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Articles 1 - 30 of 58
Full-Text Articles in Law
The Integrated Approach: A Solution To Patent Subject Matter Eligibility Standards In The Software Context, Carrie Moss
The Integrated Approach: A Solution To Patent Subject Matter Eligibility Standards In The Software Context, Carrie Moss
Journal of Intellectual Property Law
No abstract provided.
Fonts, Typefaces, And Ip Protection: Getting To Just Right, Emily N. Evans
Fonts, Typefaces, And Ip Protection: Getting To Just Right, Emily N. Evans
Journal of Intellectual Property Law
No abstract provided.
The Rise And Fall Of Patent Reexamination Under The America Invents Act: The Burdens And Unconstitutional Aspects Of Congress' Latest Attempt At Patent Reform, Ron Andrew Sassano
The Rise And Fall Of Patent Reexamination Under The America Invents Act: The Burdens And Unconstitutional Aspects Of Congress' Latest Attempt At Patent Reform, Ron Andrew Sassano
Journal of Intellectual Property Law
No abstract provided.
Unraveling The Uspto's Tangled Web: An Empirical Analysis Of The Complex World Of Post-Issuance Patent Proceedings, Mark Consilvio, Jonathan R.K. Stroud
Unraveling The Uspto's Tangled Web: An Empirical Analysis Of The Complex World Of Post-Issuance Patent Proceedings, Mark Consilvio, Jonathan R.K. Stroud
Journal of Intellectual Property Law
No abstract provided.
The Psychology Of Patent Protection, Stephanie Plamondon Bair
The Psychology Of Patent Protection, Stephanie Plamondon Bair
Faculty Scholarship
This Article offers the first comprehensive assessment of the major justifications for our patent system using a behavioral psychology framework. Applying insights from the behavioral literature that I argue more accurately account for the realities of human action than previous analytical tools, I critically evaluate each of the major justifications for patents — incentive theory, disclosure theory, prospect theory, commercialization theory, patent racing theory, and non-utilitarian theories. I ask whether our current patent system is an effective regime for meeting the stated goals of these accounts. When the answer to this question is no, I again turn to the behavioral …
Finders Keepers, Or Finders Weepers? A Proposed Answer To A Question Raised By Myriad Genetics, Jingshi Shi
Finders Keepers, Or Finders Weepers? A Proposed Answer To A Question Raised By Myriad Genetics, Jingshi Shi
Journal of Intellectual Property Law
No abstract provided.
Trade Secret Rising: Protecting Equivalency Test Research And Development Investments After Momenta V. Amphastar, Hannah-Alise Rogers
Trade Secret Rising: Protecting Equivalency Test Research And Development Investments After Momenta V. Amphastar, Hannah-Alise Rogers
Journal of Intellectual Property Law
No abstract provided.
Patent Office Contested Proceedings And The Duty Of Candor, Lisa A. Dolak
Patent Office Contested Proceedings And The Duty Of Candor, Lisa A. Dolak
Journal of Intellectual Property Law
The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.
This paper discusses the “old” and “new” …
Do Abstract Ideas Have The Need, The Need For Speed?: An Examination Of Abstract Ideas After Alice, Maria R. Sinatra
Do Abstract Ideas Have The Need, The Need For Speed?: An Examination Of Abstract Ideas After Alice, Maria R. Sinatra
Fordham Law Review
Imagine you invented a way to perform mathematical calculations all over the world simultaneously. Now, imagine that you cannot patent your invention because it was compared to, and found to contain, the same idea as an abacus. This scenario was the outcome of Alice Corp. v. CLS Bank International.
In coming to its decision in Alice, the U.S. Supreme Court adopted a two-part test that it had previously utilized to analyze the patentability of laws of nature to determine whether the patent at issue met the subject matter patentability standards of § 101 of the Patent Act. Determining …
Patent Working Requirements: Historical And Comparative Perspectives, Marketa Trimble
Patent Working Requirements: Historical And Comparative Perspectives, Marketa Trimble
Boyd Briefs / Road Scholars
On October 16, 2015, Professor Marketa Trimble presented these materials at a conference hosted by the UC Irvine School of Law. The theme of the conference was "Patent Sovereignty and International Law."
Invalidated Patents And Associated Patent Examiners, Shine Tu
Invalidated Patents And Associated Patent Examiners, Shine Tu
Law Faculty Scholarship
This study attempts to determine whether there are common
characteristics between examiners who issue invalidated patents. This
study uses two new patent databases that code for nearly 1.7 million
patents and approximately one thousand patents that were litigated to
a 'final" judgment between 2010 and 2011. This study finds that
approximately one-third of patents that are litigated to final judgment
are found invalid. Most invalidated patents are found in technology
centers 1600, 2600, and 2700, which correspond to biotechnology and
organic chemistry, communications, and computer science, respectively.
