Law Commons^™

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 …

Indefiniteness As An Invalidity Case, Janet M. Smith

William & Mary Law Review

No abstract provided.

The India Patent System: A Decade In Review, Vindhya S. Mani, Divyanshu Srivastava, Mukundan Chakrapani, Jay Erstling

Cybaris®

No abstract provided.

Amending Patent Eligibility, David O. Taylor

Faculty Journal Articles and Book Chapters

The Supreme Court’s recent treatment of the law of patent eligibility has introduced an era of confusion, lack of administrability, and, ultimately, risk of under-investment in research and development. As a result, patent law — and in particular the law governing patent eligibility — is in a state of crisis. In this Article I show why, despite this crisis, it is highly unlikely that the Supreme Court will correct itself and solve these problems. I therefore proceed to consider how Congress might — consistent with its constitutional authority — correct these problems through appropriate legislation. I identify principles that should …

How Much Has The Supreme Court Changed Patent Law?, Paul Gugliuzza

Faculty Scholarship

The U.S. Supreme Court has decided a remarkable number of patent cases in the past decade, particularly as compared to the first twenty years of the Federal Circuit’s existence. No longer is the Federal Circuit “the de facto Supreme Court of patents,” as Mark Janis wrote in 2001. Rather, it seems the Supreme Court is the Supreme Court of patents. In the article at the center of this symposium, Judge Timothy Dyk of the Federal Circuit writes that the Supreme Court’s decisions “have had a major impact on patent law,” citing, among other evidence, the Court’s seventy percent reversal rate …

I Dissent: The Federal Circuit's "Great Dissenter," Her Influence On The Patent Dialogue, And Why It Matters, Daryl Lim

Faculty Scholarly Works

No abstract provided.

U.S. Patent Extraterritoriality Within The International Context, Amy L. Landers

Amy L. Landers

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 Lawyer's Duty Of Disclosure Ethics And Sarbanes-Oxley The New Conundrum For Patent Lawyers, Abraham C. Reich, Steven J. Rocci

Akron Intellectual Property Journal

The general purpose of this paper is to sensitize intellectual property lawyers to the potential impact on their practice created by Sarbanes-Oxley. At a more detailed level, and because of the unique challenges facing them, this paper addresses Sarbanes-Oxley's potential impact on patent lawyers who practice before the PTO, even when it is the patent lawyer's sole practice. To that end, this paper will highlight relevant portions of Rule 56, the relevant ethical code sections, and the pertinent considerations under Sarbanes-Oxley.

Alice: The Status Quo Or Total Chaos?, Matthew Moldovanyi

Journal of Law, Technology, & the Internet

"On June 19, 2014 the Supreme Court handed down a highly important opinion discussing what is considered patentable subject matter in the United States. The case, Alice Corporation v. CLS Bank International, involved a group of patents for computer software that mitigated settlement risk in financial transactions. The Court held that these patents were not drawn to patent eligible subject matter under 35 U.S.C. § 101 (2012) because the claims were directed toward abstract ideas, which are unpatentable." "This ruling has drawn decidedly mixed reactions from commentators in the legal field. Moreover, this case leaves United States Patent and Trademark …

Legal Fictions And The Role Of Information In Patent Law, Craig Allen Nard

Faculty Publications

The common law plays a prominent role in the development of American patent law. Judicial stewardship of the patent space can be seen as an institutional advantage, one that compares favorably to punctuated, and potentially more distortive or inartful, congressional action. The common law allows for a certain flexibility, and despite its deep allegiance to tradition, crust forms more readily on statutory law than the common law. One of the tools that reflects this institutional litheness is the use of legal fictions, which have been employed by judges in various areas of the law seemingly since the beginning of the …

