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Articles 1 - 30 of 111
Full-Text Articles in Law
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.
Pleasure Patents, Andrew Gilden, Sarah R. Wasserman Rajec
Pleasure Patents, Andrew Gilden, Sarah R. Wasserman Rajec
Faculty Publications
The United States Patent and Trademark Office has granted thousands of patents for inventions whose purpose is to facilitate the sexual pleasure of their users. These "pleasure patents" raise a range of novel questions about both patent theory and the relationship between law and sexuality more broadly. Given that "immoral" inventions were long excluded from the patent system, and that sexual devices were widely criminalized for much of the past 150 years, how have patentees successfully framed the contributions of their sexual inventions? If a patentable invention must be both new and useful, how have patentees described the utility of …
Incessant Influence: Social Networking Sites Are Utilizing Patented Technology To Commandeer Human Emotion And Behavior
Marquette Intellectual Property & Innovation Law Review
None
Misappropriation And Patenting Of Traditional Ethnobotanical Knowledge And Genetic Resources, Maxim V. Gubarev
Misappropriation And Patenting Of Traditional Ethnobotanical Knowledge And Genetic Resources, Maxim V. Gubarev
Journal of Food Law & Policy
Four-fifths of all pharmaceuticals have been developed from natural plant resources, and native plant resources similarly play a significant role in the development of new and improved crops.
Association For Molecular Pathology V. Myriad Genetics: A Critical Reassessment, Jorge L. Contreras
Association For Molecular Pathology V. Myriad Genetics: A Critical Reassessment, Jorge L. Contreras
Utah Law Faculty Scholarship
The Supreme Court’s 2013 decision in Association for Molecular Pathology v. Myriad Genetics is part of the Court’s recent quartet of patent eligibility decisions, which also includes Bilski v. Kappos, Mayo v. Prometheus and Alice v. CLS Bank. Each of these decisions has significantly shaped the contours of patent eligibility under Section 101 of the Patent Act in ways that have been both applauded and criticized. The Myriad case, however, was significant beyond its impact on Sec-tion 101 jurisprudence. Perhaps one of the most remarkable things about Myriad is that it meant so many different things to so many different …
A Siri-Ous Societal Issue: Should Autonomous Artificial Intelligence Receive Patent Or Copyright Protection?, Samuel Scholz
A Siri-Ous Societal Issue: Should Autonomous Artificial Intelligence Receive Patent Or Copyright Protection?, Samuel Scholz
Cybaris®
No abstract provided.
Can An Improved Disclosure Mechanism Moderate Algorithm-Based Software Patentability In The Public Interest?, Vinicius Sala
Can An Improved Disclosure Mechanism Moderate Algorithm-Based Software Patentability In The Public Interest?, Vinicius Sala
Cybaris®
No abstract provided.
Opting Into Device Regulation In The Face Of Uncertain Patentability, Rebecca S. Eisenberg
Opting Into Device Regulation In The Face Of Uncertain Patentability, Rebecca S. Eisenberg
Articles
This article examines the intersection of patent law, FDA regulation, and Medicare coverage in a particularly promising field of biomedical innovation: genetic diagnostic testing. First, I will discuss current clinical uses of genetic testing and directions for further research, with a focus on cancer, the field in which genetic testing has had the greatest impact to date. Second, I will turn to patent law and address two recent Supreme Court decisions that called into question the patentability of many of the most important advances in genetic testing. Third, I will step outside patent law to take a broader view of …
Computational Experimentation, Tabrez Y. Ebrahim
Computational Experimentation, Tabrez Y. Ebrahim
Vanderbilt Journal of Entertainment & Technology Law
Experimentation conjures images of laboratories and equipment in biotechnology, chemistry, materials science, and pharmaceuticals. Yet modern day experimentation is not limited to only chemical synthesis, but is increasingly computational. Researchers in the unpredictable arts can experiment upon the functions, properties, reactions, and structures of chemical compounds with highly accurate computational techniques. These computational capabilities challenge the enablement and utility patentability requirements. The patent statute requires that the inventor explain how to make and use the invention without undue experimentation and that the invention have at least substantial and specific utility. These patentability requirements do not align with computational research capabilities, …
Is Dna Really A Natural Product? It's Time To Separate Fact From (Legal) Fiction: An Examination Of Dna Patentability As A Biological Algorithm In The Post-Myriad Era, Nicholas Ulen
Chicago-Kent Law Review
In 2013, the United States Supreme Court delivered its landmark decision in Ass’n for Molecular Pathology v. Myriad Genetics, Inc., holding isolated DNA unpatentable, thereby invalidating the claims of thousands of DNA patents in the process. The opinion, delivered by Justice Thomas, reasoned that the act of separating DNA from the body did not sufficiently transform the molecule beyond what naturally exists. Yet the Court found that line to be crossed when it held certain artificially synthesized complementary DNA molecules coding for the exact same gene patentable. Unlike the Federal Circuit, the Court focused its analysis not on the …
Patenting The Unexplained, Sean B. Seymore
Patenting The Unexplained, Sean B. Seymore
Vanderbilt Law School Faculty Publications
