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 …

Intellectual Property And The Myth Of Nonrivalry, James Y. Stern

Notre Dame Law Review

The concept of rivalry is central to modern accounts of property. When one per-son’s use of a resource is incompatible with another’s, a system of rights to determine its use may be necessary. It is commonly asserted, however, that informational goods like inventions and expressive works are nonrivalrous and that intellectual property rights must therefore be subject to special limitation, if they should even exist at all. This Article examines the idea of rivalry more closely and makes a series of claims about the analysis of rivalrousness for purposes of such arguments. Within that frame-work, it argues that rivalry should …

Fashion Has No Function: Diminishing The Functionality Bar To Trademark Protection In The Fashion Industry, Seth Diasio

Mississippi College Law Review

The primary source of trademark law in the United States, The Lanham Act, outlines the requirements for trademark registration and protection. Marks which are distinctive, or that have acquired secondary meaning, can be registered on the Principal Register of the United States Patents and Trademarks Office (USPTO). Registered marks receive strong federal protection; however, those protections are unavailable to marks that are barred by the Act, but would otherwise meet the qualifications of registration. One of the strongest bars to registration is the functionality bar, which prevents registration of a functional mark regardless of whether it has a secondary meaning. …

Do Patents Drive Investment In Software?, James Hicks

Northwestern University Law Review

In the wake of a quartet of Supreme Court decisions which disrupted decades of settled law, the doctrine of patentable subject matter is in turmoil. Scholars, commentators, and jurists continue to disagree sharply over which kinds of invention should be patentable. In this debate, no technology has been more controversial than software. Advocates of software patents contend that denying protection would stymie innovation in a vital industry; skeptics argue that patents are a poor fit for software, and that the social costs of patents outweigh any plausible benefits. At the core of this disagreement is a basic problem: the debate …

Anti-Patents, Roy Baharad, Stuart Minor Benjamin, Ehud Gutte

Faculty Scholarship

Conventional wisdom has long perceived the patent and tort systems as separate legal entities, each tasked with a starkly different mission. Patent law rewards novel ideas; tort law deters harmful conduct. Against this backdrop, this Essay uncovers the opposing effects of patent and tort law on innovation, introducing the "injurer-innovator problem." Patent law incentivizes injurers --often uniquely positioned to make technological breakthroughs--by allowing them to profit from licensing their inventions to competitors. Yet tort law, by imposing liability for failures to invest in care, forces injurers to incur the cost of implementing their own innovations. When the cost of self-implementation …

Patent Term Tailoring, Sarah Rajec

Indiana Law Journal

Patent rights are designed to encourage innovation with both the promise of a patent and with its expiration. Currently, patent term lasts from issuance until twenty years from the application date, with minor exceptions. The patent term is limited so that rewards for past invention do not overly hinder future progress. Although the goal is laudable, a uniform patent term is a blunt instrument to achieve such a nuanced balance. Historically, the patent system was not averse to tailoring terms through, for example, individually granted extensions to undercompensated inventors or term curtailment when a foreign patent holder failed to “work” …

Innovator Ecosystem Diversity As A Global Competitiveness Imperative, Margo A. Bagley

Marquette Intellectual Property & Innovation Law Review

None

The Effects Of Section 101'S Subject Matter Eligibility Requirement On Fintech Patent Valuation Models, Fhernam Batiz

Marquette Intellectual Property & Innovation Law Review

None

Just For Show: Eliminating Judicial Exceptions To Section 101 Would Render Limits On Patent-Eligible Subject Matter Meaningless, Katie Crocker

Cybaris®

No abstract provided.

The Ungraceful Grace Period: Defining 35 U.S.C. § 102(B)'S Grace Period Exceptions Post-Helsinn, Adam Burstain

Cybaris®

No abstract provided.

A Critical Librarianship Approach For Teaching Patent Searching: Who Becomes An Inventor In America?, Dave Zwicky, Ilana Stonebraker

Libraries Faculty and Staff Scholarship and Research

The ways in which a technology is invented, owned, and approved are strongly influenced by the same oppressive and exclusionary structures that critical librarianship interrogates. Patents, limited-term grants of rights to inventions, are issued to inventors in exchange for detailed specifications of the invention. This paper examines current practices used by business librarians in teaching students how to find patents and how these practices could be critically informed given the nature of the United States patent system as it exists today. An output of this work is a suggested lesson plan with recommended resources.

