Law Commons^™

The Public Domain In Intellectual Property: Beyond The Metaphor Of A Domain, Severine Dusollier

Severine Dusollier

No abstract provided.

User Innovator Community Norms At The Boundary Between Academic And Industrial Research, Katherine J. Strandburg

Katherine J. Strandburg

In this essay, I consider norms of sharing research tools and materials in what has been called Pasteur’s Quadrant, in which basic science and applied research overlap. I employ a user innovation paradigm, along with a rational choice approach to social norms, to address the issue. The convergence of academic research with commercial interests has two different types of consequences for sharing norms. First, a research tool or material developed in a nonprofit research context may be a dual-purpose innovation with both research and nonresearch uses. Thus, for example, a genetic assay may be useful in research and as a …

Norms And The Sharing Of Research Materials And Tacit Knowledge, Katherine J. Strandburg

Katherine J. Strandburg

As discussed in Wesley Cohen’s chapter in this volume, recent empirical studies have documented that scientists experience increasing difficulty obtaining tangible research materials from other scientists, while they express fewer concerns than many had anticipated about do-it-yourself tools that can be made in the laboratory, even when those tools are patented. In this Chapter I use a rational choice model of social norms to elucidate some factors that affect the likelihood that a research community will adopt a sharing norm. Based on those factors, I discuss some means by which sharing of tangible research materials can be encouraged. The analysis …

Evolving Innovation Paradigms And The Global Intellectual Property Regime, Katherine J. Strandburg

Katherine J. Strandburg

Since the negotiation of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) in 1994, the innovative landscape has undergone dramatic changes due to technological advances in fields such as biotechnology, nanotechnology, and digital communications and computation. The increasing potential for user innovation and open and collaborative innovation has brought an explosion of innovative activity that does not fit into the sales-oriented, mass market model which underlies the global intellectual property regime. In this Article, I argue that the debate over global governance of innovation should be expanded to account more fully for the implications of these changes. For the …

Rolling Equilibriums At The Pre-Commons Frontier: Identifying Patently Efficient Royalties For Complex Products, F. Russell Denton

F. Russell Denton

Patent pricing problems have roiled industry in recent years. The biggest challenge may be splintered in-licensing of dozens or even thousands of patents for a single behemoth product, where ubiquitous overlaps in invention utility frustrate rational splitting of royalties. That issue is especially daunting for software, computer chips and biotechnology. Judicial remedies are no better: courts have been unable to streamline or standardize the analysis for infringement dam-ages under the prevailing Georgia-Pacific rule. The historic weakness of financial science for intangible assets, along with cherry picking by parties, hobbles G-P’s 15-factor analysis. The universal fog in allocating royalties creates license …

Improving The Federal Circuit's Approach To Choice Of Law For Procedural Matters In Patent Cases, Ted L. Field

Ted L. Field

Because of its virtually exclusive jurisdiction over patent cases from the entire country, the United States Court of Appeals for the Federal Circuit faces a unique situation with respect to choice of law for procedural matters in patent cases. Normally, in a non-patent-related case, a district court applies the procedural-law precedent of the U.S. Court of Appeals for the circuit in which the district court sits. However, because the Federal Circuit’s jurisdiction is based on subject matter rather than geography, the court has had to choose whether (1) to develop and apply its own precedent to procedural matters or (2) …

Patent Search, Kaviraj Singh

Kaviraj Singh Sr.

Patent search All the types of patent searches are the same in the sense that searchers are trying to find closely related documents. However, to make it effective, the ways and approach must be different from each other according to the aims of search. The basic purpose of various types of patent search is described herein-below: researchers can easily understand the state-of-the-art technology and so minimize researching time; product developers can be free from anticipated infringement suits; inventors can modify their ideas to be suitable for the patentability criteria; tentative applicants can determine whether they will apply or will save …

Open Source, Open Access, Open Transfer: Market Approaches To Research Bottlenecks, Robin C. Feldman

Robin C Feldman

One of the most hotly contested issues in the field of intellectual property law concerns the existence, or non-existence, of patent thickets and the extent to which any such bottlenecks may be interfering with research. For decades, scholars warned that problems related to the over proliferation of patent rights would interfere with innovation. In contrast, a growing body of commentary argues that patent thickets are not a problem in modern industries. Either patent thickets do not exist, or if they do, patent thickets do not interfere with the progress of research.

