Law Commons^™

Maturing Patent Theory From Industrial Policy To Intellectual Property, Oskar Liivak

Oskar Liivak

We have always known that technological progress is important and this country has always aimed to promote it. A large part of that responsibility has fallen on the shoulders of the patent system. Embarrassingly, despite over two hundred years of experience, we still do not actually know if the patent system helps or hinders technological progress. This Essay argues that the problem is not the patent system but rather patent theory. Patent theory suffers from three linked problems: exceptionalness, indeterminacy, and animosity. First, patent law is seen as a necessarily unique exception to the overall market economy. By artificially making …

Establishing An Island Of Patent Sanity, Oskar Liivak

Oskar Liivak

There is a growing, inescapable sense that something has gone terribly wrong with the patent system. The patent system is described as a failure, broken, and dysfunctional. Yet, despite the fact that much of today’s headline-grabbing patent activity appears facially unproductive, we really can’t be sure that the system has failed in its mission. Current patent theory is so indeterminate that it is hard to decisively criticize these activities. In fact, the current narrative cannot conclusively show that patent trolls or any other patent-related activities are or are not economically justified. Though depressing and perhaps embarrassing, this patent indeterminacy is …

Patents, Genetically Modified Foods, And Ip Overreaching, Elizabeth A. Rowe

Elizabeth A Rowe

Genetically engineered plants and animals have become and will continue to constitute a large part of the food we consume. The United States is the world's largest producer of genetically modified foods, making American consumers the most exposed population to these products. Agricultural biotechnology patents spur and support innovation. Accordingly, patent law is one of the main contributors to this phenomenon that has changed not only the kinds of food we eat, but the nature of the agri-business industry that produces these foods. This Article takes on an area of concern involving the patenting of food that has remained unexplored: …

Trolls Or Great Inventors: Case Studies Of Patent Assertion Entities, Ryan Holte

Prof. Ryan T. Holte

There has been much debate about the economic harms caused by patent infringement lawsuits filed by patent holders who do not make or sell products covered by their own patents—entities pejoratively referred to as “patent trolls.” This debate has thus far been largely theoretical or based on broad industry-wide data. The purpose of this article is to present a focused empirical report that has previously been lacking—detailed information regarding the inventors themselves, the patent assertion entities (PAEs) that represent them, and the stories behind their patents. The research for this article centers on two instructive case studies: (1) MercExchange, L.L.C., …

The Rule Of Reason And The Scope Of The Patent, Herbert Hovenkamp

Herbert Hovenkamp

For a century and a half the Supreme Court has described perceived patent abuses as conduct that reaches "beyond the scope of the patent." That phrase, which evokes an image of boundary lines in real property, has been applied to both government and private activity and has many different meanings. It has been used offensively to conclude that certain patent uses are unlawful because they extend beyond the scope of the patent. It is also used defensively, however, to characterize activities as lawful if they do not extend beyond the patent's scope. In the first half of the twentieth century …

One Hundred Nos: An Empirical Analysis Of The First 100 Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews, Jonathan R. K. Stroud, Jarrad Wood

Jonathan R. K. Stroud

Tasked in 2011 with creating three powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeals Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. Parties on …

Patents, Antitrust, And The Rule Of Reason, Herbert Hovenkamp

Herbert Hovenkamp

Antitrust law has historically immunized many patent agreements if they fell within the "scope of the patent." Three dissenting Justices in the Actavis case advocated this test: a pharmaceutical pay-for-delay settlement falls within the scope of the patent if it delays a competitor's entry no longer than the remaining life of the patent. In that case the patentee will not be obtaining any more than it would from a valid patent -- namely, the right to exclude infringers for the full patent term.

The "scope of the patent" test is not useful for defining the boundaries of antitrust immunity in …

The Trespass Fallacy In The "Software Patent" Debate, Ryan Holte

Prof. Ryan T. Holte

In The Trespass Fallacy in Patent Law, Professor Adam Mossoff details how patent law jurisprudence and scholarship is dominated by an indeterminacy critique or “trespass fallacy” in two respects. Professor Mossoff’s essay, however, only briefly mentions the now paramount contemporary issue surrounding the more-focused “software patent” debate. In this short essay, I briefly discuss Professor Mossoff’s trespass fallacy analysis as it relates to “software patents” and the Supreme Court’s October 2013 Term case Alice Corp. Pty. Ltd. v. CLS Bank Int’l.

