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Full-Text Articles in Law
Patent Prior Art And Possession, Timothy R. Holbrook
Patent Prior Art And Possession, Timothy R. Holbrook
William & Mary Law Review
Prior art in patent law defines the set of materials that the United States Patent and Trademark Office (USPTO) and courts use to determine whether the invention claimed in a patent is new and nonobvious. One would think that, as a central, crucial component of patent law, prior art would be thoroughly theorized and doctrinally coherent. Nothing could be further from the truth. The prior art provisions represent an ad hoc codification of various policies and doctrines that arose in the courts.
This Article provides coherency to this morass. It posits a prior art system that draws upon property law’s …
Indefiniteness As An Invalidity Case, Janet M. Smith
Indefiniteness As An Invalidity Case, Janet M. Smith
William & Mary Law Review
No abstract provided.
Perverse Innovation, Dan L. Burk
Perverse Innovation, Dan L. Burk
William & Mary Law Review
An inescapable feature of regulation is the existence of loopholes: activities that formally comply with the text of regulation, but which in practice avoid the desired outcome of the regulation. Considerable ingenuity may be devoted to exploiting regulatory loopholes. Where technological regulation is at issue, such ingenuity may often be devoted to developing new technology that avoids the regulation; such innovation may be termed “perverse” because it is directed to avoiding the regulation that prompted it. Nonetheless, in this Article I argue that such regulatory circumvention may result in socially beneficial innovation. Drawing on insights from innovation policy in the …
The Changing Guard Of Patent Law: Chevron Deference For The Pto, Melissa F. Wasserman
The Changing Guard Of Patent Law: Chevron Deference For The Pto, Melissa F. Wasserman
William & Mary Law Review
Whereas Congress has increasingly turned to administrative agencies to regulate complex technical areas, the patent system has remarkably remained an outlier. In the patent arena, the judiciary— not a federal agency—is perceived to be the most important expositor of substantive patent law standards. Yet, as the criticism toward the patent system has grown, so too have the challenges to this unusual power dynamic. The calls for institutional reform culminated in late 2011 with the enactment of the historic Leahy-Smith America Invents Act (AIA). Although scholars have recognized that the AIA bestows a glut of new powers upon the United States …
The Federal Circuit As A Federal Court, Paul R. Gugliuzza
The Federal Circuit As A Federal Court, Paul R. Gugliuzza
William & Mary Law Review
The U.S. Court of Appeals for the Federal Circuit has exclusive jurisdiction over patent appeals and, as a consequence, the last word on many legal issues important to innovation policy. This Article shows how the Federal Circuit augments its already significant power by impeding other government institutions from influencing the patent system. Specifically, the Federal Circuit has shaped patent-law doctrine, along with rules of jurisdiction, procedure, and administrative law, to preserve and expand the court's power in four interinstitutional relationships: the court's federalism relationship with state courts, its separation of powers relationship with the executive and legislative branches, its vertical …
What Is The "Invention"?, Christopher A. Cotropia
What Is The "Invention"?, Christopher A. Cotropia
William & Mary Law Review
Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which “invention” the courts should be considering.
There are two concepts of invention currently in play in patent decisions. The first is an “external invention” definition, in …
The Null Patent, Sean B. Seymore
The Null Patent, Sean B. Seymore
William & Mary Law Review
Failure is the basis of much of scientific progress because it plays a key role in building knowledge. In fact, negative results compose the bulk of knowledge produced in scientific research. This is not a bad thing because failures always produce valuable technical information—whether it be a serendipitous finding, an abundance of unexpected technical data, or simply knowledge that an initial hypothesis was totally wrong. Though some have recognized that the dissemination of negative results has many upsides for science, transforming scientific norms toward disclosure is no easy task. As for patent law, the potentially important role that negative results …
Rules For Patents, Michael J. Burstein
Rules For Patents, Michael J. Burstein
William & Mary Law Review
There is widespread agreement that the patent system in the United States is in need of reform. Most of the proposals for patent reform that have proliferated in recent years share two common assumptions: first, that patent policy is best made through case-bycase adjudication of the validity of individual patents; and, second, that the existing allocation of authority over patent policy, in which the courts are primarily responsible for interpreting and applying the broad language of the Patent Act, ought not to be disturbed. This
Article challenges both assumptions. I approach the problem of patent reform primarily as a problem …
Self-Realizing Inventions And The Utilitarian Foundation Of Patent Law, Alan Devlin, Neel Sukhatme
Self-Realizing Inventions And The Utilitarian Foundation Of Patent Law, Alan Devlin, Neel Sukhatme
William & Mary Law Review
Unlike other forms of intellectual property, patents are universally justified on utilitarian grounds alone. Valuable inventions and discoveries, bearing the characteristics of public goods, are easily appropriated by third parties. Because much technological innovation occurs pursuant to significant expenditures—both in terms of upfront research and subsequent commercialization costs—inventors must be permitted to extract at least part of the social gain associated with their technological contributions. Absent some form of proprietary control or alternative reward system, economics predicts that suboptimal capital will be devoted to the innovative process. This widely accepted principle comes with an important corollary: namely, that canons of …
A Realistic Approach To The Obviousness Of Inventions, Daralyn J. Durie, Mark A. Lemley
A Realistic Approach To The Obviousness Of Inventions, Daralyn J. Durie, Mark A. Lemley
William & Mary Law Review
No abstract provided.
