AUTM Journal Volume VI 1994


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Table of Contents

  • The Prior Art Effect of Material Transfer Agreements
    By J. Steven Whitaker
  • Sequence Necessary for DNA Patent Claims
    By Ellen P. Winner
  • Impact of the North American Free Trade Agreement on Canadian Intellectual Property Rights Relating to University Technology Management
    By Sheldon Burshtein
  • What Counts: A Publication Guide for the Inventor Seeking a Patent
    By Patricia A. Hider

Editor's Preface

Practitioners of technology transfer will attest to the multi-faceted nature of their profession, which combines aspects of business, science, and law. Previous volumes of this Journal have featured articles covering varied topics, including: specific legal issues, such as the art of patenting and licensing biotechnology, animals, and plants; business issues, such as product liability, licensee bankruptcy, withholding tax and unrelated business income tax; university administrative issues, such as conflict of interest and agreements governing ownership of university inventions; and analysis of the famous Bayh-Dole Act of 1980, on which the profession is based.

In Volume VI the emphasis is on intellectual property law. Three of the four articles focus on patent law, providing an "alert" to technology managers to watch for pitfalls in university practices that might cause problems later on in the patenting process. The fourth article concerns the North American Free Trade Agreement (NAFTA) and its effect on intellectual property law and rights at universities.

In his article entitled "The Prior Art Effect of Material Transfer Agreements," J. Steven Whitaker analyzes the use of MTAs and calls our attention to the potential loss of patentability when transfer agreements are utilized under certain conditions.

Ellen Winner examines the art and strategy of filing patent applications involving DNA segments. Her study, "Sequence Necessary for DNA Patent Claims," reviews the evolving state of the law in this area and calls for an appeal to the Federal Circuit.

In "What Counts: A Publication Guide for the Inventor Seeking a Patent," Patricia Hider compares various types of public disclosures, assesses their impact on the patent application process, and provides guidance derived from relevant case law.

On the second anniversary of the signing of the North American Free Trade Agreement, Sheldon Burshtein provides an extensive analysis of the NAFTA, with specific attention to its significance for intellectual property rights at universities in Canada, Mexico, and the United States. Mr. Burshtein's article is especially timely as the General Agreement on Tariffs and Trade (GATT) makes another appearance on the world scene.

The Editorial Board of the AUTM Journal welcomes letters and comments from its readers concerning issues raised in published articles or on other matters of interest to our colleagues. Letters may be considered for the "Letters to the Editor" section or forwarded to the individual author for reply, at the discretion of the Editor.

We thank the authors of this Volume, and encourage our readers to submit original papers on topics of interest to professional technology managers. Those contemplating writing an article or a letter to the Editor are asked to contact the Managing Editor for content and review procedures.

Jean A. Mahoney, Editor, December 1994