Open Access. Powered by Scholars. Published by Universities.®
- Discipline
- Publication
- Publication Type
Articles 1 - 16 of 16
Full-Text Articles in Law
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
A Statutory Anti-Anti-Suit Injunction For U.S. Patent Cases?, Jorge L. Contreras
Utah Law Faculty Scholarship
Litigation relating to fair, reasonable and non-discriminatory (FRAND) licensing of patents essential to industry standards has recently seen a sharp increase in cross-jurisdictional competition fueled by the trend of courts in some jurisdictions (particularly China) to seek to establish FRAND royalty rates applicable around the world, and the increased use of anti-suit injunctions (ASIs) to prevent parties from pursuing parallel litigation in other jurisdictions. The proposed “Defending American Courts Act” (DACA), introduced to the U.S. Senate Judiciary Committee in March 2022, seeks to deter the use of foreign-issued ASIs in U.S. patent litigation. The DACA would effectively create a statutory …
Covid-19 And Its Impact(S) On Innovation, Clark Asay, Stephanie Plamondon Bair
Covid-19 And Its Impact(S) On Innovation, Clark Asay, Stephanie Plamondon Bair
Utah Law Review
In previous work, we explored how certain characteristics of adversity are often more conducive to innovation than others. In this Article, prepared as part of the Lee E. Teitelbaum Utah Law Review Symposium—The Law & Ethics of Medical Research, we review some of that work and apply it specifically to the COVID-19 context. We conclude by assessing certain policy implications in light of how the COVID-19 pandemic has both spurred and hindered innovation.
Covid-19 As An Example Of Why Genomic Sequence Data Should Remain Patent Ineligible, Jorge L. Contreras
Covid-19 As An Example Of Why Genomic Sequence Data Should Remain Patent Ineligible, Jorge L. Contreras
Utah Law Faculty Scholarship
The researchers who determined the genomic sequence of the SARS-CoV-2 virus did not seek to patent it, but instead released it in the publicly-accessible GenBank data repository. Their release of this critical data enabled the scientific community to mobilize rapidly and conduct research on a range of diagnostic, vaccine, and therapeutic applications based on the viral RNA sequence. Had the researchers sought patent protection for their discovery, as earlier research teams had during the SARS, H1N1 and H5N1 outbreaks, global research relating to COVID-19 would have been less efficient and more costly. One of the reasons that patents are no …
Expanding Access To Patents For Covid-19, Jorge L. Contreras
Expanding Access To Patents For Covid-19, Jorge L. Contreras
Utah Law Faculty Scholarship
Two competing and linked sets of goals must be addressed when considering patent policy in response to a public health emergency. First is the allocation of existing resources among potential users (hospitals, patients, etc.); second is the creation of new technologies over time (innovation). Patents provide financial incentives to develop new technologies. Yet shortages of patented products often plague crisis response. In the case of COVID-19, allocative goals, particularly satisfying demand for patented medical products (e.g., vaccines, ventilators, PPE, and test kits), may be achieved through governmental interventions such as march-in and governmental use rights (compulsory licensing). But in cases …
Chapter 20 – Technical Standards: Fair, Reasonable And Non-Discriminatory (Frand) Licensing, Jorge L. Contreras
Chapter 20 – Technical Standards: Fair, Reasonable And Non-Discriminatory (Frand) Licensing, Jorge L. Contreras
Utah Law Faculty Scholarship
This chapter in the forthcoming case book "Intellectual Property Licensing and Transactions" covers licensing transactions involving standards-essential patents (SEPs), including recent legal developments regarding the disclosure (and concealment) of SEPs, fair, reasonable and nondiscriminatory (FRAND) royalty rates, non-discriminatory licensing, the availability of injunctive relief for FRAND-encumbered patents, and transfers of FRAND commitments, as well as specific SDO policy clauses and license text addressing each of these issues.
Is The Supreme Court’S Patentable Subject Matter Test Overly Ambiguous? An Empirical Test, Jason D. Reinecke
Is The Supreme Court’S Patentable Subject Matter Test Overly Ambiguous? An Empirical Test, Jason D. Reinecke
Utah Law Review
This Article shows that the new two-step patent-eligibility test is not as unadministrable as at least its most ardent critics have suggested. More research is necessary to ascertain how much better the attorneys would have predicted court outcomes had they spent more time on their predictions and had access to more information.
Intellectual Property Policies For Solar Engineering, Jesse L. Reynolds, Jorge L. Contreras, Joshua D. Sarnoff
Intellectual Property Policies For Solar Engineering, Jesse L. Reynolds, Jorge L. Contreras, Joshua D. Sarnoff
Utah Law Faculty Scholarship
Governance of solar geoengineering is important and challenging, with particular concern arising from commercial actors’ involvement. Policies relating to intellectual property, including patents and trade secrets, and to data access will shape private actors’ behavior and regulate access to data and technologies. There has been little careful consideration of the possible roles of and interrelationships among commercial actors, intellectual property, and intellectual property policy. Despite the current low level of commercial activity and intellectual property rights in this domain, we expect both to grow as research and development continue. Given the public good nature of solar geoengineering, the relationship between …
Assessing The Effectiveness Of The Eco-Patent Commons: A Post-Mortem Analysis, Jorge L. Contreras, Bronwyn H. Hall, Christian Helmers
Assessing The Effectiveness Of The Eco-Patent Commons: A Post-Mortem Analysis, Jorge L. Contreras, Bronwyn H. Hall, Christian Helmers
Utah Law Faculty Scholarship
The authors revisit the effect of the “Eco-Patent Commons” (EcoPC) on the diffusion of patented environmentally friendly technologies following its discontinuation in 2016. Established in January 2008 by several large multinational companies, the not-for-profit initiative provided royalty-free access to 248 patents covering 94 “green” inventions. In previous work, Bronwyn Hall and Christian Helmers (2013) suggested that the patents pledged to the commons had the potential to encourage the diffusion of valuable environmentally friendly technologies. The updated results in this paper now show that the commons did not increase the diffusion of pledged inventions, and that the EcoPC suffered from a …
Reform Or Ruin? Proposals To Amend Section 101, Jorge L. Contreras
Reform Or Ruin? Proposals To Amend Section 101, Jorge L. Contreras
Utah Law Faculty Scholarship
No abstract provided.
