Law Commons^™

Vol. 1 No. 1, Fall 2009; Current Trends In Inequitable Conduct Are Adverse To Patent Policy As Seen Through The Exemplary Case Of Big Pharma, Joshua M. Austin

Northern Illinois Law Review Supplement

This Comment explores the rather difficult and rapidly changing field of patent law, discussing specifically the doctrine of inequitable conduct, a defense raised by the infringing party by which a patent can be rendered unenforceable. Recent trends in inequitable conduct, as it has been used by the Federal Circuit, have made this confusing area of law even more so. This comment identifies these confusions and the Federal Circuit's failure to maintain clear cut precedent. This Comment further discusses the impacts of these current trends, postulating that these trends go so far as to undercut the principal policy purposes behind patent …

5 U.S.C. § 553: Patent Elephants In Process Mouseholes, Thomas G. Field

The University of New Hampshire Law Review

[Excerpt] “As the district court in Tafas v. Duda (Tafas I) recounted, in 2006, the U.S. Patent and Trademark Office (USPTO) proposed to limit numbers of continuing patent applications, requests for continued examination, and claims that could be made as a matter of right. In 2007, following notice and comment procedures that generated hundreds of comments, many critical, the USPTO published final rules consonant with those objectives.

The district court in Tafas I issued a preliminary injunction and ultimately rejected those rules, saying “[b]ecause the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and …

Nil: The Value Of Patents In A Major Crisis Such As An Influenza Pandemic, Dennis D. Crouch

Faculty Publications

This essay focuses on the role of patents in relation to a potential global crisis such as an influenza pandemic or other public health crisis. I argue that patent rights will be largely ignored during an epidemic and that any post-crisis compensation would likely be low when compared to traditional patent rewards or settlements entered under threat of injunctive relief. In some situations, such as use of a patented invention by a state or local government, a patentee may have no recourse. Part III of the essay raises a separate issue that stems from the relatively long time frame for …

Unsettling Drug Patent Settlements: A Framework For Presumptive Illegality, Michael A. Carrier

Michigan Law Review

A tidal wave of high drug prices has recently crashed across the U.S. economy. One of the primary culprits has been the increase in agreements by which brand-name drug manufacturers and generic firms have settled patent litigation. The framework for such agreements has been the Hatch-Waxman Act, which Congress enacted in 1984. One of the Act's goals was to provide incentives for generics to challenge brand-name patents. But brand firms have recently paid generics millions of dollars to drop their lawsuits and refrain from entering the market. These reverse-payment settlements threaten significant harm. Courts nonetheless have recently blessed them, explaining …

The Politics Of Patents And Drugs In Brazil And Mexico: The Industrial Bases Of Health Policies, Kenneth C. Shadlen

Ken Shadlen

After introducing pharmaceutical patents in the 1990s, Brazil subsequently adjusted the patent system to ameliorate its effects on drug prices while Mexico introduced measures that reinforce and intensify these effects. The different trajectories are due to the nature of the actors pushing for reform and subsequent patterns of coalitional formation and political mobilization. In Brazil, government demand for expensive, patented drugs made health-oriented patent reform a priority, and the existence of an autonomous local pharmaceutical sector allowed the Ministry of Health to build a supportive coalition. In Mexico, government demand made reforms less urgent, and transformations of the pharmaceutical sector …

Stifling Or Stimulating - The Role Of Gene Patents In Research And Genetic Testing, Lawrence M. Sung

Lawrence M. Sung

No abstract provided.

Tying, Price Discrimination And Antitrust Policy, Herbert Hovenkamp

Herbert Hovenkamp

ABSTRACT

A tying arrangement is a seller’s requirement that a customer may purchase its “tying” product only by taking its “tied” product. In a variable proportion tie the purchaser can vary her purchases of the tied product. For example, a customer might purchase a single printer, but either a contract or technological design requires her to purchase varying numbers of printer cartridges from the same manufacturer. Such arrangements are widely considered to be price discrimination devices, but their economic effects have been controversial.