It is a bedrock principle of patent law that an inventor need not understand how or why an invention works. The patent statute simply requires that the inventor explain how to make and use the invention. But explaining how to make and use something without understanding how or why it works yields patents with uninformative disclosures. Their teaching function is limited; one who wants to understand or figure out the underlying scientific principles must turn elsewhere. This limited disclosure rule does not align with the norms of science and tends to make patent documents a less robust form of technical …
Computational Experimentation, Tabrez Y. Ebrahim
Computational Experimentation, Tabrez Y. Ebrahim
Faculty Scholarship
Experimentation conjures images of laboratories and equipment in biotechnology, chemistry, materials science, and pharmaceuticals. Yet modern day experimentation is not limited to only chemical synthesis, but is increasingly computational. Researchers in the unpredictable arts can experiment upon the functions, properties, reactions, and structures of chemical compounds with highly accurate computational techniques. These computational capabilities challenge the enablement and utility patentability requirements. The patent statute requires that the inventor explain how to make and use the invention without undue experimentation and that the invention have at least substantial and specific utility. These patentability requirements do not align with computational research capabilities, …
Three New Metrics For Patent Examiner Activity: Office Actions Per Grant Ratio (Ogr), Office Actions Per Disposal Ratio (Odr), And Grant To Examiner Ratio (Ger), Shine Tu
Law Faculty Scholarship
The current metric for examiner prosecution activity is allowance rate, which is calculated by dividing the total number of allowances by the sum of the allowances and abandonments (allowance rate = total allowance/(total allowances total abandonments)). Importantly, however, allowance rates do not consider an examiner’s pending docket. Specifically, allowance rates do not fully capture if the examiner is simply writing office actions thereby prolonging prosecution or allowing cases. This study rectifies this failure by creating and analyzing a dataset that captures every active examiner’s current docket. Calculating the Office Action per Grant Ratio (OGR = Total # of Office Actions/Total …
Noa V. Doa: Increasing Medical Diagnostic Patentability After Mayo, Karen Mckenzie
Noa V. Doa: Increasing Medical Diagnostic Patentability After Mayo, Karen Mckenzie
Marquette Intellectual Property Law Review
The medical diagnostics market is expected to reach 65 billion by 2018. In March 2012, in Mayo Collborative Services v. Prometheus Labs, Inc. , ("Mayo") the U.S. Supreme held that the Mayo Clinic (the "Clinic") had not infringed on Prometheus Labs’ (“Prometheus”) diagnostic patent because the Prometheus patent involved ineligible subject matter, and was therefore invalid. Section 101 of the Patent Act defines eligible subject matter an “any new and useful process, machine, manufacture, or composition of matter” as patentable subject matter. Courts have held that Section 101 contains an implicit exception, making laws of nature, natural phenomena, and abstract …
The Uneasy Case For Patent Law, Rachel E. Sachs
The Uneasy Case For Patent Law, Rachel E. Sachs
Michigan Law Review
A central tenet of patent law scholarship holds that if any scientific field truly needs patents to stimulate progress, it is pharmaceuticals. Patents are thought to be critical in encouraging pharmaceutical companies to develop and commercialize new therapies, due to the high costs of researching diseases, developing treatments, and bringing drugs through the complex, expensive approval process. Scholars and policymakers often point to patent law’s apparent success in the pharmaceutical industry to justify broader calls for more expansive patent rights.
This Article challenges this conventional wisdom about the centrality of patents to drug development by presenting a case study of …
Bigger And Better Patent Examiner Statistics, Shine Tu
Bigger And Better Patent Examiner Statistics, Shine Tu
Faculty & Staff Scholarship
The American government charges the United States Patent and Trademark Office (USPTO) with reading and reviewing patent applications to determine what new or improved inventions, machines, and processes qualify for patent protection. Each application is reviewed by a specific patent examiner who theoretically applies the standards of patentability in an even, fair, unbiased and consistent manner. This task requires the examiner to not only be internally consistent with the applications she reviews but also consistent with the behavior of other examiners within the same technology center. I have conducted two studies based on data from hundreds of thousands of patents, …
Small Can Be Inventive: The Patentability Of Nanoscale Reproductions Of Macroscale Machines, Christopher Anderson
Small Can Be Inventive: The Patentability Of Nanoscale Reproductions Of Macroscale Machines, Christopher Anderson
William & Mary Business Law Review
Nanotechnology is a thriving new field of research. If even a fraction of the excitement surrounding the field proves to be true, there will be profound benefits in many aspects of our lives. Crucial to its development, however, will be the treatment of nanotechnology with respect to patents. This field has the unique potential to replicate existing machines and devices at a billionth of their size. In light of rulings that “mere scaling” of prior inventions does not create a patentable invention, problems with patentability might arise. This Note tackles this issue, considering the patentability requirements of novelty and non-obviousness, …
Plant Variety In The Republic Of Korea: Seed Industry Law, Yoonjin Buyn
Plant Variety In The Republic Of Korea: Seed Industry Law, Yoonjin Buyn
Oklahoma Journal of Law and Technology
No abstract provided.
