Law Commons^™

Invalidated Patents And Associated Patent Examiners, Shine Tu

Law Faculty Scholarship

This study attempts to determine whether there are common

characteristics between examiners who issue invalidated patents. This

study uses two new patent databases that code for nearly 1.7 million

patents and approximately one thousand patents that were litigated to

a 'final" judgment between 2010 and 2011. This study finds that

approximately one-third of patents that are litigated to final judgment

are found invalid. Most invalidated patents are found in technology

centers 1600, 2600, and 2700, which correspond to biotechnology and

organic chemistry, communications, and computer science, respectively.

Most patents are invalidated on prior art-type novelty and obviousness

grounds. This study …

Sharing Research Data And Intellectual Property Law: A Primer, Michael Carroll

Articles in Law Reviews & Other Academic Journals

Sharing research data by depositing it in connection with a published article or otherwise making data publicly available sometimes raises intellectual property questions in the minds of depositing researchers, their employers, their funders, and other researchers who seek to reuse research data. In this context or in the drafting of data management plans, common questions are (1) what are the legal rights in data; (2) who has these rights; and (3) how does one with these rights use them to share data in a way that permits or encourages productive downstream uses? Leaving to the side privacy and national security …

Sharing Research Data And Intellectual Property Law: A Primer, Michael W. Carroll

Joint PIJIP/TLS Research Paper Series

Sharing research data by depositing it in connection with a published article or otherwise making data publicly available sometimes raises intellectual property questions in the minds of depositing researchers, their employers, their funders, and other researchers who seek to reuse research data. In this context or in the drafting of data management plans, common questions are (1) what are the legal rights in data; (2) who has these rights; and (3) how does one with these rights use them to share data in a way that permits or encourages productive downstream uses? Leaving to the side privacy and national security …

Teaching Would-Be Ip Lawyers To "Speak Engineer": An Interdisciplinary Module To Teach New Intellectual Property Attorneys To Work Across Disciplines, Cynthia Laury Dahl

All Faculty Scholarship

More than ever before, law school graduates interested in business law enter a workforce where they must effectively interface with professionals from other disciplines. Yet there are precious few opportunities in law school for students to practice the skills required to perform on an interdisciplinary team. This is especially true regarding mixed teams of law and technical students.

This essay explores a model for integrating an interdisciplinary practicum module into a free-standing class. The module challenges teams of law and engineering students to work together to perform a prior art search, interview an inventor, and draft patent claims over a …

Integration Of Information Literacy Skills To Mechanical Engineering Capstone Projects, Farshid Zabihian, Mary L. Strife, Marian G. Armour-Gemmen

Faculty & Staff Scholarship

Searching for information and using that information appropriately is an essential part of every engineering design project. It has been reported that design engineers spend about 30% of their time searching for information. Experience shows that even senior level students have not received proper training, either directly or indirectly, in information literacy (IL). They usually search for information intuitively. For mechanical and aerospace engineering students at West Virginia University Institute of Technology (WVU Tech), the Mechanical Engineering System Design I and II courses (MAE 480 and 481) are probably the last chance to teach students about IL. In this project, …

The X Patents: Patents Issued Under The Patent Acts Of 1790 & 1793, Robert Berry

Librarian Publications

The earliest United States patents— sometimes called “name and date patents” because they were not numbered—are distinctive in many respects. Patent specifications were not required to include claims until the Patent Act of 1870. Moreover, while the 1790 Act required a substantive examination by a Patent Board, that requirement ended with the 1793 Act, when it was deemed too burdensome. Thereafter the evaluation of the sufficiency of patent specifications was left to the courts.

The History And Future Of E-Commerce Patents, Dennis D. Crouch, Mitchell L. Terry

Faculty Publications

The past two decades have seen a great rise in the patenting of e-commerce inventions. Now, those same patents are taking an equally great fall. In a series of four recent cases, the U.S. Supreme Court has shifted the doctrine of patent eligibility and, in the process, raised the bar for e-commerce and software patents - making it more difficult to obtain and enforce those types of patents.