Most patents are invalidated on prior art-type novelty and obviousness
grounds. This study …
When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai
When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai
Faculty Scholarship
Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.
This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history …
The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat
The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat
Faculty Scholarship
In recent years, the United States Patent and Trademark Office has systematically been engaging the legal community with inventor assistance beyond the agency’s usual business of examining applications for patents and trademarks. The purpose of the USPTO’s effort has been to support innovators who are constrained by a lack of resources to pay for patent counsel necessary to protect the full scope of their inventions. This Article describes the brief history, flexible structure, and ongoing growth of that effort, embodied in the USPTO Patent Pro Bono Program. The Patent Pro Bono Program is a national network coordinated by the USPTO …
The Case Against Federalizing Trade Secrecy, Christopher B. Seaman
The Case Against Federalizing Trade Secrecy, Christopher B. Seaman
Christopher B. Seaman
Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights. This Article engages in the first systematic critique of the claim that federalizing …
The Protection Of Property Rights In Computer Software, Edward W. Rilee
The Protection Of Property Rights In Computer Software, Edward W. Rilee
Akron Law Review
During the last decade a number of attempts have been made by the courts in the realm of patent and copyright law to settle the issue of the protection of property rights in computer software. These traditional methods of protection, however, have not been able to assimilate this relatively new technological invention. Likewise, at the start of a new decade, little or no progress towards a comprehensive form of software protection can be detected. This paper will examine the problems associated with using federal patent or copyright law to provide computer software protection and discuss why state trade secret protection …
It’S The End Of The Biological Patent World As We Know It, And Consumer Watchdog Feels Fine: How Consumer Watchdog Is Attempting To Kill The Future Of Horticultural Research, George R. Holton
George R Holton
No abstract provided.
The Human Genome: A Patenting Dilemma, Pamela Docherty
The Human Genome: A Patenting Dilemma, Pamela Docherty
Akron Law Review
This Comment will address the conflict between the U.S. patent laws and biotechnology by focusing on the NIH patent application.
The first part of this Comment discusses the objectives and statutory requirements of the patent system, which the NIH application purportedly did not meet. Next, this Comment focuses on the debate between NIH and its detractors. It explains NIH's reasons for its actions and discusses the criticisms leveled at the agency. Finally, this Comment presents solutions to the problems that have been uncovered by this debate regarding the patentability of genes.
Hilmer Doctrine And Patent System Harmonization: What Does A Foreign Inventor Have At Stake?, Kevin L. Leffel
Hilmer Doctrine And Patent System Harmonization: What Does A Foreign Inventor Have At Stake?, Kevin L. Leffel
Akron Law Review
The following discussion begins with a historical analysis that outlines the boundaries and illustrates the basis of Hilmer doctrine. Examples of the effects of Hilmer doctrine are presented as part of that discussion. Next, effects of the application of Hilmer doctrine after an interference are discussed followed by an analysis of the Patent Harmonization Act of 1992.
The "On-Sale" Bar To Patentability: Actual Reduction To Practice Not Required In Pfaff V. Wells Electronics, Inc., Daniel J. Whitman
The "On-Sale" Bar To Patentability: Actual Reduction To Practice Not Required In Pfaff V. Wells Electronics, Inc., Daniel J. Whitman
Akron Law Review
A patent grants to an inventor the exclusive right to prevent others from making, using, or selling his invention throughout the United States. However, an inventor is statutorily barred from receiving a patent for an invention that was “on sale” prior to one year before his U.S. filing date. An offer to sell cannot bar patentability until an invention exists. The general issue in applying the “on sale” bar is “[a]t what point is the invention sufficiently developed such that, coupled with an offer to sell, the inventor’s commercial activities invoke the on sale bar?” The United States Supreme Court’s …
Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson
Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson
Glynn Lunney
Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …
Alice In Wonderland Meets The U.S. Patent System, Jay Dratler Jr.
Alice In Wonderland Meets The U.S. Patent System, Jay Dratler Jr.
Akron Law Review
The attached article outlines in some detail why I think it matters in two particular fields—software and business methods—in which the PTO has issued, and the Federal Circuit has upheld, what I think are too many patents on non-inventions. The following remarks take a broader and longer-range view of patents generally.
