Law Commons^™

Vested Patents And Equal Justice, Adam Macleod

Catholic University Law Review

In a time of renewed interest in equal justice, the vested patent right may be timely again. Vested patent rights helped marginalized Americans to secure equal justice earlier in American history. And they helped to make sense of the law. Vested patent rights can perform those tasks again today.

The concept of vested rights render patent law coherent. And it explains patent law’s interactions with other areas of law, such as property, administrative, and constitutional law. The vested rights doctrine also can serve the requirements of equal justice, as it has several times in American history. Vested rights secure justice …

Fast-Tracks And Prizes: A Multi-Pronged Approach To Incentivizing Green Technology Innovation, Benjamin Desch

Washington Law Review

Faced with the ever-worsening climate crisis, many nations—including the United States—have increasingly recognized the urgent need for rapid advancements in green, clean, and sustainable technologies. Patents play a fundamental role in incentivizing technological innovation, but the traditional patent process is too slow to match the urgency of the climate crisis. At the same time, the marketplace significantly undervalues green technology patents because they confer benefits to third parties not involved in the transaction (referred to as “positive externalities”). To address the urgency issue, patent “fast-track” programs have been implemented to speed up the patent application review process. To mitigate the …

Of Inventorship And Patent Ownership: Examining The Intersection Between Artificial Intelligence And Patent Law, Cheng Lim Saw, Zheng Wen Samuel Chan

Research Collection Yong Pung How School Of Law

Artificial intelligence (“AI”) has garnered much attention in recent years, with capabilities spanning the operation of self-driving cars to the emulation of the great artistic masters of old. The field has now been ostensibly enlarged in light of the professed abilities of AI machines to autonomously generate patentable inventions. This article examines the present state of AI technology and the suitability of existing patent law frameworks in accommodating it. Looking ahead, the authors also offer two recommendations in a bid to anticipate and resolve the challenges that future developments in AI technology might pose to patent law. In particular, the …

Securing Patent Law, Charles Duan

Articles in Law Reviews & Other Academic Journals

A vigorous conversation about intellectual property rights and national security has largely focused on the defense role of those rights, as tools for responding to acts of foreign infringement. But intellectual property, and patents in particular, also play an arguably more important offense role. Foreign competitor nations can obtain and assert U.S. patents against U.S. firms and creators. Use of patents as an offense strategy can be strategically coordinated to stymie domestic innovation and technological progress. This Essay considers current and possible future practices of patent exploitation in this offense setting, with a particular focus on China given the nature …

Greasing The Wheels Of Patent Law: Clarifying The Judicial Exceptions Via American Axle & Manufacturing, Inc. V. Neapco Holdings Llc, Michael Oliver

Journal of Intellectual Property Law

Patents stimulate the economy, they give inventors (and investors in the patent) confidence that their work will be protected. You have never been able to patent laws of nature, natural phenomena or abstract ideas. These combine to create the judicial exceptions. The issue is that these terms are so broad that it is difficult to determine when a patent is connected to a judicial exception. The Supreme Court created the Alice test, a two-part test to determine whether a claim is tied to a judicial exception. That was back in 2014 and is the last time the Supreme Court has …

Patent Inconsistency, Saurabh Vishnubhakat

Indiana Law Journal

Despite the promise of efficiency through the use of expert agency adjudication in U.S. patent law, administrative substitution continues to fall short. In a variety of ways, the decade-old system of Patent Office adjudication is simply an additional place to litigate rather than the robust technocratic alternative it was meant to be. These problems have arisen from important defects in the statutory design, but also from the enormous expansion and ascendancy of the Patent Office itself. Moreover, while duplicative litigation over patent validity is recognized and criticized, its scale and scope has eluded detailed empirical analysis until now. This Article …

Creativity For The Common Good: The Case For Fair Use Of Prosthetics Patents, Roxanneh Mousavi

Seattle University Law Review

This Note examines how patent law inhibits accessibility to prosthetics, and how a fair use defense for patent infringement will make them more widely accessible. Part I will explain the basics of patent law, including its history, scope, and process of infringement. Part II will discuss the fair use defense against copyright and trademark infringement and explain why this defense should also be enforceable for patent infringement. Part III will provide an overview of 3D printing. Part IV will focus on 3D prosthetics, specifically on the story of two young prosthetic recipients, Griffin Matuszek and Evie Lambert. Finally, Part V …