What's Not Natural Phenomena? Let's Consider A Three-Step Innovative Concept Test For Composition Of Matter Claims, Sydney Hancock

IP Theory

Biotechnology innovation is rapidly growing, especially in the realm of biotech. This growth leads to questions about patent subject matter eligibility of natural phenomena. For example, currently the human genome and microbiome are being extensively studied, bacteriophages are being edited, animals are being cloned, and CRISPR is widespread. Additionally, composition of matter patent claims give the most protection to patent holders. Therefore, knowing when a natural phenomenon veers into human innovation is important for courts, lawyers, and innovators in the era of biotechnology and genetic engineering.

Part I discusses the history of Supreme Court cases on natural phenomena subject matter …

A Closer Look At The "Eye" Test: The British Influence On Early American Design Patent Infringement Law, Mark D. Janis

IP Theory

The Supreme Court has asserted that “[t]he Patent Clause in our Constitution ‘was written against the backdrop’ of the English system.” That notion has a long lineage. In 1818, the author of an anonymous “Note on the Patent Laws,” widely assumed to be Justice Story, claimed that “[t]he patent acts of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject.”

But these generalizations significantly overstate—and oversimplify—the influence of British law on the nascent American jurisprudence of patents. Early American jurists felt no reluctance …

“That Means Nothing To Me As A Normal Person Who Doesn't Know About Patents”: Usability Testing Of Google Patents And Patent Public Search With Undergraduate Engineering Students, Graham Sherriff, Molly Rogers

Journal of the Patent and Trademark Resource Center Association

Patent searching is an important research tool for undergraduate engineering students, yet it requires special topic knowledge to conduct successfully. Patent database websites have the ability to alleviate or add to the complexity of patent searching, depending on their usability. Prompted by the launch of the US Patent and Trademark Office’s Patent Public Search (PPS) website in early 2022, the authors investigated the usability of PPS and Google Patents. The study's objective was to gain insights into the ways in which the websites of commonly-used patent databases support undergraduate students’ patent searching activities. The study examined students’ performance of typical …

A Case Study Of The Complicated History Of Rice University’S First Patents, Hannah G. Edlund

Journal of the Patent and Trademark Resource Center Association

Digitization and online public databases have made patent searches a much simpler pursuit in recent years. However, uncovering a pre-digital era patent’s history and context remains challenging. A search for the first patents assigned to Rice University highlighted associated issues. Older patent formats often do not clearly indicate inventor-assignee relationships, and applications and official communications are not available online. To determine how Rice came to own three 1948 patents, extensive archival research was required. Were these patents assigned to the University by inventors, independent of its support or funding, or was their work performed at and for Rice, thus obliging …

Cryptic Patent Reform Through The Inflation Reduction Act, Arti K. Rai, Rachel Sachs, Nicholson Price

Law & Economics Working Papers

If a statute substantially changes the way patents work in an industry where patents are central, but says almost nothing about patents, is it patent reform? We argue the answer is yes — and it’s not a hypothetical question. The Inflation Reduction Act (IRA) does not address patents, but its drug pricing provisions are likely to prompt major changes in how patents work in the pharmaceutical industry. For many years scholars have decried industry’s ever-evolving strategies that use combinations of patents to block competition for as long as possible, widely known as “evergreening,” but legislators have not been receptive to …

Pooling Patents For Pandemic Progress: Mrna Vaccines And The Broader Context Of Modernatx Inc V. Pfizer Inc., Francis Brefo

DePaul Journal of Art, Technology & Intellectual Property Law

No abstract provided.

Of Inventorship And Patent Ownership: Examining The Intersection Between Artificial Intelligence And Patent Law, Cheng Lim Saw, Zheng Wen Samuel Chan

Research Collection Yong Pung How School Of Law

Artificial intelligence (“AI”) has garnered much attention in recent years, with capabilities spanning the operation of self-driving cars to the emulation of the great artistic masters of old. The field has now been ostensibly enlarged in light of the professed abilities of AI machines to autonomously generate patentable inventions. This article examines the present state of AI technology and the suitability of existing patent law frameworks in accommodating it. Looking ahead, the authors also offer two recommendations in a bid to anticipate and resolve the challenges that future developments in AI technology might pose to patent law. In particular, the …

A New Approach To Patent Reform, Janet Freilich, Michael J. Meurer, Mark Schankerman, Florian Schuett

Faculty Scholarship

Scholars and policy makers have tried for years to solve the tenacious and harmful crisis of low quality, erroneously granted patents. Far from resolving the problem, these determined efforts have resulted in hundreds of conflicting policy proposals, failed Congressional bills, and no way to evaluate the policies’ value or impact or to decide between the overwhelming multiplicity of policies.

