Law Commons^™

Patently Obvious: A Dual Standard Solution To The Diverging Needs Of The Information Technology And Pharmaceutical Patent Industries, Andrew Moody

Golden Gate University Law Review

This Comment proposes the use of a specifically tailored obviousness standard as a new solution to the IT and pharmaceutical patent industries' divergent needs. Part I summarizes the obviousness standard's history in patent law. Part II illustrates how the IT and pharmaceutical industries have divergent needs. Part III describes why using a single standard for the obviousness inquiry is inadequate to meet the needs of both the IT and pharmaceutical industries. Part IV illustrates why the obviousness standard needs to be specifically tailored for the IT and pharmaceutical industries. Finally, Part V concludes that a dual standard for obviousness is …

Patenting The Diagnosis Of A Disease: The Scope Of Patentable Subject Matter Based On Labcorp V. Metabolite Labs, Timothy J. Ohara

Golden Gate University Law Review

Currently, a method of diagnosing a disease can be broadly claimed in a patent. The United States Supreme Court initially granted certiorari in Metabolite Labs to decide whether the method-of-diagnosis claim was patentable. Later, the Court dismissed certiorari as improvidently granted. This Note asserts that the Court should have adjudicated the case because there is a great need to clarify what is patentable subject matter for method claims that do not entail a physical transformation of matter, particularly in view of the seeming inconsistency between Diamond v. Diehr and State Street Bank & Trust Co. v. Signature Financial Group.

Mercexchange V. Ebay: Should Newsgroup Postings Be Considered Printed Publications As A Matter Of Law In Patent Litigation?, Zhichong Gu

Golden Gate University Law Review

Part I of this Note provides a brief background concerning eBay's method of doing business, its subsequent litigation with MercExchange and the applicable patent law. Part II presents relevant facts about newsgroups and other types of internet documents. Part III discusses eBay's invalidity defense used in its case against MercExchange's patents. The legal issue - whether a newsgroup posting should be considered a printed publication within the meaning of the patent statutes - arises from eBay's invalidity defense. As it turns out, the district court's ruling on this issue in MercExchange v. eBay conflicts with the relevant policy and practice …

Human Ingenuity: A Novel Standard For Patenting Algorithms, Kenneth C. Brooks

Golden Gate University Law Review

This Comment advocates that the Court afford patent protection to algorithms by adopting the standard of patentability applied in biotechnology patent law: human ingenuity. Part II describes some fundamental aspects of computer technology. Part III discusses the current state of patent law concerning patenting algorithms. Part IV demonstrates that the Court's restrictive standard of patentability is not consistent with case precedent. Part V describes how the Court's policy of precluding algorithms from patent protection subverts the patent system. Part VI explicates a standard of patentability, human ingenuity, and describes how this standard would return predictability to the patent system.

The Doctrine Of Equivalents: Rethinking The Balance Between Equity And Predictability, Roy Collins Iii

Golden Gate University Law Review

The Court of Appeals for the Federal Circuit is justifiably credited with the restoration of the prestige and enforceability of patents. However, in recent rulings regarding the doctrine of equivalents, it has returned to a realm of uncertainty which had once characterized the law of patents. In its current application, the doctrine of equivalents as a tool of equity is subject to inconsistent standards and rationales. Such inconsistency undermines the equitable underpinnings of the doctrine,· which themselves have for some time been involved in an ideological "tug of war." The task of applying the doctrine of equivalents to determine patent …

Statutory Invention Registration: Defensive Patentability, Wendell Ray Guffey

Golden Gate University Law Review

Congress recently enacted legislation that provides for Statutory Invention Registration (SIR) as an alternative for an inventor who does not want to obtain a patent. To obtain a SIR, an inventor must file a complete application for a patent accompanied by a waiver of the rights obtained under a patent grant. This waiver of rights takes effect when the SIR is published and leaves the inventor with only defensive protection. The inventor completely loses his offensive rights, i.e., the right to exclude others from making, using, or selling the invention. In exchange for an inventor's right to exploit his invention, …

Patent Law, Patricia A. Turnage

Golden Gate University Law Review

No abstract provided.

