Law Commons^™

The World’S Laboratory: China’S Patent Boom, It Standards And The Implications For The Global Knowledge, Christopher Mcelwain, Dennis Fernandez

Christopher McElwain

Just as China’s factories disrupted the economics of IT hardware, its research labs have the potential to disrupt the economics of the technology itself. In 2014, China’s patent office received nearly 2.4 million patent applications, 93% from domestic applicants. China has also climbed to third place in terms of international applications, with over 21,000 WIPO PCT applications. Meanwhile, China has taken an assertive role in setting technology standards, both at the national and international levels. In the past, this has included developing and promoting alternatives to important IT standards as a means of challenging perceived monopolies by certain (foreign-dominated) technologies. …

The Irrelevance Of Nanotechnology Patents, Emily Michiko Morris

Emily Michiko Morris

Once the stuff of science fiction, nanotechnology is now expected to be the next technological revolution, but despite millions of dollars of investment, we still have yet to see the brave new world of cheap energy, cell-specific drug delivery systems, and self-replicating nanobots that nanotechnology promises. Instead, nanotechnology seems to be in a holding pattern, perpetually stuck in the status of “emerging science,” “immature field,” and “new technology” for over three decades now. Why? Professor Mark Lemley and a number of others have suggested that the answer to this puzzling question is simple: nanotechnology differs from the all of the …

A Unified Framework For Rand And Other Reasonable Royalties, Richard J. Gilbert, Jorge L. Contreras

Richard J Gilbert

The framework for calculating “reasonable royalty” patent damages has evolved over the years to a point at which, today, it is viewed by many commentators as potentially misleading and untethered from its original purpose. We offer a proposal to modify the framework for determining reasonable patent royalties that is based on recent scholarly and judicial analyses of standards-essential patents that are subject to commitments to license on terms that are reasonable and non-discriminatory (RAND).

Many standard setting organizations require owners of patents that are essential to a standard to license those patents on RAND terms, but typically offer little specific …

Commercialization Awards, Camilla A. Hrdy

Camilla A Hrdy

Some patent law scholars have proposed introducing new forms of patents to promote commercialization of inventions that would not otherwise be commercialized, or at least not within a reasonable period of time. In this Article I suggest that so-called commercialization patents are unnecessary because the United States already has a system for promoting commercialization of inventions that does not require creating unprecedented exclusive rights: direct government financing. Drawing on statutes and administrative codes, I provide an in-depth account of the major commercialization financing options for inventors and entrepreneurs at both the federal and state levels. I then compare these incentives, …

Rebuttable Presumption Of Public Interest In Protecting The Public Health—The Necessity For Denying Injunctive Relief In Medically Related Patent Infringement Cases After Ebay V. Mercexchange, Lance E. Wyatt Jr.

Lance E Wyatt Jr.

The public’s interest in medicine and good health is substantial. However, this interest is harmed when important medical devices or pharmaceuticals, although infringing on valid patents, are suddenly taken off the market after a court grants a permanent injunction. While permanent injunctions were automatically granted by the Federal Circuit before the Supreme Court’s holding in eBay v. MercExchange, courts now have more discretion to deny injunctive relief. Now that courts have this newfound discretion after eBay, the public should no longer expect to be harmed by the sudden removal of medical supplies. Unfortunately, this has not been the course that …

Patent Assertion Entities & Privateers: Economic Harms To Innovation & Competition, Robert G. Harris

Robert G Harris

This paper addresses the problems of aggressive rent-seeking activities by patent assertion entities (PAEs) and privateers. Section II explains why aggressive patent assertion is especially problematic in patent thick products and systems (such as computers, smartphones and software), and why technological developments have increased the number and “density” of patent thickets. Section III addresses the fundamental differences in the strategic positions and interests of practicing entities and PAEs, and explains why those differences affect the conduct of PAEs and increase the opportunities for, and economic harm caused by, their rent-seeking conduct and efforts to engage in patent hold-up. Section IV …

Ptrc Resources At Sacred Heart University’S Ryan Matura Library:Trademarks & Patents, Amy Jansen, Robert Berry

Robert Berry

No abstract provided.

