In a 4 to 4 Per Curiam decision, the Supreme Court affirmed the 9th Circuit decision stating that there is no first sale defense for acquirers of gray market goods made abroad. The Supreme Court decision is not precedential and allows another attack on extraterritoriality, that is, the lack of IP rights exhaustion when acquiring goods made abroad. The present rulings, the 9th Circuit decision in Omega v. Costco and the Federal Circuit decisions on effect of extraterritoriality on patents, leave the gray market sellers and the refurbishers of patented products without protection if the goods are made abroad . While this outcome appears to be a fair outcome, it has an impact on other sellers of goods, such as Intel. The Supreme Court’s non-decision leaves the door open for reviewing the issue some other time. So, Extraterritoriality, do not put away the fighting gloves!

With little fanfare, the Bayh-Dole Act turned 30 years old on December 12, 2010.  If we were back in the 60’s, we would be reminded of the statement “never trust a person over 30,” but these are different times and the Bayh-Dole Act has more than proven its usefulness.  By allowing universities (and small businesses and not-for-profit organizations) to retain title to inventions generated under federally funded programs, the Bayh-Dole Act sparked the technology transfer process.  Universities such as MIT and Stanford (as well as Wisconsin and others) have spawned a large number of small companies, some of which have grown to be large companies.  While most of us dozed through this birthday celebration, the USPTO provided the cake and marked the occasion.  Director Kappos highlighted the connection between the Bayh-Dole Act and the constitutional basis of the patent system, the promotion of the advancement in both science and commerce.  We join today in celebrating the birthday of the Bayh-Dole Act and wish the Bayh-Dole Act many more happy returns.