Law Commons^™

Limitations And Exceptions In The Wipo Instrument On Genetic Resources And Associated Traditional Knowledge, Sean Flynn

Joint PIJIP/TLS Research Paper Series

One of the hot topics in the World Intellectual Property Organization (WIPO) diplomatic conference on an instrument on “Intellectual Property, Genetic Resources and Traditional Knowledge Associated with Genetic Resources” is whether and what exceptions language should be included in the text. At the brief public report from Committee I on May 15, 2024, the Chair reported: “There appears to be adequate support for eliminating Article 4, limitations and exceptions. Some parties opposed.” This Blog provides some background information on the Article and analysis of potentially applicable models and concepts for the provision, including analysis of similar treaties with no exceptions.

Sanctions For Non Disclosure, As Set Out In Article 6 Of The Wipo Basic Proposal On Intellectual Property, Genetic Resources And Traditional Knowledge, Should Include Possible Revocation Of A Patent, James Love, Claire Cassedy

Joint PIJIP/TLS Research Paper Series

The basic proposal for an international legal instrument relating to intellectual property, genetic resources and traditional knowledge associated with genetic resources prepared by the World Intellectual Property Organization (WIPO) Secretariat (GRATK/DC/3) sets out in its Article 3 a narrow obligation to disclose (1) the country of origin of the genetic resource, or if not known, its source, and (2) the Indigenous Peoples or local community that provided traditional knowledge associated with the genetic resource, or the source of such knowledge.

Article 6 of the basic proposal sets out the sanctions and remedies for failures to make such disclosures. Among the …

Securing Patent Law, Charles Duan

Articles in Law Reviews & Other Academic Journals

A vigorous conversation about intellectual property rights and national security has largely focused on the defense role of those rights, as tools for responding to acts of foreign infringement. But intellectual property, and patents in particular, also play an arguably more important offense role. Foreign competitor nations can obtain and assert U.S. patents against U.S. firms and creators. Use of patents as an offense strategy can be strategically coordinated to stymie domestic innovation and technological progress. This Essay considers current and possible future practices of patent exploitation in this offense setting, with a particular focus on China given the nature …

Brief For The Coalition Against Patent Abuse As Amicus Curiae In Support No Party, Charles Duan

Amicus Briefs

Perhaps unexpectedly, a case on the constitutionality of the Patent Trial and Appeal Board has major significance to the pressing policy crisis of drug prices in the United States. Erroneously issued patents monopolize medical therapies, making them unaffordable or inaccessible to numerous Americans. The inter partes review proceedings that the Board conducts have repeatedly and successfully overcome such patents, enabling competition and dramatically lowering prices. This Court should ensure the continued viability of the Board and of inter partes review, by preserving the Board’s objectivity and independence from executive branch political influence.

Kenya’S Intellectual Property Bill, 2020, And Its Shortcomings In Adopting All Lawful Trips Public Health Flexibilities, Brook K. Baker

Joint PIJIP/TLS Research Paper Series

Given the importance of access to medicines to human rights and well-being in Kenya, it is appropriate to analyze whether Kenya has currently incorporated the allowed public health flexibilities to the greatest extent possible in its draft Intellectual Property Bill, 2020. This analysis will focus on the patent, utility model, and enforcement measures only as they are the ones directly relevant to access to medicines and other health technologies. The analysis starts with the premise that Kenya wishes to avoid granting unwarranted patents on unworthy inventions, especially with respect to medicines and other health technologies. In particular, the assumption is …

Of Monopolies And Monocultures: The Intersection Of Patents And National Security, Charles Duan

Articles in Law Reviews & Other Academic Journals

It was certainly an odd thing for the Department of Justice attorney arguing for the United States to appear before the Ninth Circuit to tell the appellate judges that a federal agency was wrong. This was what happened in a Federal Trade Commission enforcement action against Qualcomm Inc., a semiconductor technology company. As a substantial holder of patents on mobile communications technologies and also a leading manufacturer of chips used in that same industry, the FTC charged Qualcomm with anticompetitive conduct; the district court agreed and enjoined Qualcomm from certain patent licensing practices. It was that award of injunctive relief …

Brief Fof The R Street Institutte, Public Knowledge, And The Niskanen Center As Amici Curiae In Support Of Petitioner, Charles Duan, Meredith F. Rose

Amicus Briefs

The Java SE declarations of this case are simply a language of commands. As an application programming interface, or API, they exhibit features common to any language: a structured vocabulary and grammatical syntaxes, which a computer system understands as instructions to perform predefined tasks. What Oracle accuses as infringement is “reimplementation,” namely the building of a system, in this case Google’s Android platform, that repurposes the same words and syntaxes of the Java declarations.