Rescuing Access To Patented Essential Medicines: Pharmaceutical Companies As Tortfeasors Under The Prevented Rescue Tort Theory, Richard Cameron Gower

Richard Cameron Gower

Despite some difficulties, state tort law can be argued to create a unique exception to patent law. Specifically, the prevented rescue doctrine suggests that charities and others can circumvent patents on certain critical medications when such actions are necessary to save individuals from death or serious harm. Although this Article finds that the prevented rescue tort doctrines is preempted by federal patent law, all hope is not lost. A federal substantive due process claim may be brought that uses the common law to demonstrate a fundamental right that has long been protected by our Nation’s legal traditions. Moreover, this Article …

Patent Trolls Among Us, Kent R. Acheson

Kent R Acheson

As Acheson (2012) suggested in A Study of the Need to Change United States Patent Policy, software should not be patented, but the Intellectual Property Rights should be protected in another manner that does not entail a Copyright, Trademark, or secrecy. A new form of protection should be created based on certain criteria, such as useful life of a patent, incremental innovation, value to society, and or value to life. Congress should devise a shorter-term idea protection specifically for the sequential or disruptive innovation, but not on the product.

Rescuing Access To Patented Essential Medicines: Pharmaceutical Companies As Tortfeasors Under The Prevented Rescue Tort Theory, Richard Cameron Gower

Richard Cameron Gower

Despite some difficulties, state tort law can be argued to create a unique exception to patent law. Specifically, the prevented rescue doctrine suggests that charities and others can circumvent patents on certain critical medications when such actions are necessary to save individuals from death or serious harm. Although this Article finds that the prevented rescue tort doctrines is preempted by federal patent law, all hope is not lost. A federal substantive due process claim may be brought that uses the common law to demonstrate a fundamental right that has long been protected by our Nation’s legal traditions. Moreover, this Article …

Could A Hub And Spoke, Homegrown Ceo Strategy Boost The Success Of University Start-Ups?, Brendan O. Baggot, Martin R. Graf Phd

Brendan O. Baggot

How can universities make more money with their spinout company (SpinCo)‐suitable technologies? By “growing” their own CEOs to improve both the quality and quantity of startup company leaders available, that’s how. Surprisingly, however, at most universities little or no effort is made to interweave this critical need into tech transfer efforts.

Professional And Academic Employee Inventions: Looking Beyond The Uk Paradigm, Justine Pila

Justine Pila

The vast majority of inventions are devised by employees, raising the question who is entitled to patent them? Under the UK Patents Act 1977, the right to patent an invention lies primarily with its inventor(s). However, an exception exists for employee inventions to which section 39(1) applies. The recent decision of the Full Court of the Federal Court of Australia in UWA v Gray raises the question of the applicability of this provision in the university context, in respect of regular academic employees. In that case, the Court relied on UK authorities to support its conclusion that the University of …

‘Sewing The Fly Buttons On The Statute:’ Employee Inventions And The Employment Context, Justine Pila

Justine Pila

Section 39(1) of the Patents Act 1977 governs the ownership of inventions devised by employees in the course of their employment. Introduced ‘to codify in a few lines the accumulated common law experience’ prior to 1977, it does not expressly differentiate between employment fields, and has been widely assumed to apply indiscriminately, without regard to the particular context of employment. The purpose of this article is to revisit that assumption. In the argument made, section 39(1) was built around a private sector paradigm the courts’ departure from which is supported by a ‘rational reason’ in the Shanks v Unilever plc …

Patent Eligibility And Scope Revisited After Schütz V. Werit, Justine Pila

Justine Pila

This chapter responds to the contribution of Professor Ted Sichelman in the same volume by reconsidering the UK courts’ method of determining patent scope. Using my earlier work regarding the role of eligibility as a determinant of patent scope as the departure point for that reconsideration, I argue that the theory of “patent eligibility scope” proposed in Sichelman’s chapter runs against the grain of UK patent jurisprudence by virtue of its uncertain and open-ended policy nature, and is therefore unlikely to be accepted by the UK courts. On the other hand, recent UK cases such as Schütz v. Werit can …

Intellectual Property Rights And Detached Human Body Parts, Justine Pila

Justine Pila

This paper responds to an invitation by the editors to consider whether the intellectual property (IP) regime suggests an appropriate model for protecting interests in detached human body parts. It begins by outlining the extent of existing IP protection for body parts in Europe, and the relevant strengths and weaknesses of the patent system in that regard. It then considers two further species of IP right of less obvious relevance. The first are the statutory rights of ownership conferred by domestic UK law in respect of employee inventions, and the second are the economic and moral rights recognized by European …

