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Articles 1 - 29 of 29
Full-Text Articles in Law
Death Of Copyright, Paul Gugliuzza
Death Of Copyright, Paul Gugliuzza
Faculty Scholarship
The four primary bodies of intellectual property law—patent law, copyright law, trademark law, and the law of trade secrets—address the question of duration in different ways. Trade secrets have no fixed duration; the law protects against misappropriation as long as the relevant information remains secret. Trademark protection lasts as long as the mark retains its capacity to distinguish the goods or services it is attached to. In patent law—my primary area of scholarship—duration is fixed, finite, and generally straightforward to determine: you get twenty years from the date you file your patent application. Copyright duration, by contrast, varies depending on …
18th Annual Recent Developments In Ip Law And Policy Conference, Golden Gate University School Of Law
18th Annual Recent Developments In Ip Law And Policy Conference, Golden Gate University School Of Law
Intellectual Property Law
Welcome to the 18th Annual Conference on Recent Developments in Intellectual Property Law and Policy, presented by the Center for Intellectual Property and Privacy Law (CIPPL) of Golden Gate University School of Law. This annual tradition, begun in late September 2001, was one of the first events developed as part of the foundation of our new IP Law Program. Over the years we have hosted presentations by leading thinkers in the area of IP Law, including Professor & former Senior Advisor to the Obama Administration Justin Hughes, New Yorker writer Ken Auletta, Professor Dan Burk, Professor Susan Scafidi of the …
A Functional Approach To Judicial Review Of Ptab Rulings On Mixed Questions Of Law And Fact, Rebecca S. Eisenberg
A Functional Approach To Judicial Review Of Ptab Rulings On Mixed Questions Of Law And Fact, Rebecca S. Eisenberg
Articles
The Court of Appeals for the Federal Circuit (“Federal Circuit”) has long relied on active appellate review to bring uniformity and clarity to patent law. It initially treated the PTO the same as the federal district courts, reviewing its factual findings for clear error and its legal conclusions de novo. Following reversal by the Supreme Court in Dickinson v. Zurko, the Federal Circuit began giving greater deference to PTO factual findings. But it continued to review the PTO’s legal conclusions de novo, while coding an expansive list of disputed issues in patent cases as legal conclusions, even when they …
Diminishing Uncertainty In Software Patents: After The Supreme Court Denied Certiorari For Synopsys Inc. V. Mentor Graphics Corp., Kayla Hope Barnes
Diminishing Uncertainty In Software Patents: After The Supreme Court Denied Certiorari For Synopsys Inc. V. Mentor Graphics Corp., Kayla Hope Barnes
Journal of Intellectual Property Law
There is currently a gap in United States' patent law that is threatening American innovation. The lack of predictability of the patent eligibility of new computer software has left many to wonder what the future holds for the industry. This idea is illustrated by the Global Intellectual Property Center's most recent patent protection rankings where, for the first time, the Global Intellectual Property Center ranked the United States tenth in patent protection tied with Hungary. To put this in perspective, the Center ranked the United States as the best country for patents in 2016. The 2017 report cites "uncertainty" in …
Protecting Blockchain Investments In A Patent Troll World, Kelli Spearman
Protecting Blockchain Investments In A Patent Troll World, Kelli Spearman
Journal of Intellectual Property Law
When blockchain technology was first introduced via the now-infamous Bitcoin in 2008, it was almost immediately recognized by the tech industry as being even more valuable (and certainly less volatile) than the cryptocurrency it embodied. The publicly distributed ledger known as the blockchain has created a frenzy that is continuing to grow as industries explore future adaptations of the technology. Following this explosion of cross-industry innovation, intellectual property issues naturally follow as early adaptors seek to capture the value of pioneering new blockchain technology. The rising popularity of the blockchain has created an intellectual property gold-rush as firms hoping to …
The Shifting Landscape Of Medicine: Patents Of Personalized Biologic Treatments And Their Potential Conflicts With Right-To-Try Laws, Johnson T. Laney
The Shifting Landscape Of Medicine: Patents Of Personalized Biologic Treatments And Their Potential Conflicts With Right-To-Try Laws, Johnson T. Laney
Journal of Intellectual Property Law
