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Full-Text Articles in Law
Santa Clara Law Best Practices In Patent Litigation Survey, Colleen Chien, Nicole Shanahan, Daniel Dobkin, Wesley Helmholz, Coryn Millslagle, Christopher Patrick Tosetti
Santa Clara Law Best Practices In Patent Litigation Survey, Colleen Chien, Nicole Shanahan, Daniel Dobkin, Wesley Helmholz, Coryn Millslagle, Christopher Patrick Tosetti
Faculty Publications
Over the past few years, Congress, appellate, and district courts have made significant strides to improve patent law and litigation practice. Congress is now considering making more changes, to supplement ongoing tailoring by the courts. Dialog between the patent bench, patent bar, and lawmakers is crucial for informing these efforts. To support this dialog, we developed, in consultation with judges and company lawyers in spring of 2013, a list of questions to probe the experiences, opinions, and suggestions of lawyers. We asked survey takers to rate, on a range from ineffective to very effective, certain existing and proposed practices and …
Does The Us Patent System Need A Patent Small Claims Proceeding?, Colleen Chien, Michael J. Guo
Does The Us Patent System Need A Patent Small Claims Proceeding?, Colleen Chien, Michael J. Guo
Faculty Publications
Patent litigation is expensive. The primary motivation for the creation of a patent small claims proceeding is to make enforcement more affordable. However, in the twenty or so years since the American Intellectual Property Law Association (AIPLA) first endorsed the idea of a small claims patent court through Resolution 401‐4, the patent litigation landscape has drastically changed. Although patent litigation costs are still high, the equities have shifted. The marketplace for patents has developed, providing more options than previously existed to monetize and assert patents. However, the cost of patent defense has not gone down, and small companies cannot afford …
10 Things The Pto Can Do To Enhance Context-Based Patent Disclosure, Colleen Chien
10 Things The Pto Can Do To Enhance Context-Based Patent Disclosure, Colleen Chien
Faculty Publications
The PTO held a roundtable and solicited comments on a proposal to require Real-Party-in-Interest disclosures in patents. Through this comment, which I submitted to the PTO, I support their efforts to elicit and disseminate ownership data by 1) explaining why ownership information, and context-information in particular, is so important to the core functions of the patent system of technology transfer and technology commercialization; 2) commending and suggesting several steps the PTO could take/continue to take to improve the quality, quantity, and dissemination of ownership information; and 3) providing an Appendix that summarizes each of the 17 comments that the PTO …
Best Mode Trade Secrets, Brian J. Love
Best Mode Trade Secrets, Brian J. Love
Faculty Publications
Trade secrecy and patent rights traditionally have been considered mutually exclusive. Trade secret rights are premised on secrecy. Patent rights, on the other hand, require public disclosure. Absent a sufficiently detailed description of the invention, patents are invalid. However, with the passage of the Leahy-Smith America Invents Act (“AIA”) last fall, this once black-and-white distinction may melt into something a little more gray. Now, an inventor’s failure to disclose in her patent the preferred method for carrying out the invention — the so-called “best mode” — will no longer invalidate her patent rights or otherwise render them unenforceable.
In this …
Protecting Domestic Industries At The Itc, Colleen Chien
Protecting Domestic Industries At The Itc, Colleen Chien
Faculty Publications
The International Trade Commission (ITC) provides injunctive relief from imports that infringe intellectual property to “domestic industries.” Differences in opinion about what this term means have divided those who do and those who don’t practice their patents. Should they both have access to the ITC? This article reviews the statute, its history, and its application to this question. It agrees with the Commission’s finding in Coaxial Cable that the design and history of the statute favor activity that furthers the development and commercialization of technology. It suggests two changes to more closely align ITC practice with the statute. The ITC …
Predicting Patent Litigation, Colleen Chien
Predicting Patent Litigation, Colleen Chien
Faculty Publications
Patent lawsuits are disruptive, unpredictable, and costly. The inability to anticipate patent litigation makes it practically uninsurable, exposes companies to late-stage suits, and drives companies to rapidly accumulate patents in order to ward off litigation. This article confronts this systemic problem, by examining the factors that lead a particular patent to be litigated – only around 1% of patents ever is. It relates the eventual litigation of a patent to earlier events in the patent’s life, including changes in ownership of the patent (assignments, transfers, and changes in owner size), continued investment in the patent (reexamination, maintenance fees), securitization of …
Are The U.S. Patent Priority Rules Really Necessary?, Colleen Chien, Mark Lemley
Are The U.S. Patent Priority Rules Really Necessary?, Colleen Chien, Mark Lemley
Faculty Publications
In this Article, we study U.S. Patent and Trademark Office (“PTO”) interference proceedings and court cases in which the parties dispute who is first to invent. We find that the first person to file is usually, but by no means always, also the first to invent. In over 40% of the cases, the first to invent is last to file. We also find that the long-standing rule that discriminated against foreign inventors by requiring proof of inventive activity in the U.S. had surprisingly little effect on outcomes; that a large number of priority disputes involve near-simultaneous invention; and that the …