How Malleability Matters, Jason Rantanen

IP Theory

In The Malleability of Patent Rights^₁, I developed the concept that patent rights are malleable rather than static and fixed, distinguishing malleability from the idea that patent rights are merely uncertain. Malleability refers to the idea that the strength and scope of patent rights can be altered by the actors who interact with a patent well after it has issued. Patent law is full of mechanisms that allow for these post-issuance changes, yet there seems to be no good theoretical argument that supports malleability. At best, I concluded, the costs of malleability must be weighed against the doctrinal …

The Interconnections Between Entrepreneurship, Science, And The Patent System, Amy L. Landers

Amy L. Landers

Owning The New Economy: A Guide To Intellectual Property Management For Australia's Clean Technology Sector, Kane Wishart

Matthew Rimmer

Australia's history of developing and managing the intellectual property rights of domestic innovations is – at best – mixed. The relevant immaturity of Australia's public sector commercialisation infrastructure has, over recent decades, been the subject of both stinging academic commentary and not insubstantial juridical disbelief. That said, improvements have been observed, and increasingly, private sector involvement in public sector innovation has allowed for a deepening refinement of domestic approaches to IP retention and ongoing management. Rather than a bare critique of Australia's IP management track-record, or a call for specific law reform, this manual engages at a more practical level …

Foreword, David Olson

David S. Olson

No abstract provided.

Private Value Determinations And The Potential Effect On The Future Of Research And Development, Amy L. Landers

Amy L. Landers

Although the promise of an emerging patent market is thought to provide future benefits to invention, innovation, and the public, this essay examines the possibility that the aggregate influence of this activity could instead destabilize patent values in a manner that mirrors the "bubble" phenomenon that occurred in certain markets in the past. To the extent that this occurs, this would destabilize the patent system and might have negative consequences for the future of investment in research, development and innovation.

Intellectual Property And Biofuels: The Energy Crisis, Food Security, And Climate Change, Matthew Rimmer, Griffith Hack

Matthew Rimmer

In light of larger public policy debates over intellectual property and climate change, this article considers patent practice, law, and policy in respect of biofuels. This debate has significant implications for public policy discussions in respect of energy independence, food security, and climate change. The first section of the paper provides a network analysis of patents in respect of biofuels across the three generations. It provides empirical research in respect of patent subject matter, ownership, and strategy in respect of biofuels. The second section provides a case study of significant patent litigation over biofuels. There is an examination of the …

Applying Patent-Eligible Subject Matter Restriction, Jonas Anderson

Articles in Law Reviews & Other Academic Journals

The US Supreme Court's difficulty in promulgating a standard for patent-eligibility has not gone unnoticed in the academy. Hundreds of academic conferences, including this one, have been devoted to the topic. The goal of this Article is not to solve the seemingly intractable problem of patent-eligibility doctrine. The goal of this Article is rather more modest. Instead of normatively assessing patent-eligible subject matter doctrine, this Article seeks to identify which foundational theories of patent-eligible subject matter can most readily be applied by courts and the US Patent and Trademark Office via Section 101. In doing so, this Article categorizes the …

Restoring The Fact/Law Distinction In Patent Claim Construction, Jonas Anderson

Articles in Law Reviews & Other Academic Journals

INTRODUCTION: Two decades ago, the Supreme Court sought to promote more effective, transparent patent litigation in Markman v. Westview Instruments1 by ruling that "the construction of a patent, including terms of art within its claim, is exclusively within the province of the court."'2 In so doing, the Court removed interpretation of patent claims from the black box of jury deliberations by holding that the Seventh Amendment right to a jury trial did not extend to patent claim construction. Failing to find clear historical evidence of how claim construction was handled in 179 1,' the Court turned to "the relative interpretive …

Inventing Around Copyright, Dan L. Burk

Northwestern University Law Review

Patent law has long harbored the concept of “inventing around,” under which competitors to a patent holder may be expected, and even encouraged, to design their technologies so as to skirt the boundaries defined by patent claims. It has become increasingly clear that, for better or for worse, copyright also fosters inventing around. Copyright is not based on written claims, but because copyright links exclusive rights to technological actions such as reproduction, distribution, or transmission, the language of the copyright statute, and judicial readings of the statute, create boundaries around which potential infringers may technologically navigate. For example, the Aereo …

Our Divided Patent System (With J. Allison & M. Lemley) (Forthcoming), David Schwartz

David L. Schwartz

No abstract provided.

