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Balancing The Competing Functions Of Patent Post-Grant Proceedings, Michael Xun Liu

Journal of Intellectual Property Law

Since the 1980s, the United States Patent and Trademark Office has amended or revoked patents through post-grant proceedings. These are quasi-judicial proceedings that are often used to resolve patent disputes. But aside from adjudicating private disputes, post-grant proceedings also aim to protect the public against invalid patents, create more certainty in patent rights, and bolster confidence in the patent system. These functions are often described as “examinational” because they rely on the PTO’s ability to reexamine the validity of issued patents.

This Article explores the extent to which post-grant proceedings under the America Invents Act (AIA) perform examinational functions. Although …

Standoff Between The Trademark Trial And Appeal Board (Ttab) And The Federal Courts: What "Houndstooth Mafia" Means For Judicial Authority Over Administrative Agencies, Matthew S. Chandler

Journal of Intellectual Property Law

No abstract provided.

Additive Manufacturing, Pay-For-Delay, And Mandatory Care: Is There Space For Positive Reform?, Jordan L. Jackson

Journal of Intellectual Property Law

No abstract provided.

The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat

Faculty Scholarship

The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments …

The Global Person: Pig-Human Embryos, Personhood, And Precision Medicine, Yvonne Cripps

Indiana Journal of Global Legal Studies

Chimeras, in the form of pig-human embryos engineered by CRISPR-Cas9 and other biotechnologies, have been created as potential sources of organs for transplantation. Against that background, and in an era of "precision medicine," this Article examines the concept of the global genetically modified person and asks whether humanness and personhood are being eroded, or finding new boundaries in intellectual property and constitutional law.

Three New Metrics For Patent Examiner Activity: Office Actions Per Grant Ratio (Ogr), Office Actions Per Disposal Ratio (Odr), And Grant To Examiner Ratio (Ger), Shine Tu

Law Faculty Scholarship

The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance/(total allowances total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions/Total …

When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat

Faculty Scholarship

The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish in …

Precedential Decisions At The Ptab: An Endangered Species?, Robert M. Yeh Ph.D

Chicago-Kent Journal of Intellectual Property

This Article describes the USPTO’s practice of designating certain opinions as precedential, informative, or representative and compares it to the practice of issuing precedential opinions at other agencies that conduct quasi-judicial proceedings. The Article explores the impact of these agency practices on stare decisis. It concludes that the USPTO should simplify its designation process, increase the number of precedential opinions, and by doing so improve consistency and predictability.

Without Clear Rules, Ptab Practices May Run Afoul Of The Apa, Arpita Bhattacharyya, Rachel L. Emsley

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Ignoring Administrative Decisions Through Settlement: A Holistic Approach, Vincent Escoto

Journal of the National Association of Administrative Law Judiciary

No abstract provided.

Complex Innovation And The Patent Office, Ryan Whalen

Chicago-Kent Journal of Intellectual Property

As the universe of available information becomes larger and innovation becomes more complex, the task of examining patent applications becomes increasingly difficult. This Article argues that the United States Patent Office has insufficiently responded to changes in the information universe and to innovation norms. This leaves the Patent Office less able to adequately assess patent applications, and more likely to grant bad patents. After first demonstrating how innovation has been responsive to contemporary innovation norms for hundreds of years, this Article uses information and data science methods to empirically demonstrate how innovation has drastically changed in recent decades. After empirically …

Progress Or Profit: Reconsidering The Shortened Statutory Period Scheme, Max Oppenheimer

All Faculty Scholarship

No abstract provided.

The Landscape Of Modern Patent Appeals, Jason Rantaned

American University Law Review

No abstract provided.

Bigger And Better Patent Examiner Statistics, Shine Tu

Faculty & Staff Scholarship

The American government charges the United States Patent and Trademark Office (USPTO) with reading and reviewing patent applications to determine what new or improved inventions, machines, and processes qualify for patent protection. Each application is reviewed by a specific patent examiner who theoretically applies the standards of patentability in an even, fair, unbiased and consistent manner. This task requires the examiner to not only be internally consistent with the applications she reviews but also consistent with the behavior of other examiners within the same technology center. I have conducted two studies based on data from hundreds of thousands of patents, …

2017 Trademark Law Decisions Of The Federal Circuit, Anita B. Polott, Rachel E. Fertig

American University Law Review

No abstract provided.