The rhetoric is particularly heated these days because of …

Inequitable Conduct: A Flawed Doctrine Worth Saving, Lisa A. Dolak

Lisa A Dolak

A growing chorus of voices is calling for reform or even elimination of the doctrine of inequitable conduct. Critics argue that innocent or even irrelevant prosecution mistakes can be met with the ultimate penalty: unenforceability of the entire patent.

There is no question the doctrine is in need of repair. Patent owners are subject to different materiality standards in the U.S. Patent and Trademark Office and the courts. Inequitable conduct charges can be based on information completely immaterial to patentability. Findings of deceptive intent are increasingly based on inference and not evidence. And the one-size-fits-all remedy of total unenforceability deprives …

Ebay And The Blackberry®: A Media Coverage Case Study, Lisa A. Dolak, Blaine T. Bettinger

Lisa A Dolak

Patent owners, potential infringers, and the courts will continue to work through the implications of the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C. for some time. We look back, however, at media coverage relating to injunctions, “trolls,” and the U.S. patent system generally, in the months preceding the Court’s decision. We show that although eBay featured prominently in news and editorial coverage while it was pending at the Court, it could not compete in the media with another patent case pending at the same time: the case that threatened to darken the Blackberry®. Further, we note that …

The United States Patent System In The Media Mirror, Lisa A. Dolak, Blaine T. Bettinger

Lisa A Dolak

The last several years have witnessed a flurry of transformative patent reform activity. The Supreme Court has issued key rulings affecting the availability of injunctive and declaratory relief, revised the law of obviousness, and limited the extraterritorial reach of the patent act. Now Congress stands poised to ratify the most significant and far-reaching overhaul of the patent system in at least 45 years.

In this study, we analyzed major newspaper coverage of the patent system from January 1, 2005 through June 30, 2007 to systematically assess how the press portrayed the U.S. patent system. Our examination revealed a negative overall …

Striking A Balance Between Competition Law Enforcement And Patent Policy: A Developing Country's Perspective, Thomas K. Cheng

Thomas K. Cheng

This book chapter examines the tension between competition law enforcement and patent policy in developing countries. Based on the framework proposed by Louis Kaplow in an article in the early 1980s, this book chapter suggests how developing countries should balance consumer welfare against the need to provide incentives to innovate. The book chapter argues that the balance depends on the developing country at issue, in particular on that country's capacity to innovate. For those developing countries with little capacity to innovate, this book chapter suggests that the balance should be tilted towards competition law enforcement. The degree of patent protection …

Le Domaine Public, Garant De L'Intérêt Général En Propriété Intellectuelle ?, Severine Dusollier

Severine Dusollier

No abstract provided.

Mythical Beginnings Of Intellectual Property, Jessica M. Silbey

Jessica Silbey

It has become commonplace to justify intellectual property protection with homage to utilitarianism (maximizing the incentive to create, invent or produce quality goods) or natural rights (people should own the product of their creative, inventive or commercial labor). Despite the on-going dominance of these theories, there remains a dissatisfying lack of a comprehensive explanation for the value of intellectual property protection. This is in part because the economic analysis of law tends to undervalue the humanistic element of intellectual property. This Article aims to fill that void. It offers a new explanation for intellectual property rooted in narrative theory. Whereas …

Users As Innovators: Implications For Patent Doctrine, Katherine J. Strandburg

Katherine J. Strandburg

User innovators range from commercial firms, which invent new production methods in expectation of competitive advantage, to individual hobbyists motivated entirely by their enjoyment of the inventive process. In this Article, I consider the implications for patent doctrine of the fact that many user innovators derive sufficient benefit simply from developing and using their inventions to motivate them to invest the effort necessary to invent them. Moreover, user innovators often benefit from “freely revealing” their innovations to others. Trade secrecy and patenting are not central to motivating this inventive activity.