Ostrich With Its Head In The Sand: The Law, Inventorship, & Artificial Intelligence, Ben Kovach

Northwestern Journal of Technology and Intellectual Property

As artificial intelligence (AI) system’s capabilities advance, the law has struggled to keep pace. Nowhere is this more evident than patent law’s refusal to recognize AI as an inventor. This is precisely what happened when, in 2020, the U.S. Patent and Trademark Office (USPTO) ruled that it will not accept an AI system as a named inventor on a patent.

This note explores untenable legal fiction that the USPTO’s ruling has created. First, it explores the current state of AI systems, focusing on those capable of invention. Next, it examines patent law’s inventorship doctrine and the USPTO’s application of that …

Characteristics Of Patent Examiners Who Issue Litigated / Invalidated Patents, S. Sean Tu

Law Faculty Scholarship

No abstract provided.

Federal Judge Seeks Patent Cases, Jonas Anderson, Paul R. Gugliuzza

Articles in Law Reviews & Other Academic Journals

That probably seems like a bizarre Craigslist ad. It’s not real—we mocked it up for this article. Still, and startlingly, it accurately portrays what’s happening in the Waco Division of the U.S. District Court for the Western District of Texas. One judge, appointed to the Western District only three years ago, has been advertising his courtroom through presentations to patent lawyers, comments to the media, procedural practices, and decisions in patent cases as the place to file a patent infringement lawsuit. That advertising has succeeded. In 2016 and 2017, the Waco Division received a total of five patent cases. In …

Patent Examination And Examiner Interviews, S. Sean Tu

Law Faculty Scholarship

Examiner interviews are one of the most powerful tools to help both inventors and examiners understand and overcome specific issues during prosecution. Direct discussions between an applicant and an examiner can help bridge the gap between misunderstandings of prior art, the invention, or statements in the specification. When used correctly, examiner interviews can dramatically decrease the time in prosecution and help applicants quickly reach a final disposition. This paper reviews approximately 1.1 million patent applications corresponding to every patent application with an examiner interview between 2007 and June 2020 to determine the effectiveness of examiner interviews. This study establishes that …

The (Unnoticed) Revitalization Of The Doctrine Of Equivalents, Daryl Lim

Faculty Scholarly Works

No abstract provided.

The Influence Of Alice: A Response To Jay P. Kesan & Runhua Wang’S Eligible Subject Matter At The Patent Office: An Empirical Study Of The Influence Of Alice On Patent Examiners And Patent Applicants, Daryl Lim

Faculty Scholarly Works

No abstract provided.

National Cybersecurity Innovation, Tabrez Y. Ebrahim

West Virginia Law Review

National cybersecurity plays a crucial role in protecting our critical infrastructure, such as telecommunication networks, the electricity grid, and even financial transactions. Most discussions about promoting national cybersecurity focus on governance structures, international relations, and political science. In contrast, this Article proposes a different agenda and one that promotes the use of innovation mechanisms for technological advancement. By promoting inducements for technological developments, such innovation mechanisms encourage the advancement of national cybersecurity solutions. In exploring possible solutions, this Article asks whether the government or markets can provide national cybersecurity innovation. This inquiry is a fragment of a much larger literature …

Third-Party Interests And The Property Law Misfit In Patent Law, Sarah Rajec

Faculty Publications

Courts and scholars have long parsed the characteristics of patent grants and likened them, alternately, to real or personal property law, monopolies, public franchises and other regulatory grants, or a hybrid of these. The characterizations matter, because they can determine how patents are treated for the purposes of administrative review, limitations, and remedies, inter alia. And these varied treatments in turn affect incentives to innovate. Patents are often likened to real property in an effort to maximize rights and allow inventors to internalize all of the benefits from their activities. And courts often turn first to real property analogies when …