Brief Of The R Street Institute As Amicus Curiae In Support Of Petitioner, Charles Duan

Amicus Briefs

It is a common but misleading premise of cases such as this one that the disappointed patent applicant has two options for judicial review: a 35 U.S.C. § 145 district court action and an appeal under 35 U.S.C. § 141. The applicant also has a non-judicial option: administrative remedies within the U.S. Patent and Trademark Office.

These administrative remedies add an important dimension to this case. The Court of Appeals adopted what it conceded was an atextual construction of § 145 expense recovery provision in order to ensure that § 145 actions were not cost-prohibitive to “small businesses and individual …

Brief For The R Street Institute As Amicus Curiae In Support Of Respondents, Charles Duan

Amicus Briefs

The government and its agencies should be treated as a “person” that may petition to institute post-issuance review proceedings under the America Invents Act, for two reasons. First, permitting the government to seek review of patents under these proceedings best realizes the intent of Congress to make those proceedings widely available. Second, compared to the government’s alternative option for administratively challenging patents, AIA post-issuance review better serves important norms of procedure and governance, including transparency, due process, and separation of functions.

Brief For The R Street Institute And Engine Advocacy As Amici Curiae In Support Of Respondents, Charles Duan

Amicus Briefs

Under 35 U.S.C. § 102, an inventor may not obtain a patent on an invention that has been “on sale” for more than a year. The question is whether, from this so-called on-sale bar, certain classes of sales should be exempted— sales under a confidentiality agreement, in Petitioner’s view; and sales to those other than the ultimate customers, according to the government.

Brief For The R Street Institute And Engine Advocacy As Amici Curiae In Support Of Respondents, Charles Duan

Amicus Briefs

Under 35 U.S.C. § 102, an inventor may not obtain a patent on an invention that has been “on sale” for more than a year. The question is whether, from this so-called on-sale bar, certain classes of sales should be exempted— sales under a confidentiality agreement, in Petitioner’s view; and sales to those other than the ultimate customers, according to the government.

Court Capture, Jonas Anderson

Articles in Law Reviews & Other Academic Journals

Capture — the notion that a federal agency can become controlled by the industry the agency is supposed to be regulating — is a fundamental concern for administrative law scholars. Surprisingly, however, no thorough treatment of how capture theory applies to the federal judiciary has been done. The few scholars who have attempted to apply the insights of capture theory to federal courts have generally concluded that the federal courts are insulated from capture concerns.

This Article challenges the notion that the federal courts cannot be captured. It makes two primary arguments. As an initial matter, this Article makes the …

Protecting Fashion Designs: Not Only "What?" But "Who?", Julie Zerbo

American University Business Law Review

No abstract provided.

Using Data Exclusivity Grants To Incentivize Cumulative Innovation Of Biologics' Manufacturing Processes, Eric Lawrence Levi

American University Law Review

No abstract provided.

The Circular Logic Of Actavis, Joshua B. Fischman

American University Law Review

No abstract provided.

The Patently Unexceptional Venue Statute, Paul R. Gugliuzza, Megan M. La Belle

American University Law Review

No abstract provided.

Redefining Reality: Why Design Patent Protection Should Expand To The Virtual World, John R. Boulé Iii

American University Law Review

Virtual reality (“VR”) and augmented reality (“AR”) technologies are rapidly maturing. Companies like Facebook and Microsoft are capitalizing on these technologies and actively releasing products to consumers. Both companies’ products blur the line between the real world and the virtual world. The blurring of this line presents novel questions regarding the protection of digital intellectual property that exists solely within the virtual world.

One such question is whether design patent protection will be available to three-dimensional digital models, models of real-world items that are digitally reproduced in the virtual world. To receive design patent protection, 35 U.S.C. § 171 requires, …

The Federal Circuit's Acquiescence (?), Timothy R. Holbrook

American University Law Review

No abstract provided.

Nontechnical Disclosure, Jonas Anderson

Articles in Law Reviews & Other Academic Journals

One of the primary goals of the patent system is the broad dissemination of technical knowledge. But, as this Article argues, there is also an underappreciated amount of nontechnical knowledge contained in a patent, information that may in certain cases be more valuable to readers than the technical disclosure contained in a patent. This Article looks at various types of nontechnical disclosure to argue that appreciating the nontechnical aspects of patent disclosure can increase our understanding of what information patents are disseminating to the general public.