Primitive Accumulation And Enclosure Of The Commons: Genetically Engineered Seeds And Canadian Jurisprudence, Wilhelm Peekhaus

Wilhelm Peekhaus

This paper juxtaposes the legal decisions made in the case of Percy Schmeiser, who was sued by Monsanto for patent infringement, against the attempt by the Organic Agriculture Protection Fund to obtain class certification in its efforts to sue Monsanto and Bayer for genetic contamination of organic canola. Together these two cases establish an unacceptable incongruity at common law between the rights enjoyed by intellectual property owners and any corresponding duties that might attach to their inventions. I suggest that Marx’s concept of primitive accumulation offers a suitable theoretical register for apprehending contemporary erosions of the commons through the enclosure …

Recent Developments In Intellectual Property Law In Nigeria, Ufuoma Barbara Akpotaire

Ufuoma Barbara Akpotaire

Key Point – This article provides an overview of the developments in the field of Intellectual Property (IP) in Nigeria and highlights key issues in 10 recent judgments on IP Law in Nigeria. The cases are organized thematically according to the type of Intellectual Property Rights (IPRs) protected under the Nigerian legal system such as trademarks, copyrights, patents, and designs. The decision to pen this Article is borne out of a conversation with a colleague in New York, who seemed surprised to learn that I had worked as an IP lawyer in Nigeria. My colleague was aware of the existence …

The Future Of The European Requirement For An Invention: Inherent Patentability As A Pre- And Post-Patent Determinant, Justine Pila

Justine Pila

The purpose of this chapter is to develop the reflections contained in the conclusion of a recent book (The Requirement for an Invention in Patent Law (Oxford: OUP, 2010)). Specifically, it is to propose a method for applying the requirement for an invention under Article 52(1) of the EPC, including a definition of the invention itself. I argue that while the proposal does not solve all definitional and methodological issues regarding that requirement, it is nonetheless justified on four central grounds. First, it reorients the European patent system around its central aim of supporting industrial growth. Second, it explains much …

Intellectual Property As An ‘Investment’ In International Law: A Question Of Access To Medicines Vs Access To Justice, Christopher Wadlow

Christopher Wadlow

No abstract provided.

Hiv And Aids In Africa: Compulsory Licensing Under Trips And Doha Declaration, Ufuoma Barbara Akpotaire

Ufuoma Barbara Akpotaire

In today’s world, there is a lot of focus on issues such as militancy, global warming, terrorism, racism and even politics. Unfortunately, there is a problem that has killed and is still killing far more people than any of the above issues. That problem is HIV/AIDS.

AIDS is a serious medical condition that predisposes patients towards opportunistic infecting tumors, dementia and death. HIV is the viral agent associated with AIDS. Africa is without doubt more heavily affected by HIV/AIDS than any other region of the world. Although Nigeria’s HIV/AIDS prevalence rate is still relatively low compared to some countries in …

Patent Pleading After Iqbal: Using Infringement Contentions As A Guide, Richard Alan Kamprath

Richard Kamprath

“Patent Pleading After Iqbal: Using Infringement Contentions As A Guide” This article proposes how the new standard for pleading patent infringement related claims should be interpreted in light of the Supreme Court’s decisions in Twombly and Iqbal. The facial plausibility of a pleading requires more than bare allegations and must be supported with enough facts in order for the court to infer wrongdoing by the accused infringer. This article is dedicated to applying this theory of pleading to the practical world of the courtroom. Federal Rule 8 is discussed as the starting point to understanding pleading in the federal courts. …

Patents For Genes And Methods Of Analysis And Comparison, Justine Pila

Justine Pila

In March 2010, a United States (U.S.) District Court held that isolated human genes are “products of nature”, and methods of analysis and comparison “abstract mental processes”, for which a US patent cannot validly be granted. Its decision undermined U.S. patent granting practices, and widens the gap between U.S. and European law on what constitutes inherently patentable subject matter (“inventions”) and a proportionate patent grant. In this note I consider the case – AMP v USPTO – and its implications for European patent law.

Who Owns The Intellectual Property Rights In Academic Work?, Justine Pila

Justine Pila

In this Opinion piece the ownership of intellectual property rights in university teaching and research is considered against the backdrop of British university intellectual property policies and recent cases. Starting from the position of Lord Evershed that it is "just and commonsense" that academics own the copyright in their lectures, and by extension the copyright in their research, I consider the policy arguments for university claims of ownership in respect of such copyright and academic employees' inventions.