A Generation Of Patent Litigation, Michael Risch

Michael Risch

This study compares twenty-five years of litigation and patents of the ten most litigious NPEs (as of 2009) with a random group of cases and patents in the same yearly proportions. All cases involving every patent was gathered, allowing the life cycle of each asserted patent to be studied. The data includes litigation data, patent data, reexaminations, and other relevant data. This paper considers outcomes and patent quality. A future paper will examine innovation and markets. Unsurprisingly, the data shows that the studied NPE patents were found invalid and noninfringed about twice as often as the comparable nonNPEs. But there …

Patentable Subject Matter As A Policy Lever, Amy L. Landers

Amy L. Landers

Patents are intended to be used as instruments to further policy. One potent policy driver to accomplish such goals is through the legal construction and application of the term “invention." Internationally, various legal authorities have recognized that this definition can be crafted in ways that are targeted to have real-world consequences. In the U.S., the open-ended framework of the Patent Act's section 101 invites judicial interpretation to effectuate the law's purposes. Ideally, these determinations should rest on articulated, transparent reasoning so that, under a common law system, those policies can serve as touchstones to ensure that the relevant precedents are …

The Anti-Patent: A Proposal For Startup Immunity, Amy L. Landers

Amy L. Landers

The controversy surrounding the current implementation of the patent system is well known. Some question whether the system has become entirely dysfunctional and disincentives innovation, particularly as the law operates within some industries. Moreover, early stage companies, particularly those just beginning to gain success, are particularly vulnerable targets for lawsuits. Notably, these same companies can be rich sources of important technological innovation.

Because the U.S. has always had a patent system, it is impossible to understand the intended and unintended consequences of eliminating this form of intellectual property protection even in a limited manner. As economist Fritz Machlup stated in …

Applying Patent-Eligible Subject Matter Restriction, Jonas Anderson

J. Jonas Anderson

Restoring The Fact/Law Distinction In Patent Claim Construction, Jonas Anderson

J. Jonas Anderson

From Kafka To Kafta: Intellectual Property, And The Korea-Australia Free Trade Agreement, Matthew Rimmer

Matthew Rimmer

The Korea-Australia Free Trade Agreement 2014 (KAFTA) is a Kafkaesque agreement – with its secret texts, speculative claims, and shadowy tribunals. Australia and South Korea have signed a new free trade agreement - the Korea-Australia Free Trade Agreement2014 (KAFTA). Is it a fair trade fairytale? Or is it a dirty deal done dirt cheap? Or somewhere in between? It is hard to tell, given the initial secrecy of the negotiations, and the complexity of the texts of the agreement. There has been much debate in the Australian Parliament over the transparency of the trade agreement; the scope of market access …

How Not To Apply Actavis, Michael A. Carrier

NULR Online

No abstract provided.

Trolls Or Great Inventors: Case Studies Of Patent Assertion Entities, Ryan Holte

Prof. Ryan T. Holte

There has been much debate about the economic harms caused by patent infringement lawsuits filed by patent holders who do not make or sell products covered by their own patents—entities pejoratively referred to as “patent trolls.” This debate has thus far been largely theoretical or based on broad industry-wide data. The purpose of this article is to present a focused empirical report that has previously been lacking—detailed information regarding the inventors themselves, the patent assertion entities (PAEs) that represent them, and the stories behind their patents. The research for this article centers on two instructive case studies: (1) MercExchange, L.L.C., …

Patent Imperialism, Bernard Chao

NULR Online

No abstract provided.