Law Commons^™

Describing Patents As Real Options, Christopher A. Cotropia

Law Faculty Publications

This Article continues the use of real options in patent law by taking a step back. The Article proceeds in three parts. Part II describes the concept of real options and catalogs the existing economics and law literature discussing patents as real options. The Article then lays a foundation for previous and future discussions by describing in detail how patents are like real options. Specifically, Part III. identifies the particular patent doctrines that make up the common components of a real option-the option price, the exercise price, the expiration date, and the value of the underlying asset. This descriptive analysis …

The Unreasonableness Of The Patent Office's 'Broadest Reasonable Interpretation' Standard, Christopher A. Cotropia

Law Faculty Publications

This article does what is long overdue: it fully explores the validity of the BRI standard. The previously articulated rationales behind the BRI standard are severely lacking. Not only does the BRI standard fail to provide the advantages touted by the courts that created the standard, the standard is contrary to both the patent statutes and the concept of a unitary patent system. It allows examiners to avoid difficult claim interpretation issues; it leads to improper and uncorrectable denials of patent protection; and it is incurably ambiguous. Given that the BRI standard is severely lacking, the courts and the USPTO …

The Case For (Considering) Regulation Of Technology, James Gibson

Law Faculty Publications

Given a choice, which would you prefer: A world in which it is easier to encrypt information than to decrypt it? A world in which decryption is easier than encryption? A world in which the two stand in a cost/benefit equipoise?

When the question is put like that, the answer seems to depend on how we weigh certain core values. For example, if we prefer privacy over order, we might prefer the first world. If we value order more than privacy, perhaps the second world is more to our liking.

As it happens, we live in the first world. Modern …

Modernizing Patent Law's Inequitable Conduct Doctrine, Christopher A. Cotropia

Law Faculty Publications

This Article's main finding is that the inequitable conduct doctrine has the ability to improve patent quality as long as the inherent tendency to overcomply with the doctrine by overloading the USPTO with information is kept in check. The Article reaches this conclusion by proceeding in five parts. Part II describes the current thinking on the inequitable conduct doctrine, with particular focus on the major critiques of the doctrine and proposed legislative and administrative responses. Part III of the Article begins the construction of a fundamental, conceptual framework for the doctrine by explaining how it impacts both patent quality and …

Recent Developments In Patent Law, Kristen Jakobsen Osenga

Law Faculty Publications

In the last year, the landscape of patent law was altered by court opinions from the Supreme Court and U.S. Court of Appeals for the Federal Circuit, as well as in opinions rendered by the Board of Patent Appeals and Interferences (hereafter BP AI) at the United States Patent and Trademark Office. In addition, patent reform legislation was introduced that could have shaken up patent practice even further. Although none of the reform proposals were passed, revised versions of these legislative initiatives have already been introduced in 2009. This brief write-up summarizes many (but by no means all) of the …

Information May Want To Be Free, But Information Products Do Not: Protecting And Facilitating Transactions In Information Products, Kristen Jakobsen Osenga

Law Faculty Publications

Information products-products that are used to organize, provide context, and distribute information-have gone largely unprotected by intellectual property regimes. As a result, producers of information products, such as databases and software, have resorted to alternative mechanisms to protect their investments. These mechanisms have resulted in both over-protection and under-protection of the information products. Further, the uncertainty in the boundaries of coverage, coupled with the resort to self-help mechanisms, may well inhibit, rather than facilitate, information flow. What is needed is a sui generis protection scheme for information products that clearly defines the boundaries and protection requirements for these works and …

The Individual Inventor Motif In The Age Of The Patent Troll, Christopher A, Cotropia

Law Faculty Publications

The individual inventor motif has been part of American patent law since its inception. The question is whether the recent patent troll hunt has damaged the individual inventor's image and, in turn, caused Congress, the United States Patent and Trademark Office (USPTO), and the courts to become less concerned with patent law's impact on the small inventor. This Article explores whether there has been a change in attitude by looking at various sources from legislative, administrative, and judicial actors in the patent system, such as congressional statements and testimony in discussions of the recent proposed patent reform legislation, the USPTO …

