Patents & Technology

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Jeremy McKinney, "'It's a Trap':  cDNA Is Patent Eligible!  But Is It Patentable?," 10 OKLA. J.L. & TECH. 69 (2014)

"On June 13, 2013, the Supreme Court issued a long-awaited decision in Ass'n for Molecular Pathology v. Myriad Genetics, Inc. (a.k.a. the Myriad gene patents case). The Court, in a rare unanimous decision, held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring.”  This ruling upset thirty years of settled expectations, as inventors and companies have relied on patent protection for their work in gene isolation. This case note will explore the implications of this ruling on future research, and innovation in the wake of the Court’s decision."

Maxwell S. Bayman, Subsidizing Advanced Nuclear Energy, 9 OKLA. J.L. & TECH. 62 (2013)

"This paper reviews the historical development of nuclear energy and compares it to other alternative sources of energy production. Section two discusses the process of planning, build-ing, and operating a nuclear facility and the tax consequences of each stage. The third section reviews and critiques the production tax credit for advanced nuclear facilities. Finally, this paper considers alternative tax-based solutions to promote nuclear energy through changes to corporate tax brackets and amendments to the credit system."

Shivan Mehta, Patent Reform Act of 2010:  The Time for Change Is Now, 7 OKLA. J.L. & TECH. 56 (2011)

"The Patent Reform Act of 2010 is a significant undertaking that will modernize the patent system by harmonizing American creativity and innovation with that of other developed countries. Continuous pressure and valid attempts to reform the patent system have existed throughout the last decade; however, the Patent Reform Act of 2010 has presented the most advantageous changes to the current patent system.  This note concentrates on details surrounding the major reformations present in the Patent Reform Act of 2010, which are expected to impact the American patent system. Much controversy is associated with many of the reforms due to the varying effects the Act stands to generate as a result of its ratification. Although the opinions of both the proponents and opponents of this Act are discussed, this note inherently appreciates and acknowledges the ultimate benefit the Reform Act of 2010 will render on the American technology market, i.e., synchronizing the processes for American creativity and innovation with those of developed countries and possibly stimulating essential innovations in the intellectual property realm."

Josh Harrison, Do the Evolution:  The Effect of KSR v. Teleflex on Biotechnology, 5 OKLA. J.L. & TECH. 42 (2009)

"This note analyzes KSR v. Teleflex and the effects the Court's holding is likely to have on the biotech industry. Part II begins the discussion with a brief overview of biotechnology's current and anticipated impact on human life. Part III addresses the intimate relationship between biotech and patent law, exploring what is needed and why for the field to prosper. Part IV outlines the general principles of the U.S. patent law system and succinctly delineates the progression of the "non-obvious" doctrine from the Supreme Court's Graham framework to the Federal Circuit's TSM test. In so doing, particular emphasis is deservingly paid to the troubling issue of hindsight bias and to the pervasive consequences it poses to proper patent analysis. Part V provides an introduction to the case, KSR v. Teleflex, and discusses its facts, its procedural history, and the Supreme Court's ruling and rationale. Part VI examines the decision and explores its likely impact on the future of biotechnology in America. Part VII discusses procedural alternatives available to better address hindsight bias and concerns regarding patent over-issuance. Part VIII concludes this note."

Elizabeth A. Richardson, Toward a Direct Functional Relationship Requirement for Claims to Software Encoded on a Computer-Readable Storage Medium: Rethinking In re Beauregard in Response to the USPTO’s Interim Guidelines Regarding the Patentability of Data Signal Claims, 3 OKLA. J.L. & TECH. 30 (2006)

As applied to software-related inventions, one of the most difficult and persistent issues in patent law is the appropriate scope of 35 U.S.C. § 101, which defines patentable subject matter. Specifically, the law remains unsettled as to whether claims to computer-readable media containing software (often called “Beauregard-type” or “floppy disk” claims) and claims to data signals embodied on carrier waves fall within the scope of § 101 as a general matter. Achieving final resolution of this question has important implications not only for patent law but for a wide swath of the information technology industry, as electronic distribution becomes an increasingly attractive means for dissemination of software. This paper explores the patentability of these Beauregard-type stored software claims under §§ 101 – 103 of the Patent Act through examination of several key Federal Circuit cases and policies of the United States Patent and Trademark Office.

D. Ward Hobson, Jr., Reforming the Patent System:  A Closer Look at Proposed Legislation, 3 OKLA. J.L. & TECH. 29 (2006)

This paper examines the purpose of the proposed reforms and their potential effect on the patent system.  Part II discusses whether the U.S. should adopt a first to file system.  Part III looks at the passage of questionable patents and the proposed post-grant review process.  Part IV examines whether prior art should be limited to information that is "reasonably and effectively accessible".  Part V addresses the duty of good faith and candor, and Part VI examines willful infringement and treble damages in patent litigation.

Melody Wriz, Are Patents Really Limited to 20 Years?--A Closer Look at Pharmaceuticals, 1 OKLA. J.L. & TECH. 5 (2003)

Melody Wirz is a registered patent agent and has received a B.S. from Oklahoma State University as well as an M.B.A. from Oklahoma City University. Ms. Wirz addresses current legislative loopholes concerning patents on pharmaceutical drugs as well as the effect legal monopolies have on generic drug entry into the marketplace. She would also like to extend her gratitude and thankfulness to her husband, Trey Wirz. Without his support, her success, both at law school and in life, would not be possible.

William E. Hickman & Michelle Saquet Temple, The On-Sale Bar After Pfaff, 1 OKLA. J.L. & TECH. 4 (2003)

William E. Hickman is a registered patent attorney and associate at the law firm of Haynes & Boone, where his practice includes patent prosecution and litigation. He was awarded a J.D. from the University of Houston Law Center, and two B.S. degrees from Texas A&M University. He is currently pursuing his L.L.M., specializing in Intellectual Property Law at the University of Houston Law Center. He is licensed to practice in California and before the United States Patent and Trademark Office. Mr. Hickman can be reached via email at or by phone at 713-547-2040.
Michelle Saquet Temple is a registered patent attorney and the owner of the Temple Patent Law Office in Canterbury, New Hampshire where her practice includes patent prosecution in the fields of software and bioinformatics. Ms. Temple was awarded her J.D. from Franklin Pierce Law Center and her B.S. from Rensselaer Polytechnic Institute. She is licensed to practice in New Hampshire and before the United States Patent and Trademark Office. Ms. Temple can be reached via email at or by phone at 603-783-8998.

Matt Rodgers, Attorney-Client Privilege in Patent Litigation: In Re Spalding Sports Worldwide, 1 OKLA. J.L. & TECH. 3 (2003)

Matt Rodgers, a 2003 graduate of the University of Oklahoma College of Law, provides this insight into the current status of attorney-client privilege in patent litigation. The Federal Circuit recently resolved a legal dispute that had split district courts for several decades regarding the application of the privilege in patent litigation. Some circuits followed the theory that patent attorneys act as mere conduits to the United States Patent and Trademark Office. Since their clients had no expectation of confidentiality, the communications were not privileged. Other circuits reasoned that patent attorneys are more than mere conduits, and that communications from client to patent attorney should be accorded the same protection as any other legal communication. The Federal Circuit held in In re Spalding Sports Worldwide that communications between a client and patent attorney are privileged, even if they contain mostly technical data, as long as the communication was made for the purpose of obtaining legal advice.