Insterstitial Exclusivities After Association For Molecular Pathology, Mary Mitchell, Dana A. Remus

Michigan Law Review First Impressions

The high profile cases Bilski v. Kappos and Association for Molecular Pathology v. United States Patent and Trademark Office have renewed public debate about the proper scope of patentable subject matter. The subject matter inquiry has traditionally been treated as a threshold inquiry in patent law, serving a gate-keeping function by defining the types of inventions that are eligible for patent protection. The Patent Office and courts have approached the subject matter inquiry both by determining whether an invention falls into a statutory category-processes, machines, manufactures, or compositions of matter-as well as by determining whether an invention falls into a …

Patent & Copyright Law, Richard D. Harmon, Howard Klepper, Paige L. Wickland

Golden Gate University Law Review

No abstract provided.

Seeds Of Dispute: Intellectual-Property Rights And Agricultural Biodiversity, Keith Aoki

Golden Gate University Environmental Law Journal

This Article is about the interrelationship between expanding intellectual-property rights and the conservation of biodiversity. While these rights are not strictly correlated with conservation, the types of markets and companies producing commercial seeds and other agricultural inputs tend to promote monocultures that erode biodiversity in both the developed and developing world. Furthermore, this Article argues that the rise of genetically engineered crops in the last two decades further exacerbates both intellectual-property claims of companies owning patented seed and biodiversity, as metaphorical monoculture becomes realized with genetically engineered crops in fields where all the plants have the same genetic structure.

Rethinking The Concept Of Exclusion In Patent Law, Oskar Liivak

Cornell Law Faculty Publications

Patent law’s broad exclusionary rule is one of its defining features. It is unique within intellectual property as it prohibits acts of independent creation. Even if a second inventor had no connection or aid from an initial inventor, patent law allows the first inventor to stop the second. Even though a number of pressing problems can be traced to this rule, it remains untouchable; it is thought to be essential for incentivizing invention. But is it really our only choice? And why is it so different from our otherwise widespread reliance on free entry and competition in markets? The current …

2009 Patent Law Decisions Of The Federal Circuit, Donald R. Dunner, Bryan C. Diner, Esther H. Lim, Troy E. Grabow, Tina E. Hulse, Joyce Craig

American University Law Review

No abstract provided.

Optimal Fines For False Patent Marking, Thomas F. Cotter

Michigan Telecommunications & Technology Law Review

This Essay proposes that, in order to avoid imposing arbitrary (and perhaps unnecessarily large) fines for false patent marking, courts should seek guidance in the law of remedies for false advertising and copyright infringement. In particular, courts should attempt to approximate the social harm caused by actionable false marking by taking into account (1) the plaintiff's loss (if any) and the defendant's gain (if any) attributable to the false marking at issue; (2) the plausibility of substantial but less easily quantifiable harms to consumers and to nonparty competitors; and (3) the risks, on the one hand, of underdeterring statutory violations …

How Many Patents Does It Take To Make A Drug - Follow-On Pharmaceutical Patents And University Licensing, Lisa Larrimore Ouellette

Michigan Telecommunications & Technology Law Review

As described by Professors Dan Burk and Mark Lemley, drugs are[...] special because of the low number of patents per product: "In some industries, such as chemistry and pharmaceuticals, a single patent normally covers a single product. Much conventional wisdom in the patent system is built on the unstated assumption of such a one-to-one correspondence." Although many have repeated this one-patent, one-drug assumption, there has been little empirical analysis of how many patents actually protect each drug. In fact, most small-molecule drugs are protected by multiple patents. The average was nearly 3.5 patents per drug in 2005, with over five …

Not So Technical: An Analysis Of Federal Circuit Patent Decisions Appealed From The Itc, Holly Lance

Michigan Telecommunications & Technology Law Review

A widespread perception among the patent law community is that the patent system would be more effective if judges with technical backgrounds and patent law experience decided patent disputes. Proponents believe that if judges all had similar baseline knowledge of technological analysis, there would be more consistency in decision-making, leading to more predictability for parties. Some district courts have unofficially become semi-specialized in patent law disputes, and Congress is debating whether to institute a more formalized Patent Pilot Program in which district court judges specialize in patent law cases. This Note joins the debate and examines patent law cases at …