Copying In Patent Law, Christopher A. Cotropia

Law Faculty Publications

Patent law is virtually alone in intellectual property (IP) in punishing independent development. To infringe a copyright or trade secret, defendants must copy the protected IP from the plaintiff, directly or indirectly. But patent infringement requires only that the defendant's product falls within the scope of the patent claims. Not only doesn't the defendant need to intend to infringe, but the defendant may be entirely unaware of the patent or the patentee and still face liability. Nonetheless, copying does play a role in some subsidiary patent doctrines, including damages rules, willfulness, and obviousness. More significantly, the rhetoric of patent law …

The Folly Of Early Filing In Patent Law, Christopher A. Cotropia

Law Faculty Publications

This Article questions the conventional wisdom that the patent system should continue to encourage "early filing" of patent applications-filing at the beginning stages of technological development. The current thinking regarding early filing fails to account for the lack of technical and market information available about the invention at the early stages of development. A "file early, file often" mentality is instilled in inventors, exacerbating such systemic patent problems as too many patent applications, too many patents, underdevelopment of patented technology, increased assertion of patent rights, and fuzzy patent boundaries, to name a few. The Article suggests that in response patent …

Using Ip To Suppress Innovation (On Purpose), James Gibson

Law Faculty Publications

In this “IP Viewpoints” post, I hope to combine two Uncontroversial Premises to reach a Counterintuitive Conclusion about the role that intellectual property can play in the regulation of innovation.

First Uncontroversial Premise: IP is a useful tool for creating incentives to innovate, but too much IP protection is counterproductive.

Giving innovators exclusive control over certain uses of their innovations allows them to commercialize their inventiveness and creativity, and thus helps ensure a return of the resources they invest in their craft. But IP protection also brings with it certain costs – and when IP rights reach a certain level …

Two Copyright Lessons From A Pop Music Controversy, James Gibson

Law Faculty Publications

People who study copyright law for a living must frequently endure the disappointment of seeing an interesting case settle out of court. For example, lurking behind the current Google Books controversy is a fascinating fair use argument – but if the proposed settlement manages to survive antitrust and other challenges, no court will ever have a chance to rule on the fair use issue. And scholars like me will be left wondering what might have been (and whether the settlement actually prejudices future fair use arguments).

Sometimes, however, even a settlement teaches us something about the law. The recent lawsuit …

Copyright As Censorship - Part I, James Gibson

Law Faculty Publications

2010 marks the 300th anniversary of the Statute of Anne, the English legislation that ushered in the modern era of copyright law. The Statute of Anne is celebrated for a number of reasons, and perhaps foremost among them is its rejection of copyright as an instrument of censorship.

Before Parliament enacted the Statute, the distribution of books was controlled by the government through royal charters, which granted monopolies over printing and empowered the chartered firms to seize unauthorized books and bring their publishers before the courts. The Statute of Anne put an end to this practice and replaced it with …

Google's New Monopoly? How The Company Could Gain By Paying Millions In Copyright Fees, James Gibson

Law Faculty Publications

Last week, Google settled a controversial copyright case by agreeing to pay tens of millions in licensing fees to authors and publishers, with more to come. At first glance, it looks like this great champion of the free flow of information has caved to copyright interests. But in fact, Google may be better off with a settlement than an outright win. Before the court approves this agreement, then, it must consider the deal's anti-competitive effects. [..]

New Research Uses For Patent And Trademark Data, Roger V. Skalbeck

Law Faculty Publications

In this article, I examine alternative uses for information found in patent and trademark filing databases, suggesting ways to locate a law firm's clients, perform competitive intelligence, and locate or investigate expert witnesses. Finally, I talk about an interesting non-law use of patent data, i.e., historical research.