Mark Mckenna Was Quoted In The Wall Street Journal Article Apple's Win In Court Won't Hurt Samsung Or Android On May 4, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the Wall Street Journal article Apple's Win in Court Won't Hurt Samsung or Android on May 4

Mark Mckenna Was Quoted In The Cnn/Fortune Article Pple-Samsung Jury Splits The Baby: The Experts Weigh In On May 3, Mark Mckenna

Mark P. McKenna

Professor Mark McKenna was quoted in several news sources, including the Wall Street Journal, CNN, and USA Today, on the Apple-Samsung patent verdict: Apple-Samsung jury splits the baby: The experts weigh in CNN/Fortune-by Philip Elmer-DeWitt-42 minutes ago

Mark Mckenna Was Quoted In The Usa Today Article Apple-Samsung Legal Outcome Won't Likely End Feud On May 5, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the USA Today article Apple-Samsung legal outcome won't likely end feud on May 5. For its part, Apple "clearly thought it would get more out of its patents," says University of Notre Dame law professor Mark McKenna, who specializes in intellectual property, trademark, patent and copyright law. And Samsung "fared much better than they might have, if you think what they potentially were on the hook for," he says. "But it's hard to call anyone a winner who has to spend the kind of money they spent litigating a case and then get ordered to …

Mark Mckenna Was Quoted In The Cnbc Article Why Apple’S The Underdog In This Samsung Trial On April 10., Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the CNBC article Why Apple’s the underdog in this Samsung trial on April 10. "It's hard to know until you see all the relevant pieces, but an initial read of the patents suggests to me that some of them are written at a very broad level," said Mark McKenna, a law professor at Notre Dame. "It would surprise me if they were upheld at that level of generality." Apple is making some broad claims about what it owns and will have to make a strong case to prove it actually deserves as much as it …

Mark Mckenna Was Quoted In The Cnbc Article Why Apple’S The Underdog In This Samsung Trial On April 10, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the CNBC article Why Apple’s the underdog in this Samsung trial on April 10.

Mark Mckenna Was Quoted Ap Story Jury Selection Begins In Apple-Samsung Case On March 31, Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted AP story Jury selection begins in Apple-Samsung case on March 31 “There’s a widespread suspicion that lots of the kinds of software patents at issue are written in ways that cover more ground than what Apple or any other tech firm actually invented,” Notre Dame law professor Mark McKenna said. “Overly broad patents allow companies to block competition.”

Mark Mckenna Was Quoted • Ap In Many Articles About Software Patents Issues In The Apple-Samsung Court Case. On March 30., Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted by AP in many articles about software patents issues in the Apple-Samsung court case. on March 30. "There's a widespread suspicion that lots of the kinds of software patents at issue are written in ways that cover more ground than what Apple or any other tech firm actually invented," Notre Dame law professor Mark McKenna said. "Overly broad patents allow companies to block competition."

Mark Mckenna Was Quoted In The New York Times Article Apple’S War On Samsung Has Google In Crossfire On March 30., Mark Mckenna

Mark P. McKenna

Mark McKenna was quoted in the New York Times article Apple’s War on Samsung Has Google in Crossfire on March 30. “Google’s been lurking in the background of all these cases because of the Android system,” said Mark P. McKenna, a professor who teaches intellectual property law at Notre Dame. “Several people have described the initial battle between Samsung and Apple as really one between Apple and Google.”

Patent Trolling--Why Bio & Pharmaceuticals Are At Risk, Robin C. Feldman, W. Nicholson Price Ii

Robin C Feldman

Compulsory Licensing Of Patents In Australia: Reforming The Landscape Or Fencing Us In?, Tyrone Berger

Dr Tyrone Berger

The Productivity Commission (‘the Commission’) released its final report to Government into the compulsory licensing provisions of the Patents Act 1990 (Cth) (‘the Act’) on 28 March 2013. Its stated focus, however, is on the operation of compulsory licensing in Australia more broadly, therefore, it considered related parts of the Act, for example, the Crown use provisions and specific technology areas involving Standard Essential Patents (SEPs), which have not undergone the same level of scrutiny in the past. One of the motivations for the inquiry was to assess whether the compulsory licensing provisions can be invoked efficiently and effectively, given …