Law Commons^™

Markets In Ip And Antitrust, Herbert J. Hovenkamp

All Faculty Scholarship

The purpose of market definition in antitrust law is to identify a grouping of sales such that a single firm who controlled them could maintain prices for a significant time at above the competitive level. The conceptions and procedures that go into “market definition” in antitrust can be quite different from those that go into market definition in IP law. When the issue of market definition appears in IP cases, it is mainly as a query about the range over which rivalry occurs. This rivalry may or may not have much to do with a firm’s ability to charge a …

Primitive Accumulation And Enclosure Of The Commons: Genetically Engineered Seeds And Canadian Jurisprudence, Wilhelm Peekhaus

Wilhelm Peekhaus

This paper juxtaposes the legal decisions made in the case of Percy Schmeiser, who was sued by Monsanto for patent infringement, against the attempt by the Organic Agriculture Protection Fund to obtain class certification in its efforts to sue Monsanto and Bayer for genetic contamination of organic canola. Together these two cases establish an unacceptable incongruity at common law between the rights enjoyed by intellectual property owners and any corresponding duties that might attach to their inventions. I suggest that Marx’s concept of primitive accumulation offers a suitable theoretical register for apprehending contemporary erosions of the commons through the enclosure …

Patently Impossible, Sean B. Seymore

Vanderbilt Law Review

The quest to achieve the impossible fuels creativity, spawns new fields of inquiry, illuminates old ones, and extends the frontiers of knowledge. It is difficult, however, to obtain a patent for an invention which seems impossible, incredible, or conflicts with well- established scientific principles. The principal patentability hurdle is operability, which an inventor cannot overcome if there is reason to doubt that the invention can really achieve the intended result. Despite its laudable gatekeeping role, this Article identifies two problems with the law of operability. First, though objective in theory, the operability analysis rests on subjective credibility assessments. These credibility …

The Changing Damages Regime: Reasonable Royalties After Lucent And Willful Infringement And Enhanced Damages After Seagate, Christopher B. Seaman

Christopher B. Seaman

No abstract provided.

Efficient Uncertainty In Patent Interpretation, Harry Surden

Washington and Lee Law Review

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 …

Patents, Presumptions, And Public Notice, Timothy R. Holbrook

Indiana Law Journal

Patents are peculiar legal instruments in that they contain both technical and legal information. This Janus-like nature of the documents is important because they serve the legal purpose of affording the owner the right to exclude others from practicing the invention, and third parties need to be able to assess the scope of that right. At the same time, through the patent’s disclosure, the document is intended to contribute to the storehouse of technical knowledge. Superficially, patents are generally viewed through the eyes of the hypothetical person having ordinary skill in the art (PHOSITA), patent law’s “reasonable person.” Unfortunately, the …

Markedly Low: An Argument To Raise The Burden Of Proof For Patent False Marking, Caroline Ayres Teichner

Chicago-Kent Law Review

The Federal Circuit's liberal treatment of the patent false-marking statute, 35 U.S.C. § 292, has created a climate in which opportunistic qui tam plaintiffs facing a low burden of proof can recover potentially enormous sums of money under the statute with no showing of competitive injury. This note argues that the Federal Circuit erred by ruling that plaintiffs must prove the key element of false-marking claims—namely, intent to deceive the public—by a mere preponderance of the evidence, and further contends that the court should have adopted the clear and convincing standard instead. Support for this elevated burden of proof can …

Whose Body Is It Anyway? Human Cells And The Strange Effects Of Property And Intellectual Property Law, Robin C. Feldman

Robin C Feldman

A Comparative Perspective On The Patent Eligibility Of Software Inventions, Hung-San Kuo

Maurer Theses and Dissertations

Computer software is considered similar to an algorithm, a mental activity, or an abstract idea, so whether or not it meets patent eligibility is full of controversy. Although computer software products are sold all over the world, each jurisdiction deals with them differently based on individual regulations. If there were an objective and proper way to deal with this subject matter, it would reduce the number of debates and narrow the gap of patent protection among different jurisdictions.

