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 …

The Look For Less: A Survey Of Intellectual Property Protections In The Fashion Industry, Nicole Giambarrese

Touro Law Review

Currently, there are no copyright protections for fashion designs in the United States. Proposed legislation that would provide such protection has been sitting in Congress for two years. Further, the Lanham Trademark Act only protects the origin of products, such as logos and trademarks. Even with the current available trademark protection, fashion houses, such as Louis Vuitton, and luxury jewelry firms, such as Tiffany & Company, have seen the Second Circuit make it more difficult to assert the protection. This increasing difficulty is due to a fear of overextending monopolies and taking an affirmative stance on who has the burden …

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, …

What's A Name Worth?: Experimental Tests Of The Value Of Attribution In Intellectual Property, Christopher J. Buccafusco, Christopher Jon Sprigman, Zachary C. Burns

All Faculty Scholarship

Despite considerable research suggesting that creators value attribution – i.e., being named as the creator of a work – U.S. intellectual property (IP) law does not provide a right to attribution to the vast majority of creators. On the other side of the Atlantic, however, many European countries give creators, at least in their copyright laws, much stronger rights to attribution. At first blush it may seem that the U.S. has gotten it wrong, and the Europeans have made a better policy choice in providing to creators a right that they value. But for reasons we will explain in this …

Technology Transfer Laws Governing Federally Funded Research And Development, James V. Lacy, Bradford C. Brown, Michael R. Rubin

Pepperdine Law Review

No abstract provided.

“One For All: The Problem Of Uniformity Cost In Intellectual Property Law.” American University Law Review 55, No.4 (May 2006): 845-900., Michael W. Carroll

Michael W. Carroll

Intellectual property law protects the owner of each patented invention or copyrighted work of authorship with a largely uniform set of exclusive rights. In the modern context, it is clear that innovators' needs for intellectual property protection vary substantially across industries and among types of innovation. Applying a socially costly, uniform solution to problems of differing magnitudes means that the law necessarily imposes uniformity cost by underprotecting those who invest in certain costly innovations and overprotecting those with low innovation costs or access to alternative appropriability mechanisms. This Article argues that reducing uniformity cost is the central problem for intellectual …

Rethinking Rand: Sdo-Based Approaches To Patent Licensing Commitments, Jorge Contreras

Working Papers

So-called “reasonable and nondiscriminatory” (RAND) licensing commitments have been utilized by standards-development organizations (SDOs) for years in an attempt to alleviate the risk of patent hold-up in standard-setting. These commitments, however, have proven to be vague and offer few assurances to product vendors or patent holders. A recent surge of international litigation concerning RAND commitments has brought this issue to the attention of regulators, industry and the public, and many agree that a better approach is needed. In this paper, I identify seven “first principles” that underlie the licensing and enforcement of standards-essential patents (SEP)s. These can be summarized as …

Newman, J., Dissenting: Another Vision Of The Federal Circuit, Blake R. Hartz

IP Theory

No abstract provided.

The Private Costs Of Patent Litigation, James Bessen, Michael J. Meurer

Faculty Scholarship

This paper estimates the total cost of patent litigation to alleged infringers. We use a large sample of stock market event studies around the date of lawsuit filings for US public firms from 1984-99. We find that the total costs of litigation are much greater than legal fees and costs are large even for lawsuits that settle. Lawsuits cost alleged infringers about $28.7 million ($92) in the mean and $2.9 million in the median. Moreover, infringement risk rose sharply during the late 1990s to over 14% of R&D spending. Small firms have lower risk relative to R&D.

Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson

Faculty Scholarship

Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …

From De Novo Review To Informal Deference: An Historical, Empirical, And Normative Analysis Of The Standard Of Appellate Review For Patent Claim Construction, Jonas Anderson, Peter Menell

J. Jonas Anderson

Patent scope plays a central role in the operation of the patent system, making patent claim construction a critical aspect of just about every patent litigation. With the resurgence of patent jury trials in the 1980s, the allocation of responsibility for interpreting patent claims between trial judge and jury emerged as a salient issue. While the Supreme Court’s Markman decision usefully removed claim construction from the black box of jury deliberations notwithstanding its "mongrel" mixed fact/law character, the Federal Circuit’s adherence to the view that claim construction is a pure question of law subject to de novo appellate review produced …

Intellectual Property, The Free Movement Of Goods And Trade Restraint In The European Union, Jarrod Tudor

Jarrod Tudor

The European Union is the most significant trade partner of the United States. Trading in goods protected by intellectual property rights remains a challenge for American business entities as they are forced to sift through a myriad of law consisting of the federal intellectual property law of the European Union and the intellectual property law of the member-states. The Court of Justice of the European Union has been faced with dozens of complex cases arising out of conflicts between the national law of the member-states and the Articles of the Treaty on European Union that mandate the free movement of …

Both A License And A Sale: How To Reconcile Self-Replicating Technology With Patent Exhaustion, Douglas Fretty

The Journal of Business, Entrepreneurship & the Law

Too many authorities view the transfer of patented self-replicating technology (SRT) as either a pure license or a pure sale. If a pure license exists, the patentee can impose post-transfer restrictions on the product's use, frustrating the policy goals of limited monopoly and free alienability of chattels. If a pure sale is triggered, however, the patentee loses all rights through patent exhaustion, allowing the purchaser to replicate the chattel at will. Sensitive to this latter argument, several courts have enforced Monsanto Company's “bag tag” seed licenses, which require Monsanto's farmer customers to destroy all second-generation seed. Urging a middle path, …

Prometheus And The Natural Phenomenon Doctrine: Let’S Not Lose Sight Of The Forest For The Trees, Samantak Ghosh

Samantak Ghosh

The Supreme Court’s recent decision on patentable subject matter, Mayo Collaborative Services. v. Prometheus Laboratories, has come in for a lot of criticism from the biotechnology industry. Whenever the Supreme Court renders a judgment that is a significant departure from the past and arguably gets it wrong, the voices questioning the underlying principle behind the decision become stronger. Unfortunately, Prometheus was a poor vehicle for recalibrating a doctrine that has been untouched for the past three decades. However, it is important to dissociate the specific opinion from the principle animating the opinion, the natural phenomenon doctrine. If the natural phenomenon …

Music As Biotech: Remixing The Ubmta For Use With Digital Samples, Adam G. Holofcener

Intellectual Property Brief

No abstract provided.

A Conversation On Judicial Decision-Making, Robin Feldman

Robin C Feldman

Both breathtakingly broad and minutely particular, the doctrine of patentable subject matter asks us to consider which innovations are of the type for which we might grant protection. Do we include living creatures, for example, or genes? Are computer algorithms included, and just what is an algorithm anyway? These are the types of questions that the Supreme Court has considered in a number of recent cases on patentable subject matter.

Looking closely at the recent cases, a fascinating conversation emerges between the Supreme Court and the Federal Circuit. It is a conversation not just about the nature of patents, but …

Intellectual Property Wrongs, Robin Feldman

Robin C Feldman

Intellectual property has become a pervasive presence in society. Seeping into every nook and cranny of American life, intellectual property casts a protective haze over everything from the words of an email to the sequence of genes. Increasingly, these rights are being pressed into the service of schemes that have little to do with the advancement of societal goals and much to do with societal waste. What do we, as a society, do when the rights that we have created with such lofty goals and noble heart are diverted toward less admirable pursuits, that is, when IP rights become the …

Will Fda Data Exclusivity Make Biologic Patents Passé?, Vincent J. Roth Esq

Vincent J Roth Esq

Much controversy has ensued over the current 12 year data exclusivity period afforded biosimilars pursuant to the Biologics Price Competition and Innovation Act of 2009 (the “BPCI”) that was recently enacted in March 2010, as part of President Obama’s Patient Protection and Affordable Care Act (the “PPACA”), to create a biosimilar market in the US. In fact, the BPCI, itself, has been controversial and just barely survived judicial scrutiny when the US Supreme Court upheld the PPACA on June 28, 2012 in a 5-4 vote. Many commentators speculate whether data exclusivity will overtake patents as the preferred method of intellectual …

Design Patent Drawings - Shading Rules And Regulations As Per Uspto & Pct Specifications, Bernadette Marshall

Bernadette Marshall

According to The United States Patent and Trademark Office (USPTO) guidelines for Design Patents, the drawing disclosure is the most important element of the application.