The United States has gone back and forth over whether its citizens have a moral right to access potentially life sustaining or lifesaving treatment when they are terminally ill. Currently, forty-one states and the US Senate have passed "right to try" laws that permit terminally ill patients to have access to experimental treatments that have not yet received FDA approval. The United States has had a difficult time determining whether a patient has the right to refuse life-sustaining or lifesaving treatment because of fear that the patient is suicidal. The Supreme Court has addressed this problem and determined that the …
Monetizing Tribal And State Sovereign Immunity In Patent Law: An Attempt To Neutralize The Patent Death Squad, Sean P. Belding
Monetizing Tribal And State Sovereign Immunity In Patent Law: An Attempt To Neutralize The Patent Death Squad, Sean P. Belding
Journal of Intellectual Property Law
On September 8, 2017, Allergan announced the assignment of six of its patents to the St. Regis Mohawk Tribe. These six patents protected Allergan 's exclusivity over the blockbuster drug RESTASIS and were at risk of invalidity due to an inter partes review proceeding. In return for substantial monetary consideration, the Mohawk Tribe granted Allergan an exclusive license back and agreed to invoke its tribal sovereign immunity in an attempt to obtain a dismissal of the inter partes review proceedings against the RESTASIS patents. Allergan's strategy is an attempt to monetize sovereign immunity that raises significant concerns in patent law …
Elite Patent Law, Paul Gugliuzza
Elite Patent Law, Paul Gugliuzza
Faculty Scholarship
Over the last twenty years, one of the most significant developments in intellectual property law has been the dramatic increase in the number of patent cases decided by the U.S. Supreme Court. That same time period has also seen the emergence of a small, elite group of lawyers specializing not in any particular area of substantive law but in litigation before the Supreme Court. In recent empirical work, I linked the Court’s growing interest in patent law to the more frequent participation of elite Supreme Court lawyers in patent cases, particularly at the cert. stage. Among other things, I found …
Opting Into Device Regulation In The Face Of Uncertain Patentability, Rebecca S. Eisenberg
Opting Into Device Regulation In The Face Of Uncertain Patentability, Rebecca S. Eisenberg
Articles
This article examines the intersection of patent law, FDA regulation, and Medicare coverage in a particularly promising field of biomedical innovation: genetic diagnostic testing. First, I will discuss current clinical uses of genetic testing and directions for further research, with a focus on cancer, the field in which genetic testing has had the greatest impact to date. Second, I will turn to patent law and address two recent Supreme Court decisions that called into question the patentability of many of the most important advances in genetic testing. Third, I will step outside patent law to take a broader view of …
Repealing Patents, Christopher Beauchamp
Repealing Patents, Christopher Beauchamp
Vanderbilt Law Review
The first known patent case in the United States courts did not enforce a patent. Instead, it sought to repeal one. The practice of cancelling granted patent rights has appeared in various forms over the past two-and-a-quarter centuries, from the earliest U.S. patent law in 1790 to the new regime of inter partes review and post-grant review. With the Supreme Court's recent scrutiny of the constitutionality of inter partes review, this history has taken on a new significance.
This Article uses new archival sources to uncover the history of patent cancellation during the first half-century of American patent law. These …
Computational Experimentation, Tabrez Y. Ebrahim
Computational Experimentation, Tabrez Y. Ebrahim
Vanderbilt Journal of Entertainment & Technology Law
Experimentation conjures images of laboratories and equipment in biotechnology, chemistry, materials science, and pharmaceuticals. Yet modern day experimentation is not limited to only chemical synthesis, but is increasingly computational. Researchers in the unpredictable arts can experiment upon the functions, properties, reactions, and structures of chemical compounds with highly accurate computational techniques. These computational capabilities challenge the enablement and utility patentability requirements. The patent statute requires that the inventor explain how to make and use the invention without undue experimentation and that the invention have at least substantial and specific utility. These patentability requirements do not align with computational research capabilities, …
The Supreme Court Bar At The Bar Of Patents, Paul Gugliuzza
The Supreme Court Bar At The Bar Of Patents, Paul Gugliuzza
Faculty Scholarship
Over the past two decades, a few dozen lawyers have come to dominate practice before the U.S. Supreme Court. By many accounts, these elite lawyers—whose clients are often among the largest corporations in the world—have spurred the Court to hear more cases that businesses care about and to decide those cases in favor of their clients. The Supreme Court’s recent case law on antitrust, arbitration, punitive damages, class actions, and more provides copious examples.
