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Articles 1 - 30 of 76
Full-Text Articles in Law
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Utah Law Faculty Scholarship
During past viral outbreaks, researchers rushed to patent genomic sequences of the viruses as they were discovered, leading to disputes and delays in research coordination. Yet similar disputes did not occur with respect to the genomic sequence of SARS-CoV-2, the virus responsible for COVID-19. With respect to COVID-19, global research collaboration occurred rapidly, leading to the identification of new variants, the ability to track the spread of the disease, and the development of vaccines and therapeutics in record time. The lack of patenting of SARSCoV-2 is likely due the U.S. Supreme Court’s 2013 ruling in Association for Molecular Pathology v. …
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Utah Law Faculty Scholarship
During past viral outbreaks, researchers rushed to patent genomic sequences of the viruses as they were discovered, leading to disputes and delays in research coordination. Yet similar disputes did not occur with respect to the genomic sequence of SARS-CoV-2, the virus responsible for COVID-19. With respect to COVID-19, global research collaboration occurred rapidly, leading to the identification of new variants, the ability to track the spread of the disease, and the development of vaccines and therapeutics in record time. The lack of patenting of SARS-CoV-2 is likely due the U.S. Supreme Court’s 2013 ruling in Association for Molecular Pathology v. …
Proportionality Defenses In Frand Cases - A Comparative Assessment Of The Revised German Patent Injunction Rules And Us Case Law, Peter Georg Picht, Jorge L. Contreras
Proportionality Defenses In Frand Cases - A Comparative Assessment Of The Revised German Patent Injunction Rules And Us Case Law, Peter Georg Picht, Jorge L. Contreras
Utah Law Faculty Scholarship
A new defense against injunctions in FRAND cases has arisen in Germany, and its relationship to the Huawei defense (whether viewed as a competition or contractual matter) is largely unexplo-red. In August 2021, the “Second Act for the Modernization of Patent Law” (Zweites Pa-tentrechtsmodernisierungsgesetz) took effect and modified the German Patent Act (GPA) in sever-al respects. Pertinent to our topic is an amendment to § 139(1) GPA which introduced an expli-cit proportionality defense against injunction claims. The new proportionality mechanism con-sists of three main elements: First, § 139(1)(3) GPA excludes the claim to an injunction in case of patent infringement …
A Research Agenda For Standards-Essential Patents, Jorge L. Contreras
A Research Agenda For Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
This Chapter discusses the current state of legal, economic and policy research on standards-essential patents (SEPs) and fair, reasonable and nondiscriminatory (FRAND) licensing of SEPs, and recommends additional research directions for the future. Areas for future research include the investigation of market adoption of standardized products subject to FRAND licensing and available on a royalty-free basis, measurement of various characteristics of SEPs including disclosure, validity, essentiality and transfer, the evolution of SDO and consortia patent policies, SEP licensing behavior, both by SEP holders and product manufacturers, SEP and FRAND disputes and litigation, including arbitration, and competition among patent pools for …
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
Utah Law Faculty Scholarship
Litigation relating to fair, reasonable and non-discriminatory (FRAND) licensing of patents essential to industry standards has recently seen a sharp increase in cross-jurisdictional competition fueled by the trend of courts in some jurisdictions (particularly China) to seek to establish FRAND royalty rates applicable around the world, and the increased use of anti-suit injunctions (ASIs) to prevent parties from pursuing parallel litigation in other jurisdictions. The proposed “Defending American Courts Act” (DACA), introduced to the U.S. Senate Judiciary Committee in March 2022, seeks to deter the use of foreign-issued ASIs in U.S. patent litigation. The DACA would effectively create a statutory …
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Utah Law Faculty Scholarship
In July 2021, the US Patent and Trademark Office (PTO) issued a public request for comments regarding the impact of recent patent eligibility jurisprudence on US businesses and markets. The PTO received 145 responses to its request by the October 2021 deadline. In this paper, we analyze the responses by industry sector and respondent type, assessing whether responses were generally positive, neutral or negative toward US patent eligibility jurisprudence, and also identifying those responses that cited international competitiveness of US businesses (particularly with respect to China) in their reasoning.
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Utah Law Faculty Scholarship
The proliferation of international jurisdictional conflicts and competing “anti-suit injunctions” in litigation over the licensing of standards-essential patents has raised concerns among policy makers in the United States, Europe and China. This article suggests that national courts temporarily “stand down” from assessing global “fair, reasonable and nondiscriminatory” (FRAND) royalty rates while international bodies develop a more comprehensive, efficient and transparent methodology for resolving issues around FRAND licensing.
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Utah Law Faculty Scholarship
Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” …
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Utah Law Faculty Scholarship
Recent arguments for stronger patent rights, particularly on 5G wireless telecommunications technologies, are relevant to discussions of national industrial policy and economic development, but are not matters of national security.
Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras
Certification (And) Marks – Understanding Usage And Practices Among Standards Organizations, Brad Biddle, Vigdis Bronder, Jorge L. Contreras
Utah Law Faculty Scholarship
In addition to creating technical standards that describe how different products or services interoperate, many standards development organizations (SDOs) also perform testing services that are designed to ensure that products that ostensibly comply with a standard actually work together. SDOs frequently call this process “certification,” and authorize implementers that pass the testing process to use a logo or similar mark. Certification marks are a type of trademark that would seem to be tailor-made for this process. Our empirical analysis shows that SDOs use certification marks only relatively rarely, however. This dissonance is striking, providing insight into both the remarkably sophisticated …
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
Utah Law Faculty Scholarship
In 2007, eleven major U.S. research universities and the Association of American Medical Colleges signed an accord titled “In the Public Interest: Nine Points to Consider in Licensing University Technology.” It outlined a range of issues that universities should consider when licensing their technology to the private sector - from reservations of rights and limitations on exclusivity to refraining from dealing with patent assertion entities to making medical technologies accessible at affordable prices. More than talking points, the document proposed specific contractual clauses intended to promote the educational and public welfare missions of universities. Today, more than one hundred academic …
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Utah Law Faculty Scholarship
The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Utah Law Faculty Scholarship
The United States has traditionally held a dim view of compulsory patent licensing, which occurs when a government mandates the licensing of privately held patents to a third party in order to advance a public goal. Yet following the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, federal courts have denied a substantial number of requests for permanent injunctions following a finding of patent infringement. Without an injunction, an infringing party may continue to practice the infringed patent subject, in most cases, to the payment of a courtapproved ongoing royalty. In the years following eBay, courts and scholars have …
Balance And Standardization: Implications For Competition And Antitrust Analysis, Justus Baron, Jorge L. Contreras, Pierre Larouche
Balance And Standardization: Implications For Competition And Antitrust Analysis, Justus Baron, Jorge L. Contreras, Pierre Larouche
Utah Law Faculty Scholarship
Most technical standards development organizations (SDOs) have adopted internal policies embodying “due process” criteria such as openness, balance of interests, consensus decision making, and appeals. Unlike other aspects of SDO governance, relatively little scholarly research has considered the history, scope, and interpretation of SDO balance requirements. Likewise, existing case law and agency guidance offer little assistance in understanding precisely how these balance principles translate into specific antitrust requirements that apply to standards development. Given the absence of specific guidance on the meaning and implications of balance requirements for SDOs under the antitrust laws, it is necessary to review the development …
Shepardizing Patents?, Jorge L. Contreras
Shepardizing Patents?, Jorge L. Contreras
Utah Law Faculty Scholarship
In a world where patents play an increasingly important role in the technology development and innovation landscape, it is critical that reliable information about the status and history of patents be made available to the public. The USPTO has made a public commitment to the “discoverability, accessibility, and usability of public patent and trademark data”, and as such it can help to collect, organize and display contextual patent data in a simple and user-friendly fashion. A uniform “Shepardization” system for patents, which clearly flags issues for potential licensees, defendants and innovators and alerts the public to the potential investment and …
Patent Reality Checks Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Patent Reality Checks Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Utah Law Faculty Scholarship
The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that claim non-existent and inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several modest administrative and legislative measures directed toward the elimination of patents on inoperative inventions including (1) increasing PTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …
Toleration Of Free Speech: Imposing Limits On Elected Officials, Amos N. Guiora
Toleration Of Free Speech: Imposing Limits On Elected Officials, Amos N. Guiora
Utah Law Faculty Scholarship
Tolerance is a nuanced issue, inevitably raising concerns regarding tolerant of what and whom. There is a sense of subjective judgment in the tolerance-intolerance debate; the terminology reflects particular norms, mores, customs, and traditions. What one might perceive as a healthy and tolerable challenging of existing acceptable “ways,” another would not tolerate because of the very challenge it poses to society. That split between tolerance-intolerance applies to both speech and conduct. It reflects everyday tensions, challenges, and conflict. In examining the tolerance-intolerance debate in the speech context there are a number of assumptions integral to a robust, liberal democracy: the …