Stem Cell Patents After The America Invents Act, Jacob S. Sherkow, Christopher Scott

Articles & Chapters

Under the newly passed Leahy-Smith America Invents Act (AIA), the U.S. Patent and Trademark Office may hear new challenges to stem cell patents. Here, we explore how the new law affects challenges to stem cell patents, focusing on two recent cases, and discuss the future of stem cell patent disputes.

The History Of Patenting Genetic Material, Jacob S. Sherkow, Henry T. Greely

Articles & Chapters

The US Supreme Court’s recent decision in Association for Molecular Pathology v. Myriad Genetics, Inc. declared, for the first time, that isolated human genes cannot be patented. Many have wondered how genes were ever the subjects of patents. The answer lies in a nuanced understanding of both legal and scientific history. Since the early twentieth century, “products of nature” were not eligible to be patented unless they were “isolated and purified” from their surrounding environment. As molecular biology advanced, and the capability to isolate genes both physically and by sequence came to fruition, researchers (and patent offices) began to apply …

Protecting The Boundaries: Unclaimed Consideration In The Patentee's Social Contract, Samuel F. Ernst

Publications

This Article argues that the primary value society receives in the patentee social contract is not new inventions, but "unclaimed consideration." Unclaimed consideration takes many forms: additional innovations to improve on the patented invention, additional innovations created through efforts to design around the patented invention, innovations created by losers in the patent race, innovations informed by the unclaimed technical information in patents, commercialization of the patented invention or these other innovations, and the signals that patents give to investors regarding the value of a company or research lab. While there are many schools of patent scholarship engaged in spirited debate …

Ip Basics: Managing Intellectual Property, Thomas G. Field Jr.

Law Faculty Scholarship

This provides an overview of the IP management process, including the key decisions to be made in the effort to make the most of intellectual property.

Ip Basics: Advice On Ip Careers For Those With Technical Backgrounds, Thomas G. Field Jr.

Law Faculty Scholarship

[Excerpt] Full-time law school takes three years and culminates in the Juris Doctor. A J.D. from a school accredited by the American Bar Association qualifies a person to take the bar exam in any state. As mentioned above, college graduates need not pursue any particular line of study to be accepted into law school. At the University of New Hampshire School of Law, for example, over a third of our students have degrees in engineering or science, and many have had extensive experience or advanced degrees, including M.D.s and Ph.Ds. -- the last being particularly helpful for biotechnology patent careers.

Ip Basics: Patenting Your Idea, Thomas G. Field Jr.

Law Faculty Scholarship

This discussion addresses the relationship between patents and the market value of inventions, as well as the need to be skeptical of invention promoters and other matters of importance to first-time inventors. It also discusses the need for counsel in making outside submissions and the importance of getting prior art searches.

Brief Of Thirty-Four Law Professors As Amici Curiae In Support Of Appellants: Altera Corp. V. Papst Licensing Gmbh, Christopher B. Seaman

Scholarly Articles

The amici curiae are law professors who teach and write on civil procedure and/or patent law and policy. As such, amici are interested in the effective functioning of the courts and the patent system in general. Amici believe that this Court’s rigid rule restricting personal jurisdiction in patent declaratory judgment actions both flouts Supreme Court precedent and frustrates the public policy of clearing invalid patents. Although amici hold different views on other aspects of modern patent law and policy, they are united in their professional opinion that this Court should overturn its inflexible jurisdictional rule.