Price discrimination comes in various “degrees.” In third degree price discrimination the seller isolates two or more …

The Patent System's Relationship To Digital Entrepreneurship, Mark Chandler

West Virginia Law Review

No abstract provided.

Ip And Antitrust: Errands Into The Wilderness, Herbert Hovenkamp

Herbert Hovenkamp

IP AND ANTITRUST: ERRANDS INTO THE WILDERNESS

ABSTRACT

Antitrust and intellectual property law both seek to promote economic welfare by facilitating competition and investment in innovation. At various times both antitrust and IP law have wandered off this course and have become more driven by special interests. Today, antitrust and IP are on very different roads to reform. Antitrust began an Errand into the Wilderness in the late 1970s with a series of Supreme Court decisions that linked the plaintiff’s harm and right to obtain a remedy to the competition-furthering goals of antitrust policy. Today, patent law has begun its …

Patenting Cryptographic Technology, Greg Vetter

Chicago-Kent Law Review

The policy concerns intersecting patent law and cryptographic technology relate to the technology's beneficial uses in securing information in a commercial and social fabric that increasingly relies on computing and electronic communications for its makeup. The presence of patenting in a technology can impact diffusion of interoperable technology. Standardized embeddable cryptography facilitates its supply. Patent law for several decades has waxed and waned in its embrace of software implemented inventions rooted in abstract ideas such as the mathematics and mathematical algorithms underlying modern cryptography. This article documents the growth of cryptographic patenting. Then, in light of this growth and patent …

Willful Patent Infringement After In Re Seagate: Just What Is "Objectively Reckless" Infringement?, Randy R. Micheletti

Chicago-Kent Law Review

Recently the United States Court of Appeals for the Federal Circuit dramatically change the rules for proving willful patent infringement—and justifying enhanced damages—in In re Seagate Technology. A patentee alleging willful infringement must now first prove "by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." He must then show that the objectively defined risk was "either known or so obvious that it should have been known to the accused infringer." The court expressly delegated substantive development of the new test to future cases. Because district …

The Technicality Requirement, Patents Scope And Patentable Subject Matter In Australia, William Van Caenegem

William Van Caenegem

The technicality requirement confines patentable subject matter to practical processes and products. It excludes theoretical knowledge and methods of conducting services as such from patentability. In a post-industrial age, there may be good arguments to abandon this limiting requirement, because innovation has become highly scientific and because services now form such an important part of industrial activity. However, because the underlying effect of the requirement is to limit the scope of patent claims, it should arguably be retained: patents of excessively broad scope have a negative aggregate welfare effect. In any case, even within the constraints of technicality, courts applying …

Of Trolls, Davids, Goliaths, And Kings: Narratives And Evidence In The Litigation Of High-Tech Patents, Colleen V. Chien

Faculty Publications

While each patent dispute is unique, most fit the profile of one of a limited number of patent litigation stories. A dispute between an independent inventor and a large company, for instance, is often cast in "David v. Goliath" terms. When two large companies fight over patents, in contrast, they are said to be playing the "sport of kings." Some corporations engage in "defensive patenting" in order to deter others from suing them. Patent licensing and enforcement entities who sue have been labeled "trolls." Finally, observers of the patent system call the use of patent litigation to impose or exploit …

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 …

Fighting Against Biopiracy: Does The Obligation To Disclose In Patent Applications Truly Help?, Jacques De Werra

Vanderbilt Journal of Transnational Law

In the global fight against biopiracy, one of the key issues is to prevent the grant and exploitation of patents on traditional knowledge and genetic resources by requiring that patent applicants for inventions involving traditional knowledge and genetic resources disclose the source of those resources and provide evidence that the prior informed consent of the local owners of such resources has been obtained and that benefit-sharing agreements have been entered into with those owners.

This Article argues that a legal discussion of biopiracy should analyze the obligation to disclose the use of traditional knowledge and genetic resources in an invention …

Firms' Global Patent Strategies In An Emerging Technology, Andrea Fernandez-Ribas

Andrea Fernandez-Ribas

Despite international patenting can be a costly and risky investment, an increasing number of firms patent proprietary technologies in foreign countries. This paper explores trends of global patenting in a new domain of technology characterized by rapid globalization. The research setting consists of the population of U.S.-based Large and Small and Mid-Sized firms (SMEs) filing nanotechnology-related patent applications at the World International Patent Office (WIPO) during 1996-2006.