Injunctions In Patent Law: A Trans-Atlantic Dialog On Flexibility And Tailoring, Jorge L. Contreras, Martin Husovec,
Injunctions In Patent Law: A Trans-Atlantic Dialog On Flexibility And Tailoring, Jorge L. Contreras, Martin Husovec,
Utah Law Faculty Scholarship
This chapter is from the edited volume "Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring" (Jorge Contreras & Martin Husovec, eds., Cambridge Univ. Press, forthcoming). It offers a unique analytical synthesis of eleven national and two regional/international descriptions of flexibilities in patent remedies authored by leading scholars in the field. This synthesis identifies a range of similarities and differences among jurisdictions, explains the principal features of these different legal systems, provides an analytical framework for comparing them, and offers observations about trends and the outlook for the future. The countries studied include Canada, Finland, France, Germany, Israel, …
Covid-19 As An Example Of Why Genomic Sequence Data Should Remain Patent Ineligible, Jorge L. Contreras
Covid-19 As An Example Of Why Genomic Sequence Data Should Remain Patent Ineligible, Jorge L. Contreras
Utah Law Faculty Scholarship
The researchers who determined the genomic sequence of the SARS-CoV-2 virus did not seek to patent it, but instead released it in the publicly-accessible GenBank data repository. Their release of this critical data enabled the scientific community to mobilize rapidly and conduct research on a range of diagnostic, vaccine, and therapeutic applications based on the viral RNA sequence. Had the researchers sought patent protection for their discovery, as earlier research teams had during the SARS, H1N1 and H5N1 outbreaks, global research relating to COVID-19 would have been less efficient and more costly. One of the reasons that patents are no …
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
Utah Law Faculty Scholarship
An increasing number of cases around the world turn on whether a manufacturer of a product – e.g., a smartphone, a tablet or a car -- (an “implementer”) is willing to pay a “fair, reasonable and nondiscriminatory” (FRAND) royalty for patents that are essential to an industry standard embodied in that product (standards-essential patents or SEPs). This determination is important both to the analysis of the appropriateness of an injunction under the 4-factor eBay test in the U.S., and for assessing the appropriateness of injunctive relief under the Huawei v. ZTE competition law case in the EU. This essay explores …
Balance Requirements For Standards Development Organizations: A Historical, Legal And Institutional Assessment, Justus Baron, Jorge L. Contreras, Pierre Larouche
Balance Requirements For Standards Development Organizations: A Historical, Legal And Institutional Assessment, Justus Baron, Jorge L. Contreras, Pierre Larouche
Utah Law Faculty Scholarship
Most technical standards-development organizations (SDOs) have adopted internal policies embodying “due process” criteria such as openness, balance of interests, consensus decision making and appeals. These requirements arise from numerous sources including antitrust law, international trade law, public procurement requirements and institutional norms. Yet balance criteria lack a generally-accepted definition and the manner in which they are implemented varies, sometimes dramatically, among SDOs. Recently, there has been a renewed interest in the principle that SDOs should ensure a balance of interests among their stakeholders, including in the development of intellectual property rights policies. This article explores the origins and meaning of …
Ericsson Inc., And Telefonaktiebolaget Lm Ericsson V. Samsung Elecs. Co, Ltd., Samsung Elecs. America, Jorge L. Contreras, Ann Bartow, Michael A. Carrier, Crista Laser, Joshua D. Sarnoff, Peter K. Yu
Ericsson Inc., And Telefonaktiebolaget Lm Ericsson V. Samsung Elecs. Co, Ltd., Samsung Elecs. America, Jorge L. Contreras, Ann Bartow, Michael A. Carrier, Crista Laser, Joshua D. Sarnoff, Peter K. Yu
Utah Law Faculty Scholarship
Unopposed Motion for Leave to File Brief of International Intellectual Property Law Professors as Amici Curiae in Support of Neither Party
The Open Covid Pledge: Design, Implementation And Preliminary Assessment Of An Intellectual Property Commons, Jorge L. Contreras
The Open Covid Pledge: Design, Implementation And Preliminary Assessment Of An Intellectual Property Commons, Jorge L. Contreras
Utah Law Faculty Scholarship
Early during the COVID-19 pandemic, a number of widely-publicized incidents gave rise to concerns that holders of patents and other intellectual property (IP) rights could hinder the development, manufacture and distribution of essential medical devices, protective equipment and biomedical products. The global response to these concerns was swift and included the issuance of compulsory licensing orders by several national governments, as well as the proposal of a technology pool by the World Health Organization (WHO). Alongside these efforts, a group of scientific, engineering and legal experts created a lightweight, open framework under which IP holders could voluntarily pledge not to …
A Historical Note On The Assignment Of Pesticide Common Names, Jorge L. Contreras
A Historical Note On The Assignment Of Pesticide Common Names, Jorge L. Contreras
Utah Law Faculty Scholarship
