Law Commons^™

Atypical Inventions, Sean B. Seymore

Vanderbilt Law School Faculty Publications

Patent law is constantly evolving to accommodate advances in science and technology. But, for a variety of reasons, some aspects of patent doctrine have not evolved over time leading to a growing disconnect between the patent system and certain technical communities. Particularly vulnerable to the ill effects of this disconnect are "atypical" inventions, which this Article definesas those in which either (1) a technical aspect of the invention or the inventive process does not conform to an established legal standard in patent law or (2) the technical underpinnings of the invention depart from well-established scientific paradigms. An example of the …

Top Tens In 2010: Patent And Trademark Cases, Stephen Mcjohn

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Top Tens In 2010: Copyright And Trade Secret Cases, Stephen Mcjohn

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Patent Settlements, Risk, And Competition, Mark R. Patterson

Faculty Scholarship

PowerPoint presentation delivered at the session, Patent Settlements: The Issues Beyond the "Reverse Payment" Cases at the ABA 59th Annual Antitrust Spring Meeting, March 30, 2011.

Harvesting Intellectual Property: Inspired Beginnings And 'Work-Makes-Work,' Two Stages In The Creative Processes Of Artists And Innovators, Jessica Silbey

Faculty Scholarship

This Article is part of a larger empirical study based on face-to-face interviews with artists, scientists, engineers, their lawyers, agents, and business partners. The book-length project involves the collecting and analysis of stories from artists, scientists, and engineers about how and why they create and innovate. It also collects stories from their employers, business partners, managers, and lawyers about their role in facilitating the process of creating and innovating. The book’s aim is to make sense of the intersection between intellectual property law and creative and innovative activity, specifically to discern how intellectual property intervenes in the careers of the …

Property In Law: Government Rights In Legal Innovations, Stephen Clowney

Law Faculty Scholarly Articles

One of the most enduring themes in American political thought is that competition between states encourages legal innovation. Despite the prominence of this story in the national ideology, there is growing anxiety that state and local governments innovate at a socially suboptimal rate. Academics have recently expressed alarm that the pace of legal experimentation has become "extraordinarily slow," "inefficient," and "less than ideal." Ordinary citizens, too, seem concerned that government has been leeched of imagination and the dynamic spirit of experimentation; both talk radio programs and newspapers remain jammed with complaints about legislative gridlock and do-nothing politicians who cannot, or …

Current And Potential Methods To Undermine A Competitor’S U.S. Patent Application, W. Keith Robinson, M. Haq

Faculty Journal Articles and Book Chapters

The current PTO procedures provide a few choices for a third party to influence the prosecution of a competitors patent application prior to issuance. In the case of protests and public use hearings, the third party may submit documents and explain their relevancy, but must know of the application’s existence prior to publication in order to meet the timeliness requirement. In the case of third-party submissions, the third party has a short two-month window post-publication, but cannot explain the relevancy of the documents submitted. In each case, the time frame within which a third party can act is extremely limited. …

Bayer Schering Pharma Ag V. Barr Laboratories, Inc., Joshua Zarabi

NYLS Law Review

No abstract provided.

Software Wars: The Patent Menace, Andrew Nieh

NYLS Law Review

No abstract provided.

Extraterritorial Intellectual Property Enforcement In The European Union, Marketa Trimble

Scholarly Works

This paper was prepared for the 2011 ABILA International Law Weekend – West volume of the Southwestern Journal of International Law. It addresses extraterritorial enforcement of intellectual property rights in the European Union. The maximum length of the paper was set by the Journal.

The problems associated with extraterritorial enforcement of intellectual property rights in the European Union (the “EU”) may be divided into three categories: enforcement of unitary EU-wide rights, enforcement of multiple national rights, and enforcement of rights based on one national law with extraterritorial effects on activities in other countries. Although these are three distinct categories of …

Negativing Invention, Jacob S. Sherkow

Articles & Chapters

Since 1952, the patent statute has forbidden courts from discriminating against, or “negativing,” inventions according to how they were made, be it “long toil and experimentation” or a “flash of genius.” Now, in addressing whether an invention is “obvious,” courts must only examine whether the invention was obvious according to the arts pertinent to that invention — the “analogous” rather than “nonanalogous” arts. This article shows that this dichotomy has actually promoted method-of-invention discrimination in patent law because the subjectivity of the analogous art inquiry has increasingly “analogized” wide fields of prior art as technology has progressed. This, in turn, …

Three Statutory Regimes At Impasse: Reverse Payments In Pay-For-Delay Settlement Agreements Between Brand-Name And Generic Drug Companies, Rudolph J.R. Peritz

Articles & Chapters

No abstract provided.

A Patent Misperception, Elizabeth I. Winston

Scholarly Articles

Antitrust and intellectual property laws promote innovation and competition. As long as the costs of promotion do not exceed the benefit to society, then the laws act in harmony. Discord arises when patent holders use public and private ordering to restrain competition, restrict downstream trade, prevent the development of competing products and limit output by competitors. Using the Patent Act and the misperception of antitrust immunity to create a parallel and under-regulated legal system allows a small number of patent holders to coordinate their behavior to maximize profits and minimize competition. The Patent Act provides no shield to prosecution for …

Rules For Growth: Promoting Innovation And Growth Through Legal Reform, Nicole Stelle Garnett, Robert E. Litan, Yochai Benkler, Henry N. Butler, John Henry Clippinger, Robert Cook-Deegan, Robert D. Cooter, Aaron S. Edlin, Ronald J. Gilson, Oliver R. Goodenough, Gillian K. Hadfield, Mark A. Lemley, Frank Partnoy, George L. Priest, Larry E. Ribstein, Charles F. Sabel, Peter H. Schuck, Hal S. Scott, Robert E. Scott, Alex Stein, Victoria Stodden, John E. Tyler Iii, Alan D. Viard, Benjamin Wittes

Journal Articles

The United States economy is struggling to recover from its worst economic downturn since the Great Depression. After several huge doses of conventional macroeconomic stimulus - deficit-spending and monetary stimulus - policymakers are understandably eager to find innovative no-cost ways of sustaining growth both in the short and long runs. In response to this challenge, the Kauffman Foundation convened a number of America’s leading legal scholars and social scientists during the summer of 2010 to present and discuss their ideas for changing legal rules and policies to promote innovation and accelerate U.S. economic growth. This meeting led to the publication …

International Cooperation And The Patent-Antitrust Intersection, Stephen Yelderman

Journal Articles

Commentators have long recognized the need to coordinate questions at the patent-antitrust intersection with other policy levers available under patent law. In the international context, however, control over patent policy has been fractured and entrusted to diverse decisionmakers. Many details of patent law are tightly coordinated by international agreement, while others related to antitrust are left to national discretion. This Article evaluates the consequences of this fracture, and notes ways in which the prevailing treaty regimes (the Paris Convention and the TRIPS Agreement) distort incentives for national policymaking. National discretion at the patent-antitrust intersection can be expected to result in …

Efficient Uncertainty In Patent Interpretation, Harry Surden

Publications

Research suggests that widespread uncertainty over the scopes of issued patents creates significant costs for third-party firms and may decrease innovation. This Article addresses the scope uncertainty issue from a theoretical perspective by creating a model of patent claim scope uncertainty.

It is often difficult for third parties to determine the legal coverage of issued patents. Scope underdetermination exists when the words of a patent claim are capable of a broad range of plausible scopes ex ante in light of the procedures for interpreting patents. Underdetermination creates uncertainty about claim coverage because a lay interpreter cannot know which interpretation will …

Competition Within Intellectual Property Regimes: The Instance Of Patent Rights, Rudolph J.R. Peritz

Articles & Chapters

No abstract provided.

Knowledge Curation, Michael J. Madison

Articles

This Article addresses conservation, preservation, and stewardship of knowledge, and laws and institutions in the cultural environment that support those things. Legal and policy questions concerning creativity and innovation usually focus on producing new knowledge and offering access to it. Equivalent attention rarely is paid to questions of old knowledge. To what extent should the law, and particularly intellectual property law, focus on the durability of information and knowledge? To what extent does the law do so already, and to what effect? This article begins to explore those questions. Along the way, the article takes up distinctions among different types …

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 …

Overcoming The “Impossible Issue” Of Nonobviousness In Design Patents, Daniel Harris Brean, Janice M. Mueller

Daniel Harris Brean