When Nominal Is Reasonable: Damages For The Unpracticed Patent, Oskar Liivak

Cornell Law Faculty Publications

To obtain a substantial patent damage award a patentee need not commercialize the patented invention; the patentee need only show that its patent was infringed. This surely incentivizes patenting but it dis-incentivizes innovation. Why commercialize yourself? The law allows you to wait for others to take the risks, and then you emerge later to lay claim to “in no event less than a reasonable” fraction of other people’s successes. It is rational to be a patent troll rather than an innovator. This troll-enabling interpretation of patent law’s reasonable royalty provision, however, is wrong as a matter of patent policy. Surprisingly, …

The Critical Role Of Patents In The Development, Commercialization And Utilization Of Innovative Genetic Diagnostic Test And Personalized Medicine, Christopher M. Holman

Faculty Works

Arguments in favor of reining in the availability of effective patent protection in the area of genetic diagnostic testing are based largely on two fundamental misconceptions regarding the role of patents in this important area of technological innovation. The first is the mistaken assumption that patents negatively impact patient access to genetic diagnostic testing by preventing research that might lead to new or improved versions of a genetic test and by increasing the cost of testing services. The second is the failure to appreciate the substantial positive role patents play in in the development and utilization of genetic diagnostic tests. …

Foresight Bias In Patent Law, Sean B. Seymore

Vanderbilt Law School Faculty Publications

Much of patent reform has focused on efforts to make it harder to obtain and enforce low-quality patents. The most straightforward way to achieve this goal is to raise the substantive standards of patentability. What is often ignored in discussions about raising patentability standards is that high-quality inventions can slip through the cracks. What is more troubling is that sometimes this happens because of bias. This Article draws attention to foresight bias, which occurs when a decision-maker lets over-pessimism and an oversimplified view of the future influence the patentability determination. Foresight bias leads to a patent denial regardless of the …

When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai

Faculty Scholarship

Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.

This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history …

Institutionalizing The Uspto Law School Clinic Certification Program For Transactional Law Clinics, Jennifer S. Fan

Articles

With 188 transactional law clinics nationwide and the United States Patent and Trademark Office (“USPTO”) Law School Clinic Certification Program (“Program”) recently established as a statutory program of the USPTO, this Article argues that every transactional clinic that works on trademark and patent applications should apply to become part of the Program. In satisfying the participation requirements of the Program, transactional law clinics will usher in a new, uniform way to educate aspiring intellectual property attorneys. As a result, the law students will not only be “practice ready,” but also more effective attorneys once they are in practice. Participating in …

Legislative Responses To Patent Assertion Entities, David O. Taylor

Faculty Journal Articles and Book Chapters

While the existence of patent assertion entities is not new, in recent years they have proliferated, spawning debate concerning their impact on the patent system and, more broadly, on technological innovation. Despite the fear that they instill in their targets — or perhaps because of it — patent assertion entities arguably serve a beneficial purpose in the patent system. Theoretically they should be able to help individual inventors and small businesses, in particular, obtain a return on their investment in research and development. To the extent patent assertion entities assert patent claims that should be held invalid, not infringed, or …

Alice Corp. V. Cls Bank Int'l, Jordana Goodman

Faculty Scholarship

Congress has the power "to promote the Progress of Science and useful Arts."' Patent law subject matter eligibility under 35 U.S.C. section 101 creates a balance between incentivizing inventors to publicly disclose their knowledge and protecting the public from monopolies on ideas. Allowing inventors to monopolize the basic tools of scientific and technological work might "tend to impede innovation more than it would tend to promote it."² "Laws of nature, natural phenomena, and abstract ideas" constitute unpatentable subject matter under section 101.³ The section 101 inquiry serves as a threshold test to determine if the subject matter of …

Brulotte'S Web, Herbert J. Hovenkamp

All Faculty Scholarship

Kimble v. Marvel Entertainment held that stare decisis required the Supreme Court to adhere to the half century old, much criticized rule in Brulotte v. Thys. Justice Douglas' Brulotte opinion concluded that license agreements requiring royalties measured by use of a patent after its expiration are unenforceable per se. The court need not inquire into market power nor anticompetitive effects, effects on innovation, and it may not accept any defense. Congress can change the rule if it wants to, but has resisted many invitations to do so.