Essentiality And Standards-Essential Patents, Jorge L. Contreras
Essentiality And Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
As creatures of policy language, different SDO definitions of essentiality must be given interpretive deference. Nevertheless, as scholarship and case law in this area expands, a number of common themes emerge in the interpretation of essentiality requirements. One such theme is the economic equation of essentiality with non-substitutability that has arisen in the context of patent pools. Another is the blurred divide between commercial and technical essentiality. A third is the practical necessity of assessing essentiality when hundreds of potentially essential patent claims are at issue. These issues, coupled with the recognized phenomenon of over-declaration, suggests that more efficient, rapid …
The Conflation Of Patent Eligibility And Obviousness: Alice's Substitution Of Section 103, Paxton M. Lewis
The Conflation Of Patent Eligibility And Obviousness: Alice's Substitution Of Section 103, Paxton M. Lewis
Utah OnLaw: The Utah Law Review Online Supplement
Since the birth of the abstract ideas concept, the judiciary has struggled to define abstract idea and analyze what is patentable under this exception to Section 101. The Supreme Court’s decision in Alice has not clarified the complexities that have arisen from the abstract ideas category. Instead, it falls in line with the warnings of the dissent in Flook, where Justice Stewart advises against the majority’s use of “inventive application” because it conflates the Section 101 and Section 103 inquiries. In order to avoid such conflation, the Alice framework cannot be adopted. Step one of the framework should be …
National Disparities And Standards-Essential Patents: Considerations For India, Jorge L. Contreras
National Disparities And Standards-Essential Patents: Considerations For India, Jorge L. Contreras
Utah Law Faculty Scholarship
Patents on standardized technologies are being issued with increasing frequency, and the majority of these patents are held by large multinational firms based in developed economies. As a result, firms from less-developed economies with sparse patent holdings are disadvantaged in both domestic and foreign markets. While protectionist governmental policies can address these disparities, such measures are potentially contrary to international treaty obligations and generally unsuccessful in the long term. An alternative approach involves greater participation in international SSOs by firms from less-developed economies. This increased participation is likely to benefit such firms both in terms of technology development, strengthening of …
Alice Was No Rabbit Hole: Why Software Inventors Should Be Neither Surprised, Nor Alarmed, Sherman Helenese
Alice Was No Rabbit Hole: Why Software Inventors Should Be Neither Surprised, Nor Alarmed, Sherman Helenese
Utah Law Review
Trade secrets offer an alternative to patent - ineligible innovations and to the problems and perils of protecting, defending and enforcing patents. Although there is currently limited trade secret legislation on the national level, nearly all states have adopted, with little substantive variation, the Uniform Trade Secrets Act. Unlike patent - eligibility requirements that precluded software in Gottschalk, Diehr, Alice, and Tenon from patent protection, no trade secret is automatically deemed out of scope. Trade secrets encompass anything of value, so long as it is not generally known and reasonable steps are taken, such as the use …
The Interconnections Between Entrepreneurship, Science, And The Patent System, Amy Landers
The Interconnections Between Entrepreneurship, Science, And The Patent System, Amy Landers
Utah Law Review
This Article considers several related points about the recent changes to the patent system and the opportunities for entrepreneurship. The concern about the adverse effect of the recent changes to patent law on innovation may be overstated. As a practicalmatter, the concept that patents are a necessary input to innovation is built on a model that does not account for the complex relationship between this legal system, science, and innovation. Although it can be expected that there may be some adverse impacts from these decisions, this trend opens up the opportunity for entrepreneurship. By releasing more foundational information into the …
Plugging The Rabbit Hole: The Supreme Court's Decision In Alice, Steven Swan
Plugging The Rabbit Hole: The Supreme Court's Decision In Alice, Steven Swan
Utah Law Review
The two-step analysis in Mayo is insufficient to objectively analyze and make consistent determinations on patent eligibility. The effects of Alice are prime exhibits of this conclusion. Uncertainty and confusion in the realm of patents and software technology have risen to such a level that there is a telling impact on the economy and perhaps far greater devastation to the economy on the horizon. At the same time, the patent prosecution process has become increasingly expensive and difficult for both the client and drafting attorney provided the sheer number of Section rejections that are challenging to overcome. Consequently, this Note …
A Market Reliance Theory For Frand Commitments And Other Patent Pledges, Jorge L. Contreras
A Market Reliance Theory For Frand Commitments And Other Patent Pledges, Jorge L. Contreras
Utah Law Review
Patent holders are, with increasing frequency, making public promises to refrain from asserting patents under certain conditions, or to license patents on terms that are “fair, reasonable and nondiscriminatory” (FRAND). These promises or “patent pledges” generally precede formal license agreements and other contracts, but are nevertheless intended to induce the market to make expenditures and adopt common technology platforms without the fear of patent infringement. But despite their increasing prevalence, current contract, property, and antitrust law theories used to explain and enforce patent pledges have fallen short. Thus, a new theory is needed to secure the market-wide benefits that patent …