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Full-Text Articles in Law
Amending Patent Eligibility, David O. Taylor
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 …
Expressive Eligibility, Mark D. Janis, Timothy R. Holbrook
Expressive Eligibility, Mark D. Janis, Timothy R. Holbrook
Articles by Maurer Faculty
What is the ultimate objective of the patent eligibility inquiry? The recent eligibility case law — a frenzied outpouring of opinions from many esteemed judges — has revealed little while mystifying much. Scholars haven’t fared much better, although it isn’t for lack of trying. Our scholarly colleagues have offered a multitude of intriguing new perspectives on the analysis — drawing on history, the philosophy of science, semiotics, institutional choice, and so on. But we continue to wonder exactly what the eligibility inquiry is for.
In addressing that question here, we’re following a familiar methodological tradition: we propose to reimagine eligibility …
Patent Eligibility Post-Myriad: Reinvigorated Judicial Wildcard Of Uncertain Effect, Christopher M. Holman
Patent Eligibility Post-Myriad: Reinvigorated Judicial Wildcard Of Uncertain Effect, Christopher M. Holman
Faculty Works
In the 1970s and early 1980s the US Supreme Court issued several landmark decisions establishing the contours of patent eligibility, a judicially created doctrine that serves as a gatekeeper to prevent the patenting of subject matter deemed so fundamental as to be better left unpatented. Over the course of the next 25 years the Court of Appeals of the Federal Circuit oversaw a progressive expansion in the scope subject matter deemed patent eligible, highlighted by the adoption in the 1990’s of a “useful, concrete and tangible” test for patent eligibility that for all practical purposes seemed to subsume the patent …
Mayo, Myriad, And The Future Of Innovation In Molecular Diagnostics And Personalized Medicine, Christopher M. Holman
Mayo, Myriad, And The Future Of Innovation In Molecular Diagnostics And Personalized Medicine, Christopher M. Holman
Faculty Works
Contrary to popular perception, the Supreme Court’s recent decision in Association for Molecular Pathology v. Myriad Genetics, Inc., finding certain patent claims reciting isolated genomic DNA molecules patent ineligible is likely to have a relatively minor impact on the patenting of diagnostics and personalized medicine. Method claims generally play a much more important role than isolated DNA claims in the patenting of innovations in this important technological sector, and the Court’s earlier decision in Mayo v. Prometheus Labs that held claims directed towards non-genetic methods of personalized medicine to be patent ineligible will likely prove significantly more problematic in this …
Life After Bilski, Mark A. Lemley, Michael Risch, Ted Sichelman, R. Polk Wagner
Life After Bilski, Mark A. Lemley, Michael Risch, Ted Sichelman, R. Polk Wagner
All Faculty Scholarship
In Bilski v. Kappos, the Supreme Court declined calls to categorically exclude business methods—or any technology—from the patent law. It also rejected as the sole test of subject matter eligibility the Federal Circuit’s deeply-flawed machine-or-transformation test, under which no process is patentable unless it is tied to a particular machine or transforms an article to another state or thing. Subsequent developments threaten to undo that holding, however. Relying on the Court’s description of the Federal Circuit test as a “useful and important clue,” the U.S. Patent and Trademark Office, patent litigants, and district courts have all continued to rely on …
Beyond Invention: Patent As Knowledge Law, Michael J. Madison
Beyond Invention: Patent As Knowledge Law, Michael J. Madison
Articles
The decision of the Supreme Court of the United States in Bilski v. Kappos, concerning the legal standard for determining patentable subject matter under the American Patent Act, is used as a starting point for a brief review of historical, philosophical, and cultural influences on subject matter questions in both patent and copyright law. The article suggests that patent and copyright law jurisprudence was constructed initially by the Court with explicit attention to the relationship between these forms of intellectual property law and the roles of knowledge in society. Over time, explicit attention to that relationship has largely disappeared from …
Operating Efficiently Post-Bilski By Ordering Patent Doctrine Decision-Making, Dennis D. Crouch, Robert P. Merges
Operating Efficiently Post-Bilski By Ordering Patent Doctrine Decision-Making, Dennis D. Crouch, Robert P. Merges
Faculty Publications
Now that the Supreme Court has decided Bilski v. Kappos, there is an enormous amount of speculation about the case’s impact on patent applicants, litigants, and other participants in the patent system. Most of the commentary is concerned with the holding in Bilski, how this holding will be applied by courts and the Patent Office, and ultimately, the effect of the holding on inventors, and those who hold and seek patents.
The Role Of Patent Eligibility In Policing Claim Scope, Christopher M. Holman
The Role Of Patent Eligibility In Policing Claim Scope, Christopher M. Holman
Faculty Works
Bilski v. Kappos (Bilski II) empowered the lower courts to deploy patent eligibility as a doctrinal tool for policing claim scope. Because Bilski II leaves the test for patent eligibility largely undefined, the lower courts and PTO, in particular the Federal Circuit, could actively invoke the doctrine as a “wildcard” to invalidate patent claims deemed unduly broad, or otherwise “unworthy” by the court. Judge Rader made a similar observation recently with respect to the Lilly written description requirement, another doctrine of patentability for which the criteria for compliance remains largely undefined. However, early indications suggest that the Federal Circuit and …
Ip And Antitrust: Reformation And Harm, Christina Bohannan, Herbert J. Hovenkamp
Ip And Antitrust: Reformation And Harm, Christina Bohannan, Herbert J. Hovenkamp
All Faculty Scholarship
Antitrust and intellectual property law both seek to improve economic welfare by facilitating competition and investment in innovation. At various times both antitrust and IP law have wandered off this course and have become more driven by special interests. Today, antitrust and IP are on very different roads to reform. Antitrust reform began in the late 1970s with a series of Supreme Court decisions that linked the plaintiff’s harm and right to obtain a remedy to the competition - furthering goals of antitrust policy. Today, patent law has begun its own reform journey, but it is in a much earlier …