This Article provides not only new solutions, but a new approach for designing and assessing policies both in patent law and legal systems more generally. We introduce a formal economic model of the patent system that differs from existing scholarship because …

A Patent And A Prize, Keith N. Hylton

Faculty Scholarship

This paper examines a simple and old question: should innovators receive a patent or a prize? The answer I provide is equally simple: they should receive both. The literature on patents versus prizes has proceeded mostly under the assumption that there should be a choice between a regime of patents and a regime of prizes in which patents fall into the public domain upon award of the prize. There are significant “public choice costs” under the prize plans. By this I mean there are risks of inappropriate transfers to patentees – that is, looting – and of confiscation of patentees, …

Antitrust Interoperability Remedies, Herbert J. Hovenkamp

All Faculty Scholarship

Compelled interoperability can be a useful remedy for dominant firms, including large digital platforms, who violate the antitrust laws. They can address competition concerns without interfering unnecessarily with the structures that make digital platforms attractive and that have contributed so much to economic growth.

Given the wide variety of structures and business models for big tech, “interoperability” must be defined broadly. It can realistically include everything from “dynamic” interoperability that requires real time sharing of data and operations, to “static” interoperability which requires portability but not necessarily real time interactions. Also included are the compelled sharing of intellectual property or …

The Case Of The Missing Device Patents, Or: Why Device Patents Matter, Erika Lietzan, Kristina M. L. Acri, Evan Weidner

Faculty Publications

A company that earns premarket approval of its medical device is entitled to an extension of one patent claiming the device, to make up for some of the time it spent doing premarket research. Yet, surprisingly, a mere thirteen percent of those eligible for this extension (also known as patent term "restoration") ask for one. In contrast, most drug companies entitled to this same patent extension ask for one.

In this Article, we attribute the imbalance largely to differences between the two regulatory frameworks. In brief, because the FDA classifies and regulates devices based on what they do and how …

Psychedelic Drugs & The Prior Art Problem, Anneli E. Kawaoka

Indiana Law Journal

For the first time since the War on Drugs began in the 1970s, researchers have returned to the promise of psychedelic drugs for treating the growing mental health crisis in the United States. As research into psychedelic drugs as a conventional treatment method for mental health conditions grows, so does the number of filings at the U.S. Patent & Trademark Office for psychedelic-related patents. But the decades-long lapse in the development of psychedelic drugs creates the risk that low-quality psychedelic patents will issue, giving limited monopolies to companies that have not truly innovated in the psychedelic space. In this Note, …

100 Years Of International Ip - Reflections On Past, Present And Future, Frederick M. Abbott

Scholarly Publications

We have been asked to reflect on the past 100 years of international intellectual property law and to try to project forward about what changes might be necessary or desirable in the future. Only a science fiction writer would purport to have some idea about what things might look like a hundred years in the future, including from the standpoint of international intellectual property, so my remarks on that will be somewhat more proximate to the present.

Intellectual Property And Accessibility For Individuals With Disabilities, Eman A. Daas

Marquette Intellectual Property & Innovation Law Review

None.

Innovation Funding And The Valley Of Death, Lital Helman

SMU Law Review

Innovation is a public good. As with other public goods, it is expected to be underproduced if only private incentives are present. Therefore, the law strives to encourage innovation via an array of stimulus mechanisms. The law offers three main mechanisms: intellectual property (IP), cash transfers—mainly prizes and grants—and tax incentives. Vast literature analyzes and compares these innovation stimuli in search of the optimal mix to boost innovation. Yet a key problem is largely overlooked: together, the existing stimuli do not cover the lion’s share of the innovation lifecycle. At the beginning of the innovation process, companies can win grants …

Solutions Still Searching For A Problem: A Call For Relevant Data To Support "Evergreening" Allegations, Erika Lietzan, Kristina M. L. Acri

Faculty Publications

For years pharmaceutical policymaking discussions have been revolving around allegations of supposed “evergreening” by pharmaceutical companies, and policymakers have considered a range of significant policy reforms — including to antitrust law and drug regulatory law — to address this purported problem. This paper evaluates empirical data offered to substantiate “evergreening” and explains that these data — though mostly accurate — do not support proposed policy changes.

The “evergreening” claim is that by securing additional patents and FDA-related exclusivities after approval of their new drugs, brand drug companies enjoy a period of exclusivity in the market that is longer than the …

Artificial Intelligence Owning Patents: A Worldwide Court Debate, Maria A. Penkwitz

Marquette Intellectual Property & Innovation Law Review

None.

Return To A One-Year Robust Grace Period In United States Patent Law, Mark Kallevig

Cybaris®

No abstract provided.