The meaning of "invention" in patent law in each jurisdiction is the most important factor affecting the determination of patent eligibility, which …

Bilski V. Kappos: Everything Old Is New Again, Joe Miller

Scholarly Works

My goal in this brief Essay is to introduce the symposium papers by describing the basics of the Bilski case. I also offer a brief thought about where interested observers might turn next in the U.S. Court of Appeals for the Federal Circuit's § 101 jurisprudence for insights about how that court may implement Bilski's unmistakable revival of Benson and Fook. Specifically, now that the 15-year Alappat/State Street misadventure, with its patent-maximizing "useful, concrete, and tangible result" standard, has come to an end, it is time to revisit the reasoning and results in a rich trove of cases from the …

Recent Developments In Intellectual Property Law In Nigeria, Ufuoma Barbara Akpotaire

Ufuoma Barbara Akpotaire

Key Point – This article provides an overview of the developments in the field of Intellectual Property (IP) in Nigeria and highlights key issues in 10 recent judgments on IP Law in Nigeria. The cases are organized thematically according to the type of Intellectual Property Rights (IPRs) protected under the Nigerian legal system such as trademarks, copyrights, patents, and designs. The decision to pen this Article is borne out of a conversation with a colleague in New York, who seemed surprised to learn that I had worked as an IP lawyer in Nigeria. My colleague was aware of the existence …

Book Review: Gene Patents And Collaborative Licensing Models: Patent Pools, Clearinghouses, Open Source Models And Liability Regimes (Ed. Geertrui Van Overwalle), Jonas Anderson

Book Reviews

A review of Gene Patents and Collaborative Licensing Models: Patent Pools, Clearinghouses, Open Source Models and Liability Regimes.

Partial Patents, Michael Mattioli, Gideon Parchomovsky

Articles by Maurer Faculty

In this Article, we propose a way to improve the workings of the patent system. Unlike most extant reform proposals that focus on the USPTO and the Federal Circuit and the procedures they employ, our proposal is conceptual in nature. We introduce two new intellectual property forms—“quasi-patents” and “semi-patents.” Quasi-patents, as we define them, would avail only against direct business competitors of the inventor, but not against anyone else. Semi-patents would have the same scope as traditional patents, but their grant would be conditioned on an applicant’s consent to publish all research information pertaining to the protected invention. These two …

Book Review: Gene Patents And Collaborative Licensing Models: Patent Pools, Clearinghouses, Open Source Models And Liability Regimes (Ed. Geertrui Van Overwalle), Jonas Anderson

J. Jonas Anderson

Antitrust And Patent Law Analysis Of Pharmaceutical Reverse Payment Settlements, Herbert J. Hovenkamp

All Faculty Scholarship

Patent settlements in which the patentee pays the alleged infringer to stay out of the market are largely a consequence of the Hatch-Waxman Act, which was designed to facilitate the entry of generic drugs by providing the first generic producer to challenge a pioneer drug patent with a 180 day period of exclusivity. This period can be extended by a settlement even if the generic is not producing, and in any event all subsequent generic firms are denied the 180 day exclusivity period, significantly reducing their incentive to enter.

The Circuit Courts of Appeal are split three ways over such …

Special 301 Of The Trade Act Of 1974 And Global Access To Medicine, Sean M. Flynn

Sean Flynn

Since its inception in 1988, the United States Trade Representative’s “Special 301” adjudication of foreign intellectual property law standards has been used to promote policies restricting access to affordable medications around the world. President-elect Obama released a platform promising to “break the stranglehold that a few big drug and insurance companies have on these life-saving drugs” and pledged support for “the rights of sovereign nations to access quality-assured, low-cost generic medication to meet their pressing public health needs.” The 2009 and 2010 Special 301 reports, however, indicate that the Obama Administration has not yet implemented this pledge into administration trade …

The Future Of The European Requirement For An Invention: Inherent Patentability As A Pre- And Post-Patent Determinant, Justine Pila

Justine Pila

The purpose of this chapter is to develop the reflections contained in the conclusion of a recent book (The Requirement for an Invention in Patent Law (Oxford: OUP, 2010)). Specifically, it is to propose a method for applying the requirement for an invention under Article 52(1) of the EPC, including a definition of the invention itself. I argue that while the proposal does not solve all definitional and methodological issues regarding that requirement, it is nonetheless justified on four central grounds. First, it reorients the European patent system around its central aim of supporting industrial growth. Second, it explains much …

Intellectual Property As An ‘Investment’ In International Law: A Question Of Access To Medicines Vs Access To Justice, Christopher Wadlow

Christopher Wadlow

No abstract provided.

