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Full-Text Articles in Law
Ksr Fallout: Questions Of Law Based On Findings Of Fact And The Continuing Problem Of Hindsight Bias, Adam Powell
Ksr Fallout: Questions Of Law Based On Findings Of Fact And The Continuing Problem Of Hindsight Bias, Adam Powell
UC Law Science and Technology Journal
The KSR v. Teleflex decision marked the Supreme Court's first significant return to the issue of "obviousness" in over four decades. While KSR may make it easier to invalidate a patent by a finding of obviousness, it is unclear how lower courts will implement the decision. The resulting uncertainty presents an opportunity to rethink the jury's role in an obviousness determination. This note discusses current model jury instructions and jury verdict forms, the jury's continuing role in obviousness decisions, and how new jury instructions that conform to KSR's standards can aid lower courts in addressing a jury's use of hindsight.
A Better Carrot Incentivizing Patent Reexamination, James W. Beard
A Better Carrot Incentivizing Patent Reexamination, James W. Beard
UC Law Science and Technology Journal
Patent reexamination provides a potentially powerful alternative to full invalidity litigation, but it has been underutilized because of deficiencies in the patent reexamination system. The system's appeal as an alternative to invalidity litigation is greatly diminished by constraints on forms of evidence and grounds for invalidity, the limited potential for challengers to participate in the process, and the significant risk a challenger takes in pursuing patent reexamination. While reforms have been proposed, most have focused on enlarging the procedure within the context originally established by Congress. Although such reforms may be important, they do not address the central obstacle to …
The Patent Prosecution Highway: Is Life In The Fast Lane Worth The Cost, Alicia Pitts, Joshua Kim
The Patent Prosecution Highway: Is Life In The Fast Lane Worth The Cost, Alicia Pitts, Joshua Kim
UC Law Science and Technology Journal
Globalization has led to a rapid increase in the number of patent applications filed in the United States and abroad. In response, individual patent offices have introduced preliminary programs to share the workload and reduce redundancy, giving rise to the "patent prosecution highway." Setting grandiose visions aside, the patent prosecution highway is generally failing. This article examines the strengths and weakness of the patent prosecution highway and suggests some methods through which the highway should be navigated and used as part of a global patent strategy.
Exceeding The Scope Of The Patent: Solving The Reserve Payment Settlement Problem Through Antitrust Enforcement And Regulatory Reform, William J. Newsom
Exceeding The Scope Of The Patent: Solving The Reserve Payment Settlement Problem Through Antitrust Enforcement And Regulatory Reform, William J. Newsom
UC Law Science and Technology Journal
Reverse payment settlements in pharmaceutical patent litigation, also known as "pay for delay" settlements, are almost universally anticompetitive. Nonetheless, because of the current regulatory framework and a failure of courts to address the definition of patent scope, many of these settlements are upheld as legal, falling under a patent "exception" to antitrust liability. The patent "exception", however, does not apply to pay-for-delay settlements, because paying to protect a patent is inherently beyond the scope of that patent. This note addresses the problem of reverse payment settlements and proposes a new comprehensive solution.
Reach-Through Rights And The Patentability, Enforcement, And Licensing Of Patents On Drug Discovery Tools, Alfred C. Server, Nader Mousavi, Jane M. Love
Reach-Through Rights And The Patentability, Enforcement, And Licensing Of Patents On Drug Discovery Tools, Alfred C. Server, Nader Mousavi, Jane M. Love
UC Law Science and Technology Journal
A novel, nonobvious Discovery Tool and its use can be the subject of valid patent claims, but patent claims that reach through to cover as-of-yet-undiscovered drug products generally fail to meet the written description and enablement requirements of 35 U.S.C. § 112. Notwithstanding the Supreme Court's broad reading of the scope of the statutory exemption to infringement-under 35 U.S.C. § 271(e)(1)-in Merck v. Integra, and the occasionally misapplied common law experimental use exception, valid claims to Discovery Tools and their use are enforceable against unauthorized users. This article analyzes the legality of one form of compensation occasionally sought by Discovery …
Is Intellectual Property A Hurdle For Transferring Technology To Developing Countries - If So, How High Or A Hurdle, Cecily Anne O'Regan
Is Intellectual Property A Hurdle For Transferring Technology To Developing Countries - If So, How High Or A Hurdle, Cecily Anne O'Regan
UC Law Science and Technology Journal
It might appear that intellectual property protection has a positive impact on a country's economic development. According to Professor Franqois Dessemontet, "there is a strong correlation between the rate of patents sought by enterprise and the general level of economic developments." However, it would be arrogant to presume that a one-size-fits-all approach toward intellectual property protection would work for developing countries. In fact, as noted by Sir Hugh Laddie, "[flor too long intellectual property rights have been regarded as food for the rich countries and poison for poor countries ... Poor countries may find them useful provided they are accommodated …
Of Babies And Bathwater - The Impact Of In Re Bilski On Life Science Patents, Michael J. Shuster, Juleen Konkell
Of Babies And Bathwater - The Impact Of In Re Bilski On Life Science Patents, Michael J. Shuster, Juleen Konkell
UC Law Science and Technology Journal
Tension between the broad language of 35 U.S.C. § 101 and limitations of its scope is an emerging issue in recent court decisions attempting to resolve the issue of whether patent claims preempt a natural phenomenon. These decisions significantly impact the patentability of personalized medicine inventions that rely on discovery of correlations between biomarkers and the safety and efficacy of therapeutic treatment in an individual. While a "business methods" case, the Federal Circuit's In re Bilski decision may have a profound impact on medical diagnostics and personalized medicine patents by altering the ability of personalized medicine companies to protect the …