Patenting By Entrepreneurs: An Empirical Study, Ted Sichelman, Stuart J.H. Graham

Michigan Telecommunications & Technology Law Review

[T]he Ewing Marion Kauffman Foundation--an organization that studies and promotes entrepreneurship in the United States--funded an effort at the University of California, Berkeley School of Law, to undertake the first comprehensive survey of the relationship between patenting and entrepreneurship in the United States. The authors, along with other investigators, administered the survey in 2008 to approximately 15,000 startup and early-stage companies in the biotechnology, medical device, information technology (IT) hardware, and software and Internet sectors. A portion of the survey examined why entrepreneurs, startups, and early-stage companies do (and do not) seek patents. This Article reports and analyzes results from …

Pioneers Versus Improvers: Enabling Optimal Patent Claim Scope, Timothy Chen Saulsbury

Michigan Telecommunications & Technology Law Review

Arising most commonly as a defense to an infringement claim, enablement requires a patent to describe the claimed invention in sufficient detail to permit a person having ordinary skill in the relevant field to replicate and use the invention without needing to engage in "undue experimentation." If a patent claim is not "enabled"--i.e., if a person having ordinary skill in the art (PHOSITA) who studied the patent cannot make or use the invention without undue experimentation--the claim is invalid and can no longer be asserted. This penalty deters patent applicants from claiming more than they invented and allows others to …

It Is Time: Why The Fda Should Start Disclosing Drug Trial Data, Mustafa Ünlü

Michigan Telecommunications & Technology Law Review

Although [drug] manufacturers bear the cost of research data generation, it is oftentimes a worthwhile investment that also confers significant commercial advantages. Consequently, they have argued that research data should be considered a trade secret and kept confidential. The FDA's longstanding position has been to accept this proposition. Even when Congress appeared to mandate disclosure or weaken the underlying rationale for secrecy, the FDA has continued to treat research data as confidential. A strong argument against a default posture of confidentiality is that research data disclosure would promote broad public interests by eliminating the societal costs brought about by keeping …

Breaking Aro’S Commandment: Recognizing That Inventions Have Heart, Bernard Chao

Sturm College of Law: Faculty Scholarship

Based on the landmark 1961 Supreme Court decision, Aro Manufacturing Co. v. Convertible Top Replacement Co., the long held wisdom in patent law has been that there is no heart or gist of the invention. In other words, patent law does not attribute any special significance to a particular subset of claim limitations regardless of how important those limitations are. Under Aro, judges and juries are told that they need to view all the limitations, even stock components, with equal significance. They must resist focusing on the heart of the invention when making any decision.

Aro’s commandment has spread far …

What The Federal Circuit Can Learn From The Supreme Court-And Vice Versa, Rochelle Cooper Dreyfuss

American University Law Review

No abstract provided.

Current Patent Laws Cannot Claim The Backing Of Human Rights, Wendy J. Gordon

Faculty Scholarship

In the dispute over the enforcement of pharmaceutical patents, the International Covenant on Economic, Social and Cultural Rights is sometimes cited as giving patent protection the status of a 'human right'. It is true that the ICESCR provides for ‘the right of everyone’ ‘[t]o benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author’. But that does not mean that patent protection is a human right. Patent fails as a human right for many reasons, one of which is the lack of fit between current patent …

An Alternate Functionality Reality, Harold R. Weinberg

Law Faculty Scholarly Articles

Trade dress law does not protect the appearance of a product design feature (e.g., a product's configuration) against unauthorized copying if the feature is functional, but may protect the appearance if the feature is nonfunctional. The functionality doctrine is intended to preserve competition in the market for a product incorporating a design feature that allegedly is protected by trade dress law, and to avoid conflicts between trade dress law and patent law. The Supreme Court last addressed the functionality doctrine in TrafFix Devices, Inc. v. Marketing Displays, Inc. The Court intended TrafFix to “choke off” anticompetitive trade dress “strike suits.” …