Thousands of pesticides, herbicides, and related chemical products are used today to control disease-bearing insect populations and enable large-scale agricultural production that feeds much of the world. This short note traces the history of one small but important aspect of this industry—the assignment of common names to pesticides and related products. The little-known history of pesticide common names is illustrative of a few important points. First, it demonstrates the trend exhibited in many fields for the development of standards to migrate from a governmental agency to a US-based standards organization to an international standards organization. Second, it evidences the concern …
No License, No Problem – Is Qualcomm’S Ninth Circuit Antitrust Victory A Patent Exhaustion Defeat?, Jorge L. Contreras, Jorge L. Contreras
No License, No Problem – Is Qualcomm’S Ninth Circuit Antitrust Victory A Patent Exhaustion Defeat?, Jorge L. Contreras, Jorge L. Contreras
Utah Law Faculty Scholarship
The Ninth Circuit’s recent decision in FTC v. Qualcomm (9th Cir., Aug. 11, 2020) is generally viewed as a resounding victory for Qualcomm. But in praising Qualcomm’s egalitarian approach toward rival chip makers, the Ninth Circuit points out that instead of granting licenses to these rivals, Qualcomm merely “declines to enforce its patents” against them “even though they practice Qualcomm’s patents”. As such, the Ninth Circuit states that Qualcomm’s “policy toward rival chipmakers could be characterized as ‘no license, no problem’”. Yet, from the standpoint of patent exhaustion, this approach could actually be a very big problem, not only for …
Legal Terms Of Use And Public Genealogy Websites, Jorge L. Contreras, Kyle Schultz, Craig Teerlink, Tim Maness, Laurence Meyer, Lisa Cannon-Albright
Legal Terms Of Use And Public Genealogy Websites, Jorge L. Contreras, Kyle Schultz, Craig Teerlink, Tim Maness, Laurence Meyer, Lisa Cannon-Albright
Utah Law Faculty Scholarship
Public genealogy websites, to which individuals upload family history, genealogy, and sometimes individual genetic data, have been used in an increasing number of public health, epidemiological, and genetic studies. Yet there is little awareness among researchers of the legal rules that govern the use of these online resources. We analyzed the online Terms of Use (TOU) applicable to 17 popular genealogy websites and found that none of them expressly permit scientific research, while at least 13 contain restrictions that may limit or prohibit scientific research using data obtained from those sites. In order to ensure that researchers who use genealogy …
Pledging Intellectual Property For Covid-19, Jorge L. Contreras
Pledging Intellectual Property For Covid-19, Jorge L. Contreras
Utah Law Faculty Scholarship
COVID-19 differs from other recent public health crises with respect to its sudden onset, its rapid spread, the lack of any known vaccine or cure and resulting shortages of critical medical equipment. The convergence of these factors has prompted both governments and IPR holders around the world to seek ways to increase the availability of IPR necessary to combat the pandemic. Governmental compulsory licensing, IPR pools and voluntary IPR pledges have all been used in the past, though in situations that differ in important respects from the COVID-19 pandemic. Each is designed to result, to a greater or lesser degree, …
Will China's New Anti-Suit Injunctions Shift The Balance Of Global Frand Litigation?, Jorge L. Contreras
Will China's New Anti-Suit Injunctions Shift The Balance Of Global Frand Litigation?, Jorge L. Contreras
Utah Law Faculty Scholarship
By issuing anti-suit injunctions (ASIs) in Conversant v. Huawei and InterDigital v. Xiaomi in late 2020, Chinese courts have signaled a new willingness to vie for jurisdictional authority in global battles over standard-essential patents and FRAND licensing. While the Supreme People’s Court in Conversant largely followed the pattern of US and UK courts that have issued ASIs in similar cases, the ruling of the Wuhan court in InterDigital is far broader in two major respects. First, its geographic scope is not limited to the country in which InterDigital sought injunctive relief (India), but extends to all jurisdictions in the world. …
Financial Terms In License Agreements, Jorge L. Contreras
Financial Terms In License Agreements, Jorge L. Contreras
Utah Law Faculty Scholarship
This chapter in the forthcoming casebook Intellectual Property Licensing and Transactions: Theory and Practice (2020, forthcoming), discusses the financial terms of IP licensing agreements including fixed payments, running royalties, sublicensing income, milestone payments, equity compensation and cost reimbursement, as well as most-favored and audit clauses. Numerous areas of recent controversy are addressed including the establishment of royalty rates through the entire market value rule (EMVR) versus the smallest salable patent practicing unit (SSPPU) rule, royalties for bundled rights, rules of thumb discredited by the courts, royalty escalation clauses and more. Examples are drawn primarily from biotechnology, high-tech and copyright licensing …
First Sale And Exhaustion, Jorge L. Contreras
First Sale And Exhaustion, Jorge L. Contreras
Utah Law Faculty Scholarship
This chapter in the forthcoming case book "Intellectual Property Licensing and Transactions: Theory and Practice" addresses issues of first sale and exhaustion for licensing transactions involving patents, copyrights and trademarks. Among the issues considered are licensing versus sale of software, patent exhaustion, post-sale restrictions, international exhaustion and gray market imports.