Law Commons^™

Inventing Around Edison’S Lamp Patent: The Role Of Patents In Stimulating Downstream Development And Competition, Ron D. Katznelson, John Howells

Ron D. Katznelson

We provide the first detailed empirical study of inventing around patent claims. The enforcement of Edison’s incandescent lamp patent in 1891-1894 stimulated a surge of patenting. Most of these later patents disclosed inventions around the Edison patent. Some of these patents introduced important new technology in their own right and became prior art for new fields, indicating that invention around patents contributes to dynamic efficiency. Contrary to widespread contemporary understanding, the Edison lamp patent did not suppress technological advance in electric lighting. The market position of General Electric (“GE”), the Edison patent-owner, weakened through the period of this patent’s enforcement.

Joinder Of Unrelated Infringers As Defendants In Patent Litigation Under The Jurisprudence Of The United States District Court For Eastern District Of Texas—A Critical Review, Ping-Hsun Chen

Ping-Hsun Chen

On September 16, 2011, the American patent system started a new era because of the enactment of the Leahy-Smith America Invents Act (“AIA”). 35 U.S.C. § 299 was enacted to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed. By introducing § 299, Congress intended to abrogate such approach. Later, the Federal Circuit in In re EMC limited the practice of Rule 20 and required a …

Inventorship, Double Patenting, And The America Invents Act, N. Scott Pierce

N. Scott Pierce

The Leahy-Smith America Invents Act of 2011 (AIA) defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” Prior art that consists of a “disclosure . . . made by the inventor or joint inventor” or “subject matter [that] had, before such disclosure, been publicly disclosed by the inventor or a joint inventor,” when disclosure is “made 1 year or less before the effective filing date of a claimed invention,” is excepted from the novelty requirement. However, there is nothing in the AIA or its legislative …

From Kafka To Kafta: Intellectual Property, And The Korea-Australia Free Trade Agreement, Matthew Rimmer

Matthew Rimmer

The Korea-Australia Free Trade Agreement 2014 (KAFTA) is a Kafkaesque agreement – with its secret texts, speculative claims, and shadowy tribunals. Australia and South Korea have signed a new free trade agreement - the Korea-Australia Free Trade Agreement2014 (KAFTA). Is it a fair trade fairytale? Or is it a dirty deal done dirt cheap? Or somewhere in between? It is hard to tell, given the initial secrecy of the negotiations, and the complexity of the texts of the agreement. There has been much debate in the Australian Parliament over the transparency of the trade agreement; the scope of market access …

Short-Circuiting Contract Law: The Federal Circuit's Contract Law Jurisprudence And Intellectual Property Federalism, Shubha Ghosh

Shubha Ghosh

The Federal Circuit was established in 1982 as an appellate court with limited jurisdiction over patent claims. However, the Federal Circuit has used this limited jurisdiction to expand its reach into contract law, developing a federal common law of contract. Given the growing importance of patent litigation in the past three decades, this creation of an independent body of contract law creates uncertainty in transactions involving patents. This troublesome development received attention in Stanford v Roche, a 2011 Supreme Court decision upholding the Federal Circuit's invalidation of a patent assignment to Stanford University. This Article documents the development of …

The Infringement Continuum, Bernard H. Chao

Bernard H Chao

For many years, patent law has struggled with the issue of permissible claim scope. A patent’s specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations; suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after arising technology.

Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill-suited for patent law. Under these doctrines, as a claim encompasses subject matter further …

Food For Thought: Genetically Modified Seeds As De Facto Standard Essential Patents, Benjamin M. Cole, Brent J. Horton, Ryan G. Vacca

Ryan G. Vacca

For several years, courts have been improperly calculating damages in cases involving the unlicensed use of genetically-modified (GM) seed technology. In particular, when courts determine patent damages based on the hypothetical negotiation method, they err in exaggerating these damages to a point where no rational negotiator would agree. In response, we propose a limited affirmative defense of an implied license due to the patent’s status as a de facto standard essential patent. To be classified as a de facto standard essential patent, the farmer must prove three elements that reflect the peculiarities of GM seeds used in farming: (1) dominance, …

Patenting Thoughts, J. Ryan Lawlis

J. Ryan Lawlis

This paper argues that patents drawn towards computer-implemented inventions must overcome the overlooked fourth categorical bar on patent eligibility under 35 USC 101, the bar on mental processes. This paper arrives at this conclusion by way of an analysis of