Though it is often overlooked in discussions of the emergent Supreme Court bar, patent law is another area in which the Court’s agenda has changed significantly …
Does Patented Information Promote The Progress Of Technology?, Jonathan H. Ashtor
Does Patented Information Promote The Progress Of Technology?, Jonathan H. Ashtor
Northwestern University Law Review
This Article investigates the relationship between the exclusive rights of patents, their information disclosures, and the impact they have on the development of future technologies. An examination of over 1000 patents that courts have held valid or invalid reveals a significant positive relationship. Specifically, the private rights and technological impact of patents rise and fall together, and moreover, both are related to the quantity of new and useful technical information contained in their disclosures.
This Article identifies, for the first time, significant differences between the technological impact of valid patents and invalid patents, as measured by the future patented inventions …
Specialized Trial Courts In Patent Litigation: A Review Of The Patent Pilot Program's Impact On Appellate Reversal Rates At The Five-Year Mark, Amy Semet
Journal Articles
Do specialized trial court judges make more accurate decisions in patent law cases? In 2011, Congress passed a law setting up a ten-year patent law pilot program to enhance expertise in patent litigation by funneling more trial court decisions to fourteen selected district courts. Now that the five-year mark has passed, has the program had its intended effect of increasing accuracy, as measured by less reversal by the appellate court? In this Article, I analyze over 20,000 trial-court patent cases filed from late 2011 to 2016, focusing specifically on whether cases heard by district court judges participating in the patent …
Saliency, Anchors & Frames: A Multicomponent Damages Experiment, Bernard Chao
Saliency, Anchors & Frames: A Multicomponent Damages Experiment, Bernard Chao
Michigan Technology Law Review
Modern technology products contain thousands, sometimes hundreds of thousands, of different features. Nonetheless, when electronics manufacturers are sued for patent infringement, these suits typically accuse only one feature, or in more complex suits, a handful of features, of actual patent infringement. But damages verdicts often do not reflect the relatively small contribution an individual patent makes to an infringing product. One study observed that verdicts in these types of cases average 9.98% of the price of the entire product. While both courts and commentators have blamed the law of patent damages, the role cognitive biases play in these outsized damages …
Patents For Sharing, Toshiko Takenaka
Patents For Sharing, Toshiko Takenaka
Michigan Technology Law Review
Spurred by the Internet, emerging technologies have changed the way commercial firms innovate and have made it possible for individuals to play an important role in that innovation. Producers in the Information Communication Technologies (ICT), and other sectors dealing with complex technologies with many separately patentable components, find it increasingly difficult to make products without infringing on patents held by others. Numerous overlapping patents often cover such products. Producers have developed a new way to use patents: as inclusive rights for sharing their technologies with others through cross-licensing and other private ordering arrangements in order to ensure the freedom to …
A Patent Reformist Supreme Court And Its Unearthed Precedent, Samuel F. Ernst
A Patent Reformist Supreme Court And Its Unearthed Precedent, Samuel F. Ernst
Publications
This paper examines the twenty-eight Supreme Court opinions overruling the Federal Circuit since 2000 and quantifies their rationales to discover that, while these reasons are often invoked, the Supreme Court’s most common rationale is that the Federal Circuit has disregarded or cabined its older precedent from before the 1982 creation of the Federal Circuit, from before the 1952 Patent Act, and even from before the 20th Century. The Court has relied on this rationale in twenty-one of the twenty-eight cases. The paper then seeks to probe beneath the surface level patterns to discover the deeper roots of the discord between …
Online Appendix To Irrational Ignorance At The Patent Office, Michael D. Frakes, Melissa F. Wasserman
Online Appendix To Irrational Ignorance At The Patent Office, Michael D. Frakes, Melissa F. Wasserman
Vanderbilt Law Review
