Law Commons^™

The U.S. Patent Office’S Proposed Fees Under The America Invents Act—Part I: The Scope Of The Office’S Fee-Setting Authority, Ron D. Katznelson

Ron D. Katznelson

This two-part article discusses the Patent and Trademark Office’s recent proposed rulemaking setting new patent user fees. In Part I the author argues that the PTO can raise fees in accordance with its aggregate costs but lacks authority to set national patent policies, or to skew certain fees to discourage or encourage a particular service. The author also asserts that the America Invents Act does not vest with the PTO discretion to set the level of its operating reserve – a determination reserved solely for congressional appropriations. In an upcoming Part II, the author will discuss specific fees and their …

Pruning The European Intellectual Property Tree - In Search Of Common Principles And Roots, Severine Dusollier

Severine Dusollier

The European Union knows a multiplicity of IP rights, from classical ones (copyright, patent, trademark or design) to more marginal ones, in terms of economic sectors concerned (rights in database, in plant varieties, in semiconductors, in geographical indications). This paper aims at identifying and assessing the existing similarities or common principles in the intellectual property rights in the European Union. Despite their apparent diverging functions, subject matter and scope of protection, copyright, trademark, patent and the other intellectual property rights share at least the fact that they belong to a set of rules granting some exclusive rights in intangible assets, …

Could A Hub And Spoke, Homegrown Ceo Strategy Boost The Success Of University Start-Ups?, Brendan O. Baggot, Martin R. Graf Phd

Brendan O. Baggot

How can universities make more money with their spinout company (SpinCo)‐suitable technologies? By “growing” their own CEOs to improve both the quality and quantity of startup company leaders available, that’s how. Surprisingly, however, at most universities little or no effort is made to interweave this critical need into tech transfer efforts.

Patent Reform And Best Mode: A Signal To The Patent Office Or A Step Toward Elimination?, Ryan G. Vacca

Ryan G. Vacca

On September 16, 2011, President Obama signed the America Invents Act (AIA), the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law's best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. …

Ethics In Intellectual Property Negotiations: Issues And Illustrations, Lisa A. Dolak

Lisa A Dolak

Negotiating – formally or informally – is a characteristic aspect of law practice. The requisite skills are acquired “on the job” and, for some, via the formal study of negotiation processes and attributes. The negotiator has much to consider, including the client’s goals and interests, likely litigation outcomes should negotiations fail or any ultimate agreement be breached, and what the counterparty is likely seeking to accomplish.

The challenges include negotiating within the limits imposed by the ethics rules. This paper identifies key authorities relevant to negotiation ethics and illustrates their operation in the context of hypotheticals based on intellectual property …

Patent Reversion: An Employee-Inventor's Second Bite At The Apple, Richard Kamprath

Richard Kamprath

In an attempt to more fully compensate employee-inventors without harming the return on investment of employers, a patent reversion is proposed in which the rights to the patent revert to joint ownership between the original inventor and the current owner. In Section I, the background of the relationship between employer and employee-inventor will be discussed in terms of patent rights. This section will outline the problems inherent in the pre-assignment status quo of these rights from employees to employers. Section II will begin with Part A, which is a review of previously proposed solutions to the under-compensation of employee-inventors. The …

Valuing Publication And Attribution In Intellectual Property, Christopher Sprigman, Christopher Buccafusco, Zachary Burns

Christopher Sprigman

This is the third in a series of articles focusing on the experimental economics of intellectual property. In earlier work, we have experimentally studied the ways in which creators assign monetary value to the things that they create. That research has suggested that creators are subject to a systematic bias that leads them to overvalue their work. This bias, which we have called the 'creativity effect,' potentially results in inefficient markets in IP, because creators may be unwilling to license their works for rational amounts. Our prior research, however, like American IP law itself, focused exclusively on the monetary value …