As we will discuss in this article, in a design patent application, surface shading directly relates to clarity.

Proper application of various shading techniques including samples.

Tangencies – what they are and how they help a patent examiner understand the shape of an item.

Bold Lines - how they are used to emphasize openings, indentations and raised areas.

Different requirements for drawings in USA (USPTO) and international filings (PCT).

Conclusion:

Avoid Japanization, Nahoko Ono

Nahoko Ono

USPTO and academia are both recently keen to encourage further transparency of patent assignment recordation system. This article contends that excessive regulatory framework is likely to deter exploitation of patents as Japan fails to do so despite of its top-ranked patent producer in the world.

From Infringement To Innovation: Counterfeiting And Enforcement In The Brics, J. Benjamin Bai, Keith D. Lindenbaum, Yi Qian, Cynthia Ho

Cynthia M Ho

No abstract provided.

If It's Not Ripped, Why Sew It? An Analysis Of Why Enhanced Intellectual Property Protection For Fashion Design Is In Poor Taste, Kari Heyison

Touro Law Review

No abstract provided.

Strict Interpretation Of 35 U.S.C. § 112: Requires Universities To Examine Their Patenting Methods, Sharon Barkume, Michael R. Bielski

Touro Law Review

No abstract provided.

Standard Of Proof For Patent Invalidation In The U.S. And Japan, Yoshinari Oyama

Yoshinari Oyama

In June 2011, the U.S. Supreme Court confirmed the standard of proof for patent invalidation in Microsoft Corp. v. i4i Limited Partnership, et al. The Court held that an invalidity defense to be proven by clear and convincing evidence rather than by a preponderance of the evidence and that burden is constant and never changes. Compared to the U.S. patent system, there is no heightened standard of proof required for patent invalidation in infringement suits in Japanese courts and the invalidation rate is high especially after Kilby cas in 2000, where the Japanese Supreme Court decided that a patentee could …

Prometheus' Revenge: Process Patent Ambiguity, Robert Devin Ricci

Robert Devin Ricci

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court returned to historical roots to determine whether a process met the subject matter criteria requirement for patents. The decision to return to historical precedent demonstrates two things: 1) the Court is hesitant to adopt black letter tests for determining patent eligibility and 2) the Court doubts the future applicability of the transformation component of the machine-or-transformation test as technology progresses. Because the decision did not provide any true guidance or light as to how a process claim should be analyzed for subject matter eligibility, the eligibility of such patents …

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 …

Of The Inequals Of The Uruguay Round, Srividhya Ragavan, Srividhya Ragavan

Srividhya Ragavan

Ten years ago, the TRIPs Agreement set a distinct tone in international law by requiring Members to prioritize international trade obligations as a means to achieve national goals. Within the next five years, the AIDS crisis highlighted that compromising pressing national responsibilities-like a looming public health crisis-to fulfill international obligations may, in fact, detrimentally affect international trade. Meanwhile, access to medication continues to be an unresolved issue even as we celebrate the tenth anniversary of TRIPs and the end of the transitional period. This Article suggests that the success of TRIPs depends on its ability to address national responsibilities that …

The Existing Legal Infrastructure Of Brics: Where Have We Been And Where Are We Going?, Robert B. Ahdieh, Zhu (Julie) Lee, Srividhya Ragavan, Kevin Noonan, Clinton W. Francis

Srividhya Ragavan

No abstract provided.

To Patent Or Not To Patent, That Is The Question: Embryonic Stem Cell Patents Rejected In Europe, Amer Raja

Intellectual Property Brief

No abstract provided.

The Russian Ipr Problem: How Accession To The Wto Is Not The Magical Solution, Rather A Step In The Right Direction, Joshua M. Green

Intellectual Property Brief

No abstract provided.