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Articles 1 - 10 of 10
Full-Text Articles in Law
Forward To The Past, Michael Risch
Forward To The Past, Michael Risch
Michael Risch
The Supreme Court’s decision in Bilski v. Kappos - banning all patents claiming ‘‘abstract ideas,’’ but refusing to categorically bar any particular type of patent - represents a return to the Court’s past patentable subject matter jurisprudence. In so returning, the Court determined that business methods could potentially be patentable. This Supreme Court Review article discusses what is essentially a restart: lower courts and the PTO must remake the law using the same precedent that led to the rigid rules rejected by the Court in Bilski. Part I discusses Mr. Bilski’s patent application and the Court’s ruling that it is …
Machine-Or-Transformation Test Hit The Board: Patent-Eligible Subject Matter Following Bilski, Peter L. Ludwig
Machine-Or-Transformation Test Hit The Board: Patent-Eligible Subject Matter Following Bilski, Peter L. Ludwig
Peter L. Ludwig
In In re Bilski the Federal Circuit held that the machine-or-transformation test is the test to apply to determine subject matter eligibility of process claims under 35 U.S.C. § 101. The en banc majority opinion of the Federal Circuit introduced the machine-or-transformation test based upon Supreme Court precedent. The Supreme Court will soon hand down a ruling letting the public know if this is the test that will be applied to process claims. Although patent practitioners may have a test to apply, application of the test is far from certain.
The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Wendy J. Gordon, Orit Fischman Afori, Mark Janis, Jonathan Moskin
The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Wendy J. Gordon, Orit Fischman Afori, Mark Janis, Jonathan Moskin
Faculty Scholarship
Before beginning, let me mention that I will confine myself to a limited number of arenas. Thus, for example, I'm not going to discuss design patents, which will be the focus of another speaker's remarks. I will also not discuss the doctrine of aesthetic functionality. My primary goal will be to compare trademark's doctrine of utilitarian "functionality" with copyright's domain of "separability," and to show how for at least two circuit court opinions, the two doctrines may be converging. I hope to stimulate discussion of whether such convergence would be a good idea.
Panel I: The Patent Landscape With Bilski On The Map, Jeanne Fromer, James W. Dabney, Clarisa Long, Brian P. Murphy
Panel I: The Patent Landscape With Bilski On The Map, Jeanne Fromer, James W. Dabney, Clarisa Long, Brian P. Murphy
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Bilski’S “Machine-Or-Transformation” Test: Uncertain Prognosis For Diagnostic Methods And Personalized Medicine Patents, Brian P. Murphy, Daniel P. Murphy
Bilski’S “Machine-Or-Transformation” Test: Uncertain Prognosis For Diagnostic Methods And Personalized Medicine Patents, Brian P. Murphy, Daniel P. Murphy
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Panel Iii: Trade Secrets And Other Avenues For Protection Of Advanced Technology , Hugh C. Hansen, Roger Milgrim, George Graff, Sharon K. Sandeen
Panel Iii: Trade Secrets And Other Avenues For Protection Of Advanced Technology , Hugh C. Hansen, Roger Milgrim, George Graff, Sharon K. Sandeen
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Orit Fischman Afori, Wendy J. Gordon, Mark Janis, Jonathan Moskin
Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Orit Fischman Afori, Wendy J. Gordon, Mark Janis, Jonathan Moskin
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Bilski: Assessing The Impact Of A Newly Invigorated Patent Eligibility Doctrine On The Pharmaceutical Industry And The Future Of Personalized Medicine, Christopher M. Holman
Bilski: Assessing The Impact Of A Newly Invigorated Patent Eligibility Doctrine On The Pharmaceutical Industry And The Future Of Personalized Medicine, Christopher M. Holman
Faculty Works
The patent eligibility doctrine serves a gatekeeper role in excluding from patent protection natural phenomena, principles of nature, abstract ideas, and mental processes. Beginning around 1980, the U.S. patent system embarked upon a pronounced expansion in its definition of patent eligible subject matter, particularly with respect to software and business method inventions, but also in the life sciences. In recent years, however, we have seen a backlash, with many critics from the public and private sectors arguing that the threshold for patent eligibility needs to be raised in order to ensure that patents fulfill their constitutional objective of encouraging innovation …
Ip And Antitrust: Reformation And Harm, Christina Bohannan, Herbert J. Hovenkamp
Ip And Antitrust: Reformation And Harm, Christina Bohannan, Herbert J. Hovenkamp
All Faculty Scholarship
Antitrust and intellectual property law both seek to improve 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 reform began 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 own reform journey, but it is in a much earlier …
The Role Of Patent Eligibility In Policing Claim Scope, Christopher M. Holman
The Role Of Patent Eligibility In Policing Claim Scope, Christopher M. Holman
Faculty Works
Bilski v. Kappos (Bilski II) empowered the lower courts to deploy patent eligibility as a doctrinal tool for policing claim scope. Because Bilski II leaves the test for patent eligibility largely undefined, the lower courts and PTO, in particular the Federal Circuit, could actively invoke the doctrine as a “wildcard” to invalidate patent claims deemed unduly broad, or otherwise “unworthy” by the court. Judge Rader made a similar observation recently with respect to the Lilly written description requirement, another doctrine of patentability for which the criteria for compliance remains largely undefined. However, early indications suggest that the Federal Circuit and …