In this Section of the Appendix, we discuss a bounded analysis of the personnel costs to the Patent Office (“the Agency”) that result from doubling patent examiner time allocations. In particular, we adopt different multipliers to account for the full cost of a patent examiner to the Patent Office in excess of their base salary. As discussed in Section II.A, we assume a 2.04 factor of an employee’s base salary to account for fringe benefits, employer taxes and insurance, and allotments for office space, rent, equipment, replacement/turnover cost, managerial support, etc. Below, we repeat the calculation in Table 2 of …
Reviewing St. Regis: Unresolved Issues At The Intersection Of Tribal Sovereign Immunity And Patent Law, Lucas Paez
Reviewing St. Regis: Unresolved Issues At The Intersection Of Tribal Sovereign Immunity And Patent Law, Lucas Paez
Vanderbilt Journal of Entertainment & Technology Law
In July 2018, the Federal Circuit ruled that sovereign immunity does not circumvent an inter partes review brought by the Patent Trial and Appeal Board. By deciding against the tribe in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals ("St. Regis"), the court determined that inter partes reviews are adjudicatory proceedings brought by the United States Patent and Trademark Office, and not an action brought by a private party. This ruling was the second significant ruling regarding inter partes reviews of the year, the first being the Supreme Court holding that inter partes reviews are constitutional. While the specific matter in …
Prior Art In Inter Partes Review, Stephen Yelderman
Prior Art In Inter Partes Review, Stephen Yelderman
Journal Articles
This Essay is an empirical study of the evidence the Patent Trial and Appeal Board relies upon when cancelling patents in inter partes review. To construct our dataset, we collected every final written decision invalidating a patent claim over a twelve-month period. We coded individual invalidation events on a reference-by-reference, claim-by-claim basis. Drawing on this dataset, we report a number of details about the prior art supporting patent cancellation, including the frequency with which U.S. patents, foreign patents, and printed publications were cited, the frequency with which the invalidating prior art would have been amenable to a pre-filing prior art …
Intellectual Property: A Beacon For Reform Of Investor-State Dispute Settlement, Daniel Gervais
Intellectual Property: A Beacon For Reform Of Investor-State Dispute Settlement, Daniel Gervais
Michigan Journal of International Law
This Article attempts to resolve clashes between intellectual property and investor-state dispute settlement (“ISDS”). ISDS clauses contained in bilateral, plurilateral, or multilateral trade and investment agreements give multinational investors (corporations) a right to sue a state in a binding proceeding before an independent arbitral tribunal. This jurisgenerative right to file a claim against a state in an international tribunal with mandatory jurisdiction is exceptional; it is generally reserved to other states. Only multinational corporations can use ISDS to file claims against states in which they invest, provided the state is party to a bilateral investment treaty (“BIT”) or a trade …
Data-Centric Technoloiges: Patent And Copyright Doctrinal Disruptions, Tabrez Y. Ebrahim
Data-Centric Technoloiges: Patent And Copyright Doctrinal Disruptions, Tabrez Y. Ebrahim
Nova Law Review
Data-centric technologies create information content that directly controls, modifies, or responds to the physical world. This information content resides in the digital world yet has profound economic and societal impact in the physical world. 3D printing and artificial intelligence are examples of data-centric technologies. 3D printing utilizes digital data for eventual printing of physical goods. Artificial intelligence learns from data sets to make predictions or automated decisions for use in physical applications and systems. 3D printing and artificial intelligence technologies are based on digital foundations, blur the digital and physical divide, and dramatically improve physical goods, objects, products, or systems. …
Nova Law Review Full Issue Volume 43, Issue 3
Prior Art In The District Court, Stephen Yelderman
Prior Art In The District Court, Stephen Yelderman
Journal Articles
This article is an empirical study of the evidence district courts rely upon when invalidating patents. To construct our dataset, we collected every district court ruling, verdict form, and opinion (whether reported or unreported) invalidating a patent claim over a six-and-a-half-year period. We then coded individual invalidation events based on the prior art supporting the court’s analysis. In the end, we observed 3,320 invalidation events based on 817 distinct prior art references.