The first reason why having a properly balanced patent system matters relates to the historical period in which we find ourselves. The world is now in the process of transferring the self-evident benefits of robust innovation, free markets, and free trade from Anglo-American and other advanced societies to the …
Phillips V. Awh: Changing The Name Of The Game, David Potashnik
Phillips V. Awh: Changing The Name Of The Game, David Potashnik
Akron Law Review
The Federal Circuit granted an en banc hearing of Phillips v. AWH Corp. to address the dichotomy existing in the Circuit’s jurisprudence. Because of the impact of claim construction on every litigated patent, Phillips has been deemed one of the most important cases in patent law since the landmark case of Markman v. Westview Instruments Inc. in the mid-1990s. In order to help the reader understand the implications of the case, the remainder of this Note is divided into four sections. Section II details the history and development of claim construction. Section I II discusses the Phillips case, including the …
The "Printed Publication" Bar After Klopfenstein: Has The Federal Circuit Changed The Way Professors Should Talk About Science?, Sean B. Seymore
The "Printed Publication" Bar After Klopfenstein: Has The Federal Circuit Changed The Way Professors Should Talk About Science?, Sean B. Seymore
Akron Law Review
The key question for universities is how Klopfenstein will affect the way that science professors talk about science. To answer this question, Part II explores the conflict between a professor’s need to disseminate research and the university’s potential interest in seeking patent protection. The research talk, one of the most important forums for communication in the science community, is an objective measure of research success and scholarship. When a professor produces a patentable invention, university TTOs must balance the professor’s need to discuss the research against the strict statutory requirement to file within one year of public disclosure. If a …
National Treatment, National Interest And The Public Domain, Margaret Ann Wilkinson
National Treatment, National Interest And The Public Domain, Margaret Ann Wilkinson
Margaret Ann Wilkinson
The concept of the "public domain" is a powerful rhetorical element in he policy debates involving intellectual property. But is it a stable and useful concept for analyzing information issues? Can the notion of the public domain and the concept of the information commons be separated? Is the notion of the public domain merely another way of expressing the public interest? This paper canvassed the literature, seeking a theoretically consistent definition for public domain that was equally applicable across the copyright, trademark and patent spheres. The analysis demonstrated that there is no such construct. The paper also reviews the findings …
Legal Nature And Contractual Conditions In Know-How Transactions, Carlos M. Correa
Legal Nature And Contractual Conditions In Know-How Transactions, Carlos M. Correa
Georgia Journal of International & Comparative Law
No abstract provided.
A Practitioner's Guide To Patent Challenges At The U.S. Patent & Trademark Office: Chapter 4, Safet Metjahic
A Practitioner's Guide To Patent Challenges At The U.S. Patent & Trademark Office: Chapter 4, Safet Metjahic
Safet Metjahic
Anyone other than the owner of a patent may file a petition to institute an IPR of the patent in the USPTO. This Chapter provides a summary of the legal framework surrounding IPR practice and, more particularly, the framework for preparing and filing an IPR at the USPTO.
Aspex Eyewear, Inc. V. Marchon Eyewear, Inc. And Brain Life, Llc. V. Elekta, Inc.: Irreconcilable Conflict In The Law Governing Claim Preclusion In Patent Cases, Christopher Petroni
Aspex Eyewear, Inc. V. Marchon Eyewear, Inc. And Brain Life, Llc. V. Elekta, Inc.: Irreconcilable Conflict In The Law Governing Claim Preclusion In Patent Cases, Christopher Petroni
Chicago-Kent Journal of Intellectual Property
In 1991, the Federal Circuit held that a judgment on the merits in a patent infringement action bars future claims based on products that are “essentially the same” as the product at issue in the former suit. This rule governed claim preclusion in patent actions until at least 2009. Then, in 2012, the Federal Circuit upended the apple cart with Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012), holding that a judgment in an infringement suit never bars future claims against products that could not have been accused in the former litigation, essentially the …
The 101 Conundrum: Creating A Framework To Solve Problems Surrounding Interpretation Of 35 U.S.C. § 101, Robert Mazzola
The 101 Conundrum: Creating A Framework To Solve Problems Surrounding Interpretation Of 35 U.S.C. § 101, Robert Mazzola
Chicago-Kent Journal of Intellectual Property
No abstract provided.
Expired Patents, Saurabh Vishnubhakat
Expired Patents, Saurabh Vishnubhakat
Catholic University Law Review
This article presents a comprehensive empirical description of the public domain of technologies that have recently passed out of patent protection. From a new dataset of over 300,000 patents that expired during 2008–2012, the study examines technological, geographical, and procedural traits of newly public inventions as a basis for exploring the social value associated with their competitive use. Moreover, comparing these inventions to inventions newly patented during the same period enables more specific discussion of how the balance of innovation in the United States continues to change.
The Case Against Federalizing Trade Secrecy, Christopher B. Seaman
The Case Against Federalizing Trade Secrecy, Christopher B. Seaman
Scholarly Articles
Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights.
This Article engages in the first systematic critique of the claim that federalizing …