Patent Law’S Purposeful Ambiguity, Craig Allen Nard

Faculty Publications

The ambiguity of language is an unremarkable, yet persistent force within our legal system. In the context of patent law, ambiguity presents a particularly acute dilemma; namely, while describing technological innovations is a salient feature of the patent system, affecting the validity and scope of one’s property right, the blunt nature of language makes this task particularly difficult. This paper argues to address this vexing fixture, patent doctrine purposely embraces ambiguity as a linguistic accommodation that provides measured flexibility for actors to claim and describe their innovations. It should not be surprising, therefore, that some of patent law’s most venerable …

Patently Risky: Framing, Innovation And Entrepreneurial Preferences, Elizabeth Hoffman, David L. Schwartz, Matthew L. Spitzer, Eric L. Talley

Faculty Scholarship

An emerging common wisdom holds that courts have made it “too hard” to obtain patent protection in critical industries. The origin of this criticism dates back at least as far as the United States Supreme Court’s 2012 landmark opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. which (the argument goes) triggered a chain reaction of judicial opinions rendering patent rights progressively more difficult to secure. Two years later, the Supreme Court decided Alice Corp. v. CLS Bank, another opinion widely viewed as restricting patent rights. And, barely three years after Mayo, the Federal Circuit cited it in …

Free Trade In Patented Goods: International Exhaustion For Patents, Sarah R. Wasserman Rajec

Sarah R. Wasserman Rajec

Modern international trade law seeks to increase global welfare by lowering barriers to trade and encouraging international competition. This “free trade” approach, while originally applied to reduce tariffs on trade, has been extended to challenge non-tariff barriers, with modern trade agreements targeting telecommunication regulations, industrial and product safety standards, and intellectual property rules. Patent law, however, remains inconsistent with free-trade principles by allowing patent holders to subdivide the world market along national borders and to forbid trade in patented goods from one nation to another. This Article demonstrates that the doctrines thwarting free trade in patented goods are protectionist remnants …

Regulatory And Judicial Implementations Of Patent Law Flexibilities, Sarah R. Wasserman Rajec

Sarah R. Wasserman Rajec

No abstract provided.

An Overview Of Patent Prosecution, Frederick W. Dingledy

Frederick W. Dingledy

No abstract provided.

Rethinking Patent Law In The Administrative State, Orin S. Kerr

Orin Kerr

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.

Wearables And Where They Stick: Finding A Place For Tech Tattoos In The Ip Framework, Emily A. Mccutcheon

Journal of Intellectual Property Law

No abstract provided.

Tightening The Gilstrap: How "Tc Heartland" Limited The Pharmaceutical Industry When It Reined In The Federal Circuit, Amanda Walton Newton

Journal of Intellectual Property Law

No abstract provided.

From Ip Goals To 3d Holes: Does Intellectual Property Law Provide A Map Or Gap In The Era Of 3d Printing?, Autumn Smith

Journal of Intellectual Property Law

No abstract provided.

Limb Law: Licensing Solutions For The Prosthetic Industry's Patentability And Cost Crisis, Ryan J. Mumper

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.

Getting Patent Preemption Right, Camilla A. Hrdy

Journal of Intellectual Property Law

No abstract provided.

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 …

Teva And The Process Of Claim Construction, Lee Petherbridge Ph.D., R. Polk Wagner

All Faculty Scholarship

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court addressed an oft-discussed jurisprudential disconnect between itself and the U.S. Court of Appeals for the Federal Circuit: whether patent claim construction was “legal” or “factual” in nature, and how much deference is due to district court decisionmaking in this area. In this Article, we closely examine the Teva opinion and situate it within modern claim construction jurisprudence. Our thesis is that the Teva holding is likely to have only very modest effects on the incidence of deference to district court claim construction but that for unexpected reasons the …

Trust: A Model For Disclosure In Patent Law, Ari Ezra Waldman

Indiana Law Journal

How to draw the line between public and private is a foundational, first-principles question of privacy law, but the answer has implications for intellectual property, as well. This project is one in a series of papers about first-person disclosures of information in the privacy and intellectual property law contexts, and it defines the boundary between public and nonpublic information through the lens of social science —namely, principles of trust.

Patent law’s public use bar confronts the question of whether legal protection should extend to information previously disclosed to a small group of people. I present evidence that shows that current …