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Articles 1 - 9 of 9
Full-Text Articles in Law
Commercial Success And Patent Standards: Economic Perspectives On Innovation, Robert P. Merges
Commercial Success And Patent Standards: Economic Perspectives On Innovation, Robert P. Merges
Robert P Merges
This Article criticizes a recent line of patent decisions in which the Court of Appeals for the Federal Circuit has considered evidence of an innovation's commercial success in deciding whether to award a patent to the inn innovator. Professor Merges briefly reviews the history of patent law and concludes that one of its principle purposes is to reward "invention," or the achievement of a significant technical advance and thereby to spur innovative technological development. He notes, however, that recently, the Federal Circuit has begun to consider "secondary factors," including the financial success of a commercialized invention, and the extent to …
“An Ingenious Man Enabled By Contract”: Entrepreneurship And The Rise Of Contract, Catherine Fisk
“An Ingenious Man Enabled By Contract”: Entrepreneurship And The Rise Of Contract, Catherine Fisk
Catherine Fisk
A legal ideology emerged in the 1870s that celebrated contract as the body of law with the particular purpose of facilitating the formation of productive exchanges that would enrich the parties to the contract and, therefore, society as a whole. Across the spectrum of intellectual property, courts used the legal fiction of implied contract, and a version of it particularly emphasizing liberty of contract, to shift control of workplace knowledge from skilled employees to firms while suggesting that the emergence of hierarchical control and loss of entrepreneurial opportunity for creative workers was consistent with the free labor ideology that dominated …
Professional And Academic Employee Inventions: Looking Beyond The Uk Paradigm, Justine Pila
Professional And Academic Employee Inventions: Looking Beyond The Uk Paradigm, Justine Pila
Justine Pila
The vast majority of inventions are devised by employees, raising the question who is entitled to patent them? Under the UK Patents Act 1977, the right to patent an invention lies primarily with its inventor(s). However, an exception exists for employee inventions to which section 39(1) applies. The recent decision of the Full Court of the Federal Court of Australia in UWA v Gray raises the question of the applicability of this provision in the university context, in respect of regular academic employees. In that case, the Court relied on UK authorities to support its conclusion that the University of …
Intellectual Property Rights And Detached Human Body Parts, Justine Pila
Intellectual Property Rights And Detached Human Body Parts, Justine Pila
Justine Pila
This paper responds to an invitation by the editors to consider whether the intellectual property (IP) regime suggests an appropriate model for protecting interests in detached human body parts. It begins by outlining the extent of existing IP protection for body parts in Europe, and the relevant strengths and weaknesses of the patent system in that regard. It then considers two further species of IP right of less obvious relevance. The first are the statutory rights of ownership conferred by domestic UK law in respect of employee inventions, and the second are the economic and moral rights recognized by European …
Serious Flaw Of Employee Invention Ownership Under The Bayh-Dole Act In Stanford V. Roche: Finding The Missing Piece Of The Puzzle In The German Employee Invention Act, Toshiko Takenaka Prof.
Serious Flaw Of Employee Invention Ownership Under The Bayh-Dole Act In Stanford V. Roche: Finding The Missing Piece Of The Puzzle In The German Employee Invention Act, Toshiko Takenaka Prof.
Toshiko Takenaka Prof.
In Stanford v. Roche, the Supreme Court highlighted a serious flaw of employee invention ownership under the Bayh-Dole Act (BDA). This article argues that the current BDA is incomplete without a mechanism for contractors to secure the ownership of all federally funded inventions and proposes a revision to introduce such a mechanism from the German Employee Invention Act (EIA). Because the EIA influenced the drafting of the BDA, the EIA and BDA share key features, which make it easy for the BDA to adopt an ownership transfer mechanism from the EIA. This article also proposes to adopt a mechanism to …
Patents For Genes And Methods Of Analysis And Comparison, Justine Pila
Patents For Genes And Methods Of Analysis And Comparison, Justine Pila
Justine Pila
In March 2010, a United States (U.S.) District Court held that isolated human genes are “products of nature”, and methods of analysis and comparison “abstract mental processes”, for which a US patent cannot validly be granted. Its decision undermined U.S. patent granting practices, and widens the gap between U.S. and European law on what constitutes inherently patentable subject matter (“inventions”) and a proportionate patent grant. In this note I consider the case – AMP v USPTO – and its implications for European patent law.
Chemical Products And Proportionate Patents Before And After Generics V Lundbeck, Justine Pila
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) …
The Five Levels Of Inventions- A Classification Of Patents From Triz Perspective, Umakant Mishra
The Five Levels Of Inventions- A Classification Of Patents From Triz Perspective, Umakant Mishra
Umakant Mishra
The Five levels of Inventions is a popular concept in the study of TRIZ. Generally patent databases (like USPTO) classify inventions according to their topics or areas of invention. But they don’t classify inventions according to their easiness or usefulness or inventiveness. Altshuller classified patents into five levels according to their levels of inventiveness. The higher levels of inventions are difficult (and rare) while the lower levels of inventions are easy and plenty in number. This article attempts to explain the five levels of inventions in simple terms and the purpose behind such a classification. Although there are limitations and …
Dispute Over The Meaning Of ‘Invention’ In Article 52(2) Epc: The Patentability Of Computer-Implemented Inventions In Europe, Justine Pila
Dispute Over The Meaning Of ‘Invention’ In Article 52(2) Epc: The Patentability Of Computer-Implemented Inventions In Europe, Justine Pila
Justine Pila
In 2002, the European Economic and Social Committee (ESC) described the doctrinal premise of the European Patent Office´s interpretation of Art. 52(2) of the European Patent Convention as "the product of legal casuistry". The purpose of the current article is to consider that description, and ask whether it is fair, or whether the EPO´s approach to Art. 52 is better ascribed to problems inherent in the EPC itself. Three issues are addressed to that end. The first is the object of the ESC´s criticism: Art. 52(2) and its interpretation by the EPO´s Boards of Appeal. The second is the context …