Inherency, Dan L. Burk, Mark A. Lemley
Inherency, Dan L. Burk, Mark A. Lemley
William & Mary Law Review
No abstract provided.
Patent Claim Interpretation Methodologies And Their Claim Scope Paradigms, Christopher A. Cotropia
Patent Claim Interpretation Methodologies And Their Claim Scope Paradigms, Christopher A. Cotropia
William & Mary Law Review
The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity. This Article will explore the not-yet-discussed relationship between …
Patent First, Ask Questions Later: Morality And Biotechnology In Patent Law, Margo A. Bagley
Patent First, Ask Questions Later: Morality And Biotechnology In Patent Law, Margo A. Bagley
William & Mary Law Review
This Article explores the U.S. "patent first, ask questions later" approach to determining what subject matter should receive patent protection. Under this approach, the US. Patent and Trademark Office (USPTO or the Agency) issues patents on "anything under the sun made by man," and to the extent a patent's subject matter is sufficiently controversial, Congress acts retrospectively in assessing whether patents should issue on such inventions. This practice has important ramifications for morally controversial biotechnology patents specifically, and for American society generally. For many years ajudicially created "moral utility" doctrine served as a type of gatekeeper of patent subject matter …
Curbing The Federal Circuit's Enthusiasm: An Argument For A Rebuttable Presumption Against Application Of The Doctrine Of Equivalents To Disclosed But Unclaimed Subject Matter, Jeffrey M. Connor
William & Mary Law Review
No abstract provided.
The Slippery Slope Of Secrecy: Why Patent Law Preempts Reverse-Engineering Clauses In Shrink-Wrap Licenses, John E. Mauk
The Slippery Slope Of Secrecy: Why Patent Law Preempts Reverse-Engineering Clauses In Shrink-Wrap Licenses, John E. Mauk
William & Mary Law Review
No abstract provided.
Rethinking Patent Law In The Administrative State, Orin S. Kerr
Rethinking Patent Law In The Administrative State, Orin S. Kerr
William & Mary Law Review
This Article challenges the Supreme Court's recent holding that administrative law doctrines should apply to the patent system. The Article contends that the dynamics ofpatent law derive not from public law regulation, but rather from the private law doctrines of contract, property, and tort. Based on this insight, the Article argues that administrative law doctrines such as Chevron and the Administrative Procedure Act should not apply within patent law, and that such doctrines in fact pose a serious threat to the proper functioning of the patent system.
Tipping The Balance: Hilton Davis And The Shape Of Equity In The Doctrine Of Equivalents, Jonathon Taylor Reavill
Tipping The Balance: Hilton Davis And The Shape Of Equity In The Doctrine Of Equivalents, Jonathon Taylor Reavill
William & Mary Law Review
No abstract provided.
Conception And The "On Sale" Bar, David W. Carstens, Craig Allen Nard
Conception And The "On Sale" Bar, David W. Carstens, Craig Allen Nard
William & Mary Law Review
No abstract provided.
An Antitrust Solution To The New Wave Of Predatory Patent Infringement Litigation, Michael Paul Chu
An Antitrust Solution To The New Wave Of Predatory Patent Infringement Litigation, Michael Paul Chu
William & Mary Law Review
No abstract provided.
Nonobviousness In Patent Law: A Question Of Law Or Fact?
Nonobviousness In Patent Law: A Question Of Law Or Fact?
William & Mary Law Review
No abstract provided.
After Blonder-Tongue: Back To The Laboratory To Find A Patent Validation System Even A Court Could Trust
William & Mary Law Review
No abstract provided.
The Utility Requirement In Chemical Process And Chemical Intermediate Patent Claims, James K. Stewart
The Utility Requirement In Chemical Process And Chemical Intermediate Patent Claims, James K. Stewart
William & Mary Law Review
No abstract provided.