The nature of the prior art relied upon to invalidate patents informs the value of district court litigation as an error correction tool. The public interest in revoking …
Patent Law And The Emigration Of Innovation, Greg Day, Steven Udick
Patent Law And The Emigration Of Innovation, Greg Day, Steven Udick
Scholarly Works
Legislators and industry leaders claim that patent strength in the United States has declined, causing firms to innovate in foreign countries. However, scholarship has largely dismissed the theory that foreign patents have any effect on where firms invent, considering that patent law is bound by strict territorial limitations (as a result, one cannot strengthen their patent protection by innovating abroad). In essence, then, industry leaders are deeply divided from scholarship about whether innovative firms seek out jurisdictions offering stronger patent rights, affecting the rate of innovation.
To resolve this puzzle, we offer a novel theory of patent rights — which …
Computational Experimentation, Tabrez Y. Ebrahim
Computational Experimentation, Tabrez Y. Ebrahim
Faculty Scholarship
Experimentation conjures images of laboratories and equipment in biotechnology, chemistry, materials science, and pharmaceuticals. Yet modern day experimentation is not limited to only chemical synthesis, but is increasingly computational. Researchers in the unpredictable arts can experiment upon the functions, properties, reactions, and structures of chemical compounds with highly accurate computational techniques. These computational capabilities challenge the enablement and utility patentability requirements. The patent statute requires that the inventor explain how to make and use the invention without undue experimentation and that the invention have at least substantial and specific utility. These patentability requirements do not align with computational research capabilities, …
Automation And Predictive Analytics In Patent Prosecution: Uspto Implications And Policy, Tabrez Y. Ebrahim
Automation And Predictive Analytics In Patent Prosecution: Uspto Implications And Policy, Tabrez Y. Ebrahim
Faculty Scholarship
Artificial-intelligence technological advancements bring automation and predictive analytics into patent prosecution. The information asymmetry between inventors and patent examiners is expanded by artificial intelligence, which transforms the inventor-examiner interaction to machine-human interactions. In response to automated patent drafting, automated office-action responses, "cloems" (computer-generated word permutations) for defensive patenting, and machine-learning guidance (based on constantly updated patent-prosecution big data), the United States Patent and Trademark Office (USPTO) should reevaluate patent-examination policy from economic, fairness, time, and transparency perspectives. By conceptualizing the inventor-examiner relationship as a "patenting market," economic principles suggest stronger efficiencies if both inventors and the USPTO have better information …
Data-Centric Technologies: Patent And Copyright Doctrinal Disruptions, Tabrez Y. Ebrahim
Data-Centric Technologies: Patent And Copyright Doctrinal Disruptions, Tabrez Y. Ebrahim
Faculty Scholarship
Data-centric technologies create information content that directly controls, modifies, or responds to the physical world. This information content resides in the digital world yet has profound economic and societal impact in the physical world. 3D printing and artificial intelligence are examples of data-centric technologies. 3D printing utilizes digital data for eventual printing of physical goods. Artificial intelligence learns from data sets to make predictions or automated decisions for use in physical applications and systems. 3D printing and artificial intelligence technologies are based on digital foundations, blur the digital and physical divide, and dramatically improve physical goods, objects, products, or systems. …
Rising Confusion About 'Arising Under' Jurisdiction In Patent Cases, Paul Gugliuzza
Rising Confusion About 'Arising Under' Jurisdiction In Patent Cases, Paul Gugliuzza
Faculty Scholarship
By statute, all cases “arising under” patent law must be heard exclusively by the federal courts (not state courts) and, on appeal, by the Federal Circuit (not the twelve regional circuits). But not all cases involving patents “arise under” patent law. As recently as 2013, the Supreme Court ruled that the mere need to apply patent law in, for example, a malpractice case involving a patent lawyer, is insufficient to trigger exclusive jurisdiction. Rather, the Court held, for a case that does not involve claims of patent infringement to arise under patent law, the patent issue must be “important . …