Accidental Rights, James Gibson

Law Faculty Publications

Written for the Yale Law Journal's online Pocket Part, this is a much shorter and (I hope) more accessible iteration of my earlier paper, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L.J. 882 (2007). It summarizes that paper's central point - i.e., that intellectual property entitlements are growing not just because of expansive court decisions and legislative enactments, but also because of seemingly sensible, risk-averse licensing decisions that inadvertently feed back into legal doctrine - and then explores how this phenomenon might apply to (and be manipulated by) enterprises such as Google Book Search.

Ants, Elephant Guns, And Statutory Subject Matter, Kristen Jakobsen Osenga

Law Faculty Publications

Questions about whether software qualifies for patent protection are becoming increasingly more prevalent, despite the fact the issue seemed settled. The Supreme Court has indicated its interest in the topic and the U.S. Patent and Trademark Office-which had previously been liberally issuing patents in the computer-related arts-now appears to be leading the groundswell against the subject-matter eligibility of these inventions, rejecting an increasing number of applications in this area for lack of statutory subject matter. Despite the broad definitions of patentable subject matter provided by the Constitution, Patent Act, and Supreme Court, the Patent Office has grafted various additional requirements …

Rembrandts In The Research Lab: Why Universities Should Take A Lesson From Big Business To Increase Innovation, Kristen Jakobsen Osenga

Law Faculty Publications

In this Article, I argue that patents, if obtained and exploited strategically, can have a beneficial effect on university research. I will describe the barriers to university participation in the patent arena-that is, lack of money, lack of knowledge, lack of infrastructure, and cultural concerns-and explain, with reference to business, how and why universities need to overcome these barriers. By breaking down these barriers and ably exploiting their intellectual property, I argue that the obstacles to university research will be lessened, resulting in increased research and innovation. I further provide a primer to provide university administrators, technology transfer offices, and …

The Freedom Of Information Act And Trade Secrets, Roger V. Skalbeck

Law Faculty Publications

This article details a case illustration where federal law intersects with trade secret questions, a subject normally governed by state laws.

Nonobviousness And The Federal Circuit: An Empirical Analysis Of Recent Case Law, Christopher A. Cotropia

Law Faculty Publications

This Article provides such an empirical study. The study examines all Federal Circuit cases over a four-year period considering the nonobviousness of a patent claim. Appeals from both patent infringement cases before district courts and pending patent applications and interferences before the United States Patent and Trademark Office (USPTO) are investigated. The study looks at the data in two levels of detail.

Linguistics And Claim Construction, Kristen Jakobsen Osenga

Law Faculty Publications

This Article argues that patent claim construction should instead track the way in which we, as readers of a language, attempt to understand what is being conveyed via the written word. First, there is a base level of conventional understanding from which all interpretation starts, an understanding that either a priori exists based on our earlier encounters with the word or is obtained from a dictionary in cases in which we lack previous knowledge. Second, from this conventional understanding, we construct the actual meaning of the term based on a number of linguistic clues. These clues are both internal and …

Patent Law Viewed Through An Evidentiary Lens: The "Suggestion Test" As A Rule Of Evidence, Christopher A. Cotropia

Law Faculty Publications

The Federal Circuit's recent nonobviousness jurisprudence has been the subject of much criticism. Reports from the Federal Trade Commission and the National Research Council and a pending petition for certiorari to the Supreme Court all conclude that the Federal Circuit has improperly relaxed the nonobviousness standard. Most of this criticism focuses on the Federal Circuit's implementation of part of the nonobviousness inquiry - the suggestion test. The suggestion test queries whether a suggestion to make the invention existed before the invention's creation. The Federal Circuit allegedly requires a suggestion to come solely from prior art references. The court ignores other …

Once And Future Copyright, James Gibson

Law Faculty Publications

Copyright is like a well-meaning but ultimately bothersome friend, eager to help but nearly impossible to get rid of. It attaches indiscriminately to the simplest acts of expression, without regard for whether the author needs or wants its protection. This automatic propertization made sense in the print era, when mass distribution of information was an expensive process rarely undertaken by those with no plans to profit from their creativity. It makes little sense today. The following article shows that copyright's overly solicitous nature is the source of several seemingly unrelated and intractable problems - e.g., closed code, copyright as censorship, …