This paper appears in: Science and Innovation Policy, 2009 Atlanta Conference on Publication Date: 2-3 Oct. 2009 On page(s): 1-5 ISBN: 978-1-4244-5041-1 INSPEC Accession Number: 11035266 DOI: 10.1109/ACSIP.2009.5367863 Posted online: 2009-12-28 12:00:57.0

Of Mice And Men: Why An Anticommons Has Not Emerged In The Biotechnological Realm, Chester J. Shiu

Chester J Shiu

In 1998 Michael Heller and Rebecca Eisenberg posited that excessive patenting of fundamental biomedical innovations might create a “tragedy of the anticommons.” A decade later, their dire predictions have not come to pass, an outcome which calls much of the legal scholarship on the topic into question. This Article proposes that legal commentators’ theoretical arguments have largely ignored two very important factors. First, the National Institutes of Health (NIH)—the single most important actor in the biomedical research industry—has played an active role in keeping the biomedical research domain open. In particular, regardless of what the current patent regime may theoretically …

Article 53(B) Epc: A Challenge To The Novartis Theory Of European Patent History, Justine Pila

Justine Pila

In this article the authoritative ('Novartis/transgenic plant systems') interpretation of the Article 53(b) EPC exclusion from European patentability of plant and animal varieties, and essentially biological processes for the creation of plants and animals, is considered, and its significance for the trend of EPO jurisprudence and legitimacy of the EC Biotechnology Patenting Directive noted. The Enlarged Board of Appeal's justification for that interpretation in 'Novartis' with reference to the exclusion's legislative history is challenged, and an alternative theory of that history proposed, based on a thorough analysis of the unpublished 'travaux preparatoires' for the Strasbourg and European Patent Conventions. In …

Chemical Products And Proportionate Patents Before And After Generics V Lundbeck, Justine Pila

Justine Pila

In Generics Ltd v Lundbeck A/S (2009) UKHL 12, the House of Lords affirmed the validity of a patent for a chemical product - an isolated stereoisomer - supported by a method of producing the product, but protecting the chemical product as such independent of the method by which it was made. In so doing, it appears to have resolved a longstanding tension between granting patents for chemical products and requiring that the scope of monopoly rights equiperate with the disclosure in the specification. It also appears to have rejected the Biogen Inc v Medeva plc (1997) RPC 1 (HL) …

Privilege-Wise And Patent (And Trade-Secret)-Foolish?: How The Courts' Misapplication Of The Military And State Secrets Privilege Violates The Constitution And Endangers National Security, Davida H. Isaacs, Robert M. Farley

Faculty Scholarship

It is every inventor's nightmare: a valuable idea, stolen, with no legal recourse. Yet that is precisely what happened in Lucent v. Crater, where the Federal Circuit permitted the Federal Government to defeat the inventors' claims using the military and state secrets privilege. In light of the recent upsurge in the Government's invocation of this privilege, it is time to scrutinize more carefully courts' highly deferential response to its use. There is little question that the executive branch must be able to invoke the privilege in order to ensure that national security is not imperiled by public disclosure of information. …

Patents, Property, And Competition Policy, Herbert J. Hovenkamp

All Faculty Scholarship

The decision to regulate involves the identification of markets where simple assignment of property rights is not sufficient to ensure satisfactory competitive results, usually because some type of market failure obtains. By contrast, if property rights are well defined when they are initially created and can subsequently be traded to some reasonably competitive equilibrium, then regulation is thought not to be necessary. In such cases the antitrust laws have a significant role to play in ensuring that the market can be as competitive as free trading allows. One problem with the patent system is that once a patent is granted …

Using Patents To Protect Traditional Knowledge, Jay Erstling

Faculty Scholarship

The role that intellectual property can play in the protection of traditional knowledge (TK) has been on the international agenda for more than ten years, with little to show for it. For example, the World Intellectual Property Organization (WIPO) has provided a forum for international policy debate on the subject since 1998, and the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) has held meetings on draft provisions for the protection of TK against misappropriation and misuse since 2001. Similarly, since 1999 the World Trade Organization (WTO) has been examining the most effective means …

Ksr International Co. V. Teleflex Inc.: The Supreme Court Declines The Opportunity To Finally Set The Record Straight And Articulate One Clear Standard For Determining Obviousness In Patent Cases, Ashley Houston

Journal of Business & Technology Law

No abstract provided.