Under Brulotte a hybrid license on patents and trade secrets requires a royalty …

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

All Faculty Scholarship

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 to characterize activities as lawful if they do not extend beyond the patent's scope. In the first half of the twentieth century the …

Antitrust And The Patent System: A Reexamination, Herbert J. Hovenkamp

All Faculty Scholarship

Since the federal antitrust laws were first passed they have cycled through extreme positions on the relationship between competition law and the patent system. Previous studies of antitrust and patents have generally assumed that patents are valid, discrete, and generally of high quality in the sense that they further innovation. As a result, increasing the returns to patenting increases the incentive to do socially valuable innovation. Further, if the returns to the patentee exceed the social losses caused by increased exclusion, the tradeoff is positive and antitrust should not interfere. If a patent does nothing to further innovation, however, then …

Patent Confusion, Jennifer L. Behrens

Faculty Scholarship

No abstract provided.

Do Biotech Patent Lawsuits Really “Overwhelmingly Lose?”: A Response To Our Divided Patent System, Christopher M. Holman

Faculty Works

On October 14, 2014, Stanford’s Professor Mark Lemley tweeted “My new study with Allison & Schwartz shows that software and biotech patent lawsuits overwhelmingly lose.” He was referring to an article entitled Our Divided Patent System, co-authored by Lemley and two other prominent law professors. Taken at face value, the assertion that “biotech patent lawsuits overwhelmingly lose” would seem to hold troubling implications for biotechnology. In order to better understand the basis for Lemley’s assertion, I reanalyzed the underlying data and found that the situation is not nearly as bleak as his tweet might suggest. My significantly different interpretation of …

Developments In Synthetic Biology Are Altering The Ip Imperatives Of Biotechnology, Christopher M. Holman

Faculty Works

While the accomplishments of the biotechnology industry have been substantial, recent technological advances promise to dramatically increase the power and utility of the discipline over the coming years. The term “synthetic biology” has been coined to describe the application of these powerful new tools to the engineering of synthetic genetic sequences and organisms. In essence, synthetic biology represents the next iteration in the ongoing evolution of biotechnology, and hopes run high that in time, the fruits of synthetic biology will dwarf the past successes of conventional biotechnology. There is, however, some concern that the current patent-centric approach to Intellectual Property …

Supreme Court Asked To Consider Role Of Post-Filing Evidence In Assessing Obviousness Of Pharmaceutical Inventions, Christopher M. Holman

Faculty Works

On January 20, 2015, Bristol-Myers Squibb petitioned for certiorari in Bristol-Myers Squibb v. Teva Pharmaceutical, asking whether an assessment of obviousness should "consider post-filing evidence showing the actual differences between a patented invention and the prior art." The district court had found patent claims directed towards Entacavir (an anti-hepatitis drug) obvious in view of structural similarity between the drug and a prior art compound, in spite of the fact that the prior art compound was highly toxic and therefore not a viable candidate for use as a human drug. A Federal Circuit panel affirmed the district court's decision to disregard …

Patent Litigation Reform: The Courts, Congress, And The Federal Rules Of Civil Procedure, Paul Gugliuzza

Faculty Scholarship

Barely three years after passing the America Invents Act, Congress is again considering patent reform legislation. At least fourteen patent reform bills were introduced in the recently concluded 113th Congress. Several of those bills focused specifically on patent litigation, proposing, among other things, to impose heightened pleading requirements on plaintiffs, to limit discovery, and to create a presumption that the losing party should pay the winner’s attorneys’ fees. None of the proposals became law, but one of the bills (the Innovation Act) passed the House of Representatives. In addition, scholars continue to call for reform, and Republican members of Congress …

Expired Patents, Saurabh Vishnubhakat

Faculty Scholarship

This article presents a comprehensive empirical description of the public domain of technologies that have recently passed out of patent protection. From a new dataset of over 300,000 patents that expired during 2008–2012, the study examines technological, geographical, and procedural traits of newly public inventions as a basis for exploring the social value associated with their competitive use. Moreover, comparing these inventions to inventions newly patented during the same period enables more specific discussion of how the balance of innovation in the United States continues to change.