The European Patent Office And The European Patent: An Open Avenue For Biotechnologists And "Living Inventions", Katrina Mcclatchey
The European Patent Office And The European Patent: An Open Avenue For Biotechnologists And "Living Inventions", Katrina Mcclatchey
Oklahoma Journal of Law and Technology
No abstract provided.
Agricultural Biogechnology: United States Statutory Law, Jo Lynn Jeter
Agricultural Biogechnology: United States Statutory Law, Jo Lynn Jeter
Oklahoma Journal of Law and Technology
No abstract provided.
The Effect Of The "Onco-Mouse" Decisions On The Exception To Patentability For "Animal Varieties" Under The European Patent Convention, Katrina Mcclatchey
The Effect Of The "Onco-Mouse" Decisions On The Exception To Patentability For "Animal Varieties" Under The European Patent Convention, Katrina Mcclatchey
Oklahoma Journal of Law and Technology
No abstract provided.
The Impact Of Novartis On The European Patent Convention's Exception To Patentability For "Plant Varieties", Katrina Mcclatchey
The Impact Of Novartis On The European Patent Convention's Exception To Patentability For "Plant Varieties", Katrina Mcclatchey
Oklahoma Journal of Law and Technology
No abstract provided.
Agricultural Biotechnology: U.S. Policy Regarding Patent Applications, Jo Lynn Jeter
Agricultural Biotechnology: U.S. Policy Regarding Patent Applications, Jo Lynn Jeter
Oklahoma Journal of Law and Technology
No abstract provided.
Applying The Patents Act To Living Materials In India, Robyn Ott
Applying The Patents Act To Living Materials In India, Robyn Ott
Oklahoma Journal of Law and Technology
No abstract provided.
Patentability Of Plants, Animals And Microorganisms In India, Robyn Ott
Patentability Of Plants, Animals And Microorganisms In India, Robyn Ott
Oklahoma Journal of Law and Technology
No abstract provided.
Agricultural Biotechnology: United States Case Law, Jo Lynn Jeter
Agricultural Biotechnology: United States Case Law, Jo Lynn Jeter
Oklahoma Journal of Law and Technology
No abstract provided.
Patentability Of Living Matter Related To Biofuel Production In The U.S., Nathan K. Shrewsbury
Patentability Of Living Matter Related To Biofuel Production In The U.S., Nathan K. Shrewsbury
Oklahoma Journal of Law and Technology
No abstract provided.
The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin
The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin
Andrew Chin
The Supreme Court’s 2010 decision in Bilski v. Kappos appears to have provided inadequate guidance to the courts and the Patent Office regarding the scope of the abstract-ideas exclusion from patentable subject matter. Federal Circuit Chief Judge Randall R. Rader, however, appears to have found in that decision a clear vindication of his own view that the machine-or-transformation test is incorrectly grounded in “the age of iron and steel at a time of subatomic particles and terabytes,” and thus fails, for example, to accommodate advances in “software [that] transform[] our lives without physical anchors.” Chief Judge Rader has subsequently authored …
Don’T Give Up Section 101, Don’T Ever Give Up, Brady P. Gleason
Don’T Give Up Section 101, Don’T Ever Give Up, Brady P. Gleason
Catholic University Law Review
In an era of tremendous and rapid technological advancement, coupled with the massive influence patents have on the global economy, determining the specific categories of inventions eligible for patent protection is of great importance. The statute governing patent eligible subject matter, 35 U.S.C. § 101, has unfortunately fallen steadily into a morass, wherein a great number of judicial philosophies as to the proper role and scope of § 101 occupy the statutes jurisprudence. This frustrates the utilitarian purpose of the patent system as research companies are uncertain whether certain categories of inventions will maintain their eligibly for patent protection. Because …
Beauty Fades: An Experimental Study Of Federal Court Design Patent Aesthetics, Dr. Andrew W. Torrance
Beauty Fades: An Experimental Study Of Federal Court Design Patent Aesthetics, Dr. Andrew W. Torrance
Journal of Intellectual Property Law
No abstract provided.