Patenting Games: Baker V. Selden Revisited, Shubha Ghosh

Vanderbilt Journal of Entertainment & Technology Law

Patents are meant to protect the functional aspects of an invention. But patents, particularly patents on processes or methods, can cover non-functional, or expressive, activity. This Article explores this possibility in the context of patents covering games of various types. Patents on games can cover the actual play or use of a game with consequent implications for user-generated content produced by playing games. The Article documents this possibility in the area of fantasy sports and video games and proposes two solutions. The first solution relies on the Federal Circuit's recent decision in In "re Bilski," which restricts the patenting of …

Defusing The "Atom Bomb" Of Patent Litigation: Avoiding And Defending Against Allegations Of Inequitable Conduct After Mckeeson Et Al., Sean M. O'Connor

Articles

The doctrine of inequitable conduct in patent law has a long and vexing history. While it is sometimes mistakenly conflated with the United States Patent and Trademark Office's Rule 56, the doctrine is actually a purely equitable one established by the Supreme Court in 1945—and not revisited by it since then.

This Article re-establishes the roots and proper context of the doctrine, while tracing its confused interactions with Rule 56 over the ensuing decades. The Article reaffirms the necessary balancing act between over and under disclosure of references during patent prosecution, and the inverse sliding scale relationship of materiality and …

Interface: The Push And Pull Of Patents, Peter Lee

Fordham Law Review

No abstract provided.

Growing Pains In The Administrative State: The Patent Office’S Troubled Quest For Managerial Control, Arti K. Rai

Faculty Scholarship

In the last ten years, the workload of the Patent and Trademark Office ("PTO") has increased dramatically. Complaints about the PTO's ability to manage its workload have increased in tandem. Interestingly, although Congress has explicitly given the PTO rulemaking authority over the processing of patent applications, and withheld from it authority over "substantive" patent law, the PTO has arguably enjoyed more success in influencing substantive law than in executing direct efforts to manage its workload. This Article explores the multiple, mutually reinforcing reasons for this anomaly. It argues that although there are good reasons to be frustrated with the PTO's …

The Pull Of Patents, Brett M. Frischmann

Fordham Law Review

No abstract provided.

Cross-Border Injunctions In U.S. Patent Cases And Their Enforcement Abroad, Marketa Trimble

Scholarly Works

In surveying recent literature on difficulties with cross-border injunctions in patent cases, one may conclude that the problem appears to be limited to the phenomenon of pan-European injunctions granted by some courts in Europe in cases concerning infringements of foreign patents. However, even in cases concerning domestic patents, injunctions reaching beyond national borders can be issued; the empirical evidence presented in the paper demonstrates a variety of such instances in U.S. patent cases. Certainly the existence of such injunctions in the U.S. raises concerns about their enforceability in other countries, particularly when they are issued against a foreign entity that …

The Perils Of Taking Property Too Far, Christopher Heaney, Julia Carbone, E. Richard Gold, Tania Bubela, Christopher M. Holman, Allessandra Colaianni, Tracy R. Lewis, Bob Cook-Deegan

Faculty Works

Many policies governing biobanks revolve around ownership and control of the materials and information in them. Those who manage biobanks may be tempted to seek the broadest legal rights possible over material and data. However, we suggest that even if ownership and control were clearly defined by the law and readily obtained by biobanks, how legal rights are used in practice matters as much or more than the rules for ownership. We draw lessons from the stories of genetic testing for Canavan disease and inherited breast and ovarian cancers. In both cases, the use or assertion of legal rights led …