Google's (Fair) Use Of Copyrighted Work, James Gibson

Law Faculty Publications

Letters to the Editor on Google's (Fair) Use of Copyrighted Work

Entrance Ramps, Tolls, And Express Lanes – Proposals For Decreasing Traffic Congestion In The Patent Office, Kristen Jakobsen Osenga

Law Faculty Publications

This Article proposes implementing a multitier patent system by the creation of two additional "roads" or routes that a patent application may follow. Because many patents are not sought with the intention of pursuing the traditional patent reward of commercialization or profit through access control, that is, the exercise of the limited patent monopoly, there is no reason for every single application to follow the current route. The creation of an auxiliary, or "side road," would decrease crowding on the current patent grant highway while still allowing the nontraditional applications to enter and traverse the patent grant system with different …

Patent Claim Interpretation And Information Costs, Christopher A. Cotropia

Law Faculty Publications

The concept of invention is crucial to patent law. Inventions of patentable quality are what the patent system is trying to encourage. In order to provide this incentive to produce such inventions, the patent system must provide protection for the invention. The problem the patent system runs into is that inventions are dijjicult to define-the dijjiculty stemming in part from the intangible nature of inventions. As a result, patent law encounters an information cost problem. Everyone in the patent system needs information about the invention, but the invention's intangibleness makes this information costly to produce, collect, and comprehend. Patent law …

Patent Claim Interpretation Methodologies And Their Claim Scope Paradigms, Christopher A. Cotropia

Law Faculty Publications

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity. This Article will explore the not-yet-discussed relationship between …

Re-Reifying Data, James Gibson

Law Faculty Publications

There's a war on between those who view digital technology as a reason to expand intellectual property law and those who oppose this expansion. One front in the war is technological: the pro-expansionists enclose their products in restrictive code, which the anti-expansionists circumvent and hack. A second is legislative: the pro-expansionists seek extended copyright duration, favorable changes to contract law, and other new legal entitlements, while the anti-expansionists lobby for the opposite. And a third front is a combination of the first two: it is technological. On this battlefield, the pro-expansionists use the law to fortify their technological protections. But …

Counterclaims, The Well-Pleaded Complaint, And Federal Jurisdiction, Christopher A. Cotropia

Law Faculty Publications

This Article proceeds as follows: Part I of the Article begins by laying the statutory and constitutional foundation of "arising under" jurisdiction. The current connection between "arising under" jurisdiction and federal question jurisdiction is discussed. Part I also fully sets forth the well-pleaded complaint rule, and discusses removal jurisdiction, which is governed by the concept of "arising under" jurisdiction. As necessary background to understanding the Court's reasoning in Holmes and why the case prompts a general discussion on federal jurisdiction implications, Part I concludes by defining a district court's jurisdiction over patent cases, the Federal Circuit's appellate jurisdiction over patent …

Rethinking Reexamination Reform: Is It Time For Corrective Surgery, Or Is It Time To Amputate?, Kristen Jakobsen Osenga

Law Faculty Publications

Reexamination was introduced as a mechanism for curing potentially invalid patents, as an antidote to the public's and the judiciary's lack of confidence in the PTO and the patent system in general. Instead of a curative fix, however, the reexamination provisions are more akin to a diseased or lame leg on the body of U.S. patent law. Reexamination fails to support the burden of public confidence it was intended to carry. It does not act in harmony with other limbs on the body of patent law or with other bodies of U.S. or foreign law. Over the years, Congress has …

How Dewey Classify Oclc's Lawsuit, Roger V. Skalbeck

Law Faculty Publications

In order to understand the nature of the rights asserted here, it is important to properly classify the Dewey Decimal lawsuit. To these ends, this article presents analysis aimed to better define its scope and legal framework. This is not an analysis of the merits of the claims, let alone a prediction as to the outcome. The issues are considered in the following three sections. In closing, I offer a lighthearted suggestion as to how this suit might be resolved outside of litigation or settlement.