re Brana; the oral arguments that the United States Supreme Court heard on January 8, 1996 in the case of Markman v. Westview Instruments, Inc., regarding whether juries have the right to interpret patent claims; and recent guidelines promulgated by the Patent and Trademark Office on the utility requirements of sections 101 and 112 of the United States Patent Code and on the patentability of computer-related inventions.

Trademark Update

This update analyzes HR 1295, signed into law on January 16, 1996, which adds a new section to the Lanham Act to permit the enforcement of an injunction by the owner of a famous mark against any unauthorized commercial use of the mark that dilutes its distinctive quality.