Maintaining Incentives For Healthcare Innovation: A Response To The Ftc's Report On Follow-On Biologics, Christopher M. Holman

Christopher M Holman

Congress is considering legislation that would create an abbreviated FDA approval process for follow-on biologics (FOBs), which proponents anticipate will promote competition and lower prices in the market for biologic drugs. In June of 2009 the FTC published a report on FOBs (“the FTC Report”), which attempts to forecast the nature of competition between innovator biologics and FOBs, and offers a number of substantive recommendations regarding specific provisions of the various FOB bills. In particular, the FTC Report concludes that there is essentially no justification for the inclusion of a substantial data exclusivity period (“DEP”) for innovators in pending FOB …

The Great Pharmaceutical Patent Robbery, And The Curious Case Of The Chemical Foundation, Christopher Wadlow

Christopher Wadlow

In 1918, the United States confiscated virtually all German-owned intellectual property assets within its jurisdiction. Out of 6,000 patents in the chemical field, 4,500 were assigned for a very modest consideration to an newly-established entity, the Chemical Foundation, which was incorporated with the objective of licensing and managing them for the benefit of the United States chemical industry. This article describes the origins and activities of the Chemical Foundation, and considers whether it provides a useful model, or at least useful lessons, for the collective management of patents today.

Firms' Global Patent Strategies In An Emerging Technology, Andrea Fernandez-Ribas

Andrea Fernandez-Ribas

Despite international patenting can be a costly and risky investment, an increasing number of firms patent proprietary technologies in foreign countries. This paper explores trends of global patenting in a new domain of technology characterized by rapid globalization. The research setting consists of the population of U.S.-based Large and Small and Mid-Sized firms (SMEs) filing nanotechnology-related patent applications at the World International Patent Office (WIPO) during 1996-2006.

This paper appears in: Science and Innovation Policy, 2009 Atlanta Conference on Publication Date: 2-3 Oct. 2009 On page(s): 1-5 ISBN: 978-1-4244-5041-1 INSPEC Accession Number: 11035266 DOI: 10.1109/ACSIP.2009.5367863 Posted online: 2009-12-28 12:00:57.0

Of Mice And Men: Why An Anticommons Has Not Emerged In The Biotechnological Realm, Chester J. Shiu

Chester J Shiu

In 1998 Michael Heller and Rebecca Eisenberg posited that excessive patenting of fundamental biomedical innovations might create a “tragedy of the anticommons.” A decade later, their dire predictions have not come to pass, an outcome which calls much of the legal scholarship on the topic into question. This Article proposes that legal commentators’ theoretical arguments have largely ignored two very important factors. First, the National Institutes of Health (NIH)—the single most important actor in the biomedical research industry—has played an active role in keeping the biomedical research domain open. In particular, regardless of what the current patent regime may theoretically …

Article 53(B) Epc: A Challenge To The Novartis Theory Of European Patent History, Justine Pila

Justine Pila

In this article the authoritative ('Novartis/transgenic plant systems') interpretation of the Article 53(b) EPC exclusion from European patentability of plant and animal varieties, and essentially biological processes for the creation of plants and animals, is considered, and its significance for the trend of EPO jurisprudence and legitimacy of the EC Biotechnology Patenting Directive noted. The Enlarged Board of Appeal's justification for that interpretation in 'Novartis' with reference to the exclusion's legislative history is challenged, and an alternative theory of that history proposed, based on a thorough analysis of the unpublished 'travaux preparatoires' for the Strasbourg and European Patent Conventions. In …

Chemical Products And Proportionate Patents Before And After Generics V Lundbeck, Justine Pila

Justine Pila

In Generics Ltd v Lundbeck A/S (2009) UKHL 12, the House of Lords affirmed the validity of a patent for a chemical product - an isolated stereoisomer - supported by a method of producing the product, but protecting the chemical product as such independent of the method by which it was made. In so doing, it appears to have resolved a longstanding tension between granting patents for chemical products and requiring that the scope of monopoly rights equiperate with the disclosure in the specification. It also appears to have rejected the Biogen Inc v Medeva plc (1997) RPC 1 (HL) …

Patents And Innovation, What We Learn From History, Severin De Wit

Severin de Wit

No abstract provided.