This picture of user innovation contrasts sharply with the seller …

Rolling Equilibriums At The Pre-Commons Frontier: Identifying Patently Efficient Royalties For Complex Products, F. Russell Denton

F. Russell Denton

Patent pricing problems have roiled industry in recent years. The biggest challenge may be splintered in-licensing of dozens or even thousands of patents for a single behemoth product, where ubiquitous overlaps in invention utility frustrate rational splitting of royalties. That issue is especially daunting for software, computer chips and biotechnology. Judicial remedies are no better: courts have been unable to streamline or standardize the analysis for infringement dam-ages under the prevailing Georgia-Pacific rule. The historic weakness of financial science for intangible assets, along with cherry picking by parties, hobbles G-P’s 15-factor analysis. The universal fog in allocating royalties creates license …

Patent Eligible Subject Matter In The Biotechnological Arts, Benjamin A. Keim

Benjamin A Keim

This paper compares the patentability of biotechnology inventions under the laws of the United States, Canada, Australia, and New Zealand. Five specific categories of biotechnology are examined: genes and DNA, microorganisms, plants and animals, human embryonic stem cells, and medical methods. The WTO-TRIPS agreement establishes the underlying framework followed by these countries. All of these counties allow patenting of genes and DNA as well as microorganisms. Plant and animal patents are allowed in all the countries except Canada. Surgical and medical methods are only patentable in the U.S. and Australia. Human embryonic cells are patentable in all jurisdictions, except for …

Bad Science In Search Of “Bad” Patents, Ron D. Katznelson

Ron D. Katznelson

This paper draws attention to fundamental deficiencies in studies that have been relied upon as authoritative sources on patent grant rate comparisons among national patent offices. The two prominent studies analyzed here had employed erroneous methods to compare patent grant rates, resulting in false high indications of such rates at the U.S. patent office compared to foreign patent offices. The three identified categories of analysis errors found in these studies were (i) the misapplication of conditional probability; (ii) miscounting invention applications; and (iii) failure to account for patent obsolescence and application attrition due to the widely differing delays among national …

Teaching Intellectual Property As A Skills Course , Malla Pollack

Malla Pollack

Students can gain experience in practical skills in substantive courses if professors spend the time to create appropriate projects. This article demonstrates by providing reproducible projects involving non-competition agreements, trademarks/trade dress, copyright, and patent. The article also explains the how projects can be expanded and how they can be transposed between counseling and litigation settings.

This paper is part of a symposium entitled “Reflections on Legal Education: How We Teach, How They Learn".

The Impact Of Regional Trade Areas On International Intellectual Property Rights, Brian Cimbolic

Brian Cimbolic

This article seeks to explore the impact of Customs Unions and Free Trade Areas (Regional Trade Areas, or “RTAs”) on both the developing world’s intellectual property concerns and on the international trade principle of most favored nation status. By examining various RTAs such as the North American Free Trade Agreement (“NAFTA”) and the upcoming Free Trade Agreement of the Americas (the “FTAA”), along with several smaller RTAs, this paper seeks to show that RTAs are undermining the principles of the International Trade Agreements they are a supposed to be a part of by refusing to apply MFN principles and by …

Re-Evaluating Declaratory Judgment Jurisdiction In Intellectual Property Disputes, Lorelei Ritchie De Larena

Lorelei Ritchie de Larena

The Declaratory Judgment Act of 1934 was quickly tagged by the U.S. Supreme Court as a simple procedural measure. Whether simple or procedural, the addition of the declaratory judgment option has dramatically increased the rights of would-be defendants. This is of special interest in patent law, where without the ability to initiate legal action, an alleged infringer would typically have no recourse but to either drop a lucrative business and lose a massive investment, or to languish in legal limbo while potentially accruing liability for treble damages. The option of a mirror-image lawsuit removes the patentee’s ability to unilaterally decide …

Total Upgrade: Intellectual Property Law Reform In Russia, Sergey Budylin, Yulia Osipova

Sergey Budylin

Russia has undertaken a large-scale intellectual prop-erty (IP) law reform. The reform abolishes most of the ex-isting IP legislation and instead puts all IP issues into the new Fourth Part of the Civil Code. The new legislation was signed into force at the end of 2006, but it was made effective starting from January 1, 2008. While the new leg-islation largely restates, consolidates, and refines the exist-ing legislation, it also introduces some concepts not known to Russian law before (such as “unified technology”). Im-portantly, the new Russian IP legislation addresses issues currently being a matter of international concern (such as …