Gender And Invention: Mapping The Connections, Victoria Phillips

American University Journal of Gender, Social Policy & the Law

No abstract provided.

Examining Exclusion In Woman-Inventor Patenting: A Comparison Of Educational Trends And Patent Data In The Era Of Computer Engineer Barbie, Annette I. Kahler

American University Journal of Gender, Social Policy & the Law

No abstract provided.

Implementation, Or The Possible Lack Thereof, Of The Bilski Supreme Court Decision, Abby Bhattacharyya

Journal of Business & Technology Law

No abstract provided.

Can The Patent Office Be Fixed?, Mark A. Lemley

Marquette Intellectual Property Law Review

The Patent and Trademark Office (PTO) finds itself caught in a vise. On the one hand, it has been issuing a large number of dubious patents over the past twenty years, particularly in the software and electronic commerce space. It issues many more patents than its counterparts in Europe and Japan; roughly three-fourths of applicants ultimately get one or more patents, a higher percentage than in other countries. Complaints about those bad patents are legion, and indeed, when they make it to litigation, they are quite often held invalid. Even the ones that turn out to be valid are often …

Medimmune V. Genentech: A Game-Theoretic Analysis Of The Supreme Court’S Continued Assault On The Patentee, Nicholas G. Smith

Marquette Intellectual Property Law Review

In 2007, the Supreme Court decided MedImmune v. Genentech. This decision changed the landscape of the patent licensing field by holding that a licensee in good standing may challenge the validity of a patent in a declaratory judgment action. By adding to the cost of entering a license agreement, MedImmune erodes one characteristic of a patent from which it derives its worth—the patent’s ability to be licensed. Unfortunately, this has decreased the incentive to innovate by decreasing the value of a patent. This Comment seeks to illustrate, using a game theoretic model, how MedImmune will increase litigation against patent …

Patent Claim Obviousness In Jury Trials: Where's The Analysis?, Wesley A. Demory

Journal of Business & Technology Law

No abstract provided.

Patenting Genes And Genetic Methods: What's At Stake?, Eileen M. Kane

Journal of Business & Technology Law

No abstract provided.

The Geneticists' Approach To Bilski, Joann A. Boughman, Kyle M. Brown

Journal of Business & Technology Law

No abstract provided.

Facilitating Patient Access To Patent-Protected Genetic Testing, Janice M. Mueller

Journal of Business & Technology Law

No abstract provided.

Clear But Unconvincing: The Federal Circuit's Invalidity Standard, David O. Taylor

Fordham Intellectual Property, Media and Entertainment Law Journal

The Federal Circuit’s standard for proving invalidity of patent claims is clear. The Federal Circuit always requires clear and convincing evidence to prove that a patent claim is invalid. The rationale behind this standard, however, is unconvincing. There are significant reasons to believe that the Patent Office rarely considers the most relevant prior art and that, instead, alleged infringers often find prior art that is more relevant than the prior art considered by the Patent Office. It defies logic to apply the clear and convincing burden where the Patent Office considered only prior art that is less relevant than the …

Business Roundtable: Patents & Trademarks, Robert Berry

Librarian Publications

An October 2011 presentation by Robert Berry, Research Librarian and Patent and Trademark Resource Center representative for the Sacred Heart University Library.

Small Business Strategies Series: Patents & Trademarks, Robert Berry

Librarian Publications

A November 14 2011 presentation by Robert Berry, Research Librarian and Patent and Trademark Resource Center representative for the Sacred Heart University Library.