Empirical Studies Of Claim Construction, Jonas Anderson

Working Papers

Patent claims define the scope of the patent right and hence are central to the operation of the patent system. Patent prosecutors devote substantial effort to crafting patent claims so as to maximize the scope of their right without “reading on” prior art (and thereby defeating novelty). Businesses seeking to enter a technology marketplace must be careful to avoid encroaching patent claims. Thus, when patentees enforce their rights, the interpretation of claim boundaries guides both validity and infringement analysis. Following the Supreme Court’s decision in Markman v. Westview Instruments (517 U.S. 370 (1996)), holding that “the construction of a patent, …

Taming The Mongrel: Aligning Appellate Review Of Claim Construction With Its Evidentiary Character In Teva V. Sandoz, Jonas Anderson, Peter Menell, Arti Rai

Working Papers

In its seminal Markman decision, the Supreme Court sought to usher in a more effective, transparent patent litigation regime through its ruling that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” In the aftermath of this decision, the Federal Circuit adhered to its prior holding that claim construction is a “purely legal issue” subject to plenary de novo review, downplaying the Supreme Court’s more nuanced description of claim construction as a “mongrel practice” merely “within the province of the court.” Over nearly two decades of experience in the …

Informal Deference: A Historical, Empirical, And Normative Analysis Of Patent Claim Construction, Jonas Anderson, Peter S. Menell

Articles in Law Reviews & Other Academic Journals

Patent scope plays a central role in the operation of the patent system, making patent claim construction a critical aspect of just about every patent litigation. With the resurgence of patent jury trials in the 1980s, the allocation of responsibility for interpreting patent claims between trial judge and jury emerged as a salient issue. While the Supreme Court’s Markman decision usefully removed claim construction from the black box of jury deliberations notwithstanding its "mongrel" mixed fact/law character, the Federal Circuit's adherence to the view that claim construction is a pure question of law subject to de novo appellate review produced …

Rethinking Rand: Sdo-Based Approaches To Patent Licensing Commitments, Jorge Contreras

Working Papers

So-called “reasonable and nondiscriminatory” (RAND) licensing commitments have been utilized by standards-development organizations (SDOs) for years in an attempt to alleviate the risk of patent hold-up in standard-setting. These commitments, however, have proven to be vague and offer few assurances to product vendors or patent holders. A recent surge of international litigation concerning RAND commitments has brought this issue to the attention of regulators, industry and the public, and many agree that a better approach is needed. In this paper, I identify seven “first principles” that underlie the licensing and enforcement of standards-essential patents (SEP)s. These can be summarized as …

Music As Biotech: Remixing The Ubmta For Use With Digital Samples, Adam G. Holofcener

Intellectual Property Brief

No abstract provided.

To Patent Or Not To Patent, That Is The Question: Embryonic Stem Cell Patents Rejected In Europe, Amer Raja

Intellectual Property Brief

No abstract provided.

The Russian Ipr Problem: How Accession To The Wto Is Not The Magical Solution, Rather A Step In The Right Direction, Joshua M. Green

Intellectual Property Brief

No abstract provided.

Standards And Related Intellectual Property Issues For Climate Change Technology, Jorge Contreras

Working Papers

Almost every product sold today must conform to standards, whether relating to its design, manufacture, operation, testing, safety, sale or disposal, and sometimes to many of these at once. At their root, standards are no more than written requirements or design features of a product, service or other activity. They can be breathtakingly detailed or disarmingly general, ranging from thousands of pages in length to just a few sentences. Standards are set by a wide range of bodies, from governmental agencies to industry consortia to multinational treaty organizations. Some standards are adopted into local, state or federal legislation and attain …

Standards, Patents, And The National Smart Grid, Jorge Contreras

Articles in Law Reviews & Other Academic Journals

The National Institute of Standards and Technology (NIST) is charged with overseeing the identification and selection of hundreds of standards that will be required to implement the national Smart Grid project. However, the benefits that could be realized from Smart Grid standardization could be threatened by a growing number of patents that cover Smart Grid architecture and technologies. If such patents are not revealed until technology is broadly distributed throughout the network (“locked-in”), significant disruption could occur when patent holders seek to collect unanticipated rents from large segments of the market. Moreover, even if patents are revealed early in the …

Catalyzing Technology Development Through University Research, Jorge Contreras, Charles R. Mcmanis

Working Papers

Research universities have traditionally been catalysts for technological innovation, particularly in new and emerging industries. Against this backdrop, it is not surprising that some of the most promising new technologies relating to climate change are being developed at research universities. In this chapter, we first summarize several modes of university technology development and licensing. Next we describe the evolution of university technology commercialization and the Bayh-Dole Act of 198'8 which is widely credited with establishing the intellectual property structure of current university licensing and technology transfer. We then discuss some important legal and intellectual property considerations relevant to the development, …

Equity, Antitrust, And The Reemergence Of The Patent Unenforceability Remedy, Jorge Contreras

Articles in Law Reviews & Other Academic Journals

The conventional legal analysis of technical standard setting derives primarily from antitrust law. But antitrust remedies, taken alone, may not be broad enough to address recent abuses of the standardization process. The principal example of this shortcoming is the well-known case of Rambus, Inc., which, over the course of several years, was alleged to have concealed relevant patent applications from a standards organization in which it participated and then successfully sued the entire DRAM industry for royalties after the standard was “locked-in.” Remarkably, Rambus prevailed in its litigation campaign despite aggressive enforcement efforts by the Federal Trade Commission. Rambus’s success …