Let The Games Begin: Incentives To Innovation In The New Economy Of Intellectual Property Law, Amy L. Landers

Amy L Landers

Patent litigation is developing a troubling resemblance to a Las Vegas casino. Juries have awarded patentees damage amounts that far exceed the value of a patented invention. At the same time, courts have failed to define standards to align damages with the patentee’s harm. As a result, the damages awarded for patent infringement far exceed the amount that the patent is worth. These circumstances create incentives for patentees to “game” the patent system by seeking large damages and settlement jackpots from those accused of infringement. Increasingly, so-called “patent trolls” assert patent infringement allegations, seeking to turn ideas into cold hard …

What Does The Public Get? Experimental Use And The Patent Bargain, Katherine J. Strandburg

Katherine J. Strandburg

This article deals with the increasing tension between the tradition of protecting commercially valuable inventions through patenting and the need for a robust public domain of freely available technical information as a springboard for further research. The “experimental use exemption,” permitting some unauthorized research uses of patented inventions, might be used to relieve some of this tension. However, the scope of the research exemption has been shrunk so far by recent Federal Circuit opinions that even basic university research is not excused from infringement liability. This article returns to the first principles of patent law -- the incentives to invent …

The Multiple Unconstitutionality Of Business Method Patents: Common Sense, Congressional Choice, And Constitutional History, Malla Pollack

Malla Pollack

Business method patents are of sufficiently doubtful constitutionality that the Supreme Court should either render them void or, at the least, require a clear Congressional fact finding that they are likely to promote the "Progress of . . . [the] Useful Arts." Four separate arguments support this conclusion. First, common sense shows that patents on business methods do not promote progress. Second, Congress has not considered whether business method patents are likely to promote progress. Third, "useful arts," as that phrase is used in the Constitution, does not include mere commerce. Lastly, the historical background of the Intellectual Property Clause …

The Owned Public Domain: The Constitutional Right Not To Be Excluded – Or The Supreme Court Chose The Right Breakfast Cereal In Kellogg V. National Biscuit Co., Malla Pollack

Malla Pollack

Before the rise of law and economics, the Supreme Court decided several cases involving patent holders' attempts to use trademark doctrines to slow down competitors after the expiration of their utility patents; in each of these cases, the Court enforced a public right to use material in the public domain. To give one famous example, Kellogg Co. v. National Biscuit Co., the "shredded wheat case," came to the Court after the expiration of a product and process utility patent on that once-innovative breakfast cereal. The Court held that a competitor could freely copy the product's name and its well known …

Inventors Of The World, Unite! A Call For Collective Action By Employee-Inventors, Ann Bartow

Ann Bartow

While technological innovation is often lauded as the cornerstone of the American economy into the next century, and both governmental and private observers ponder with fascination and some trepidation the ability of U.S. companies to reach and sustain high levels of innovative productivity, very little attention is paid to actual inventors. This article is one effort to draw attention to the importance of employee-inventors, the people who conceive and develop the inventions that American corporations rely on for growth and profitability. Though it is universally accepted that skills gained by an employee in the course of his employment belong to …

Unconstitutional Incontestability?: The Intersection Of The Intellectual Property And Commerce Clauses Of The Constitution: Beyond A Critique Of Shakespeare Co. V. Silstar Corp., Malla Pollack

Malla Pollack

This article makes several assertions: (1) The Intellectual Property Clause of the Constitution, even read with the Commerce Clause, prevents Congress from giving authors or inventors exclusive rights unbounded by premeasured time limitations; (2) Because such limits exist, even incontestable trademarks must be subject to functionality challenges in order to prevent conflict with the Patent Clause; (3) The Intellectual Property Clause requires a similar challenge to prevent conflict with the Copyright Clause; (4) The states are also limited by either direct constitutional mandate or statutory preemption. Based on the first two assertions, this article argues that the Fourth Circuit's decision …

Guarding Your Company's Intellectual Property Rights: Patents, Trademarks, And Copyright Protection, Douglas J. Swanson Ed.D Apr

Douglas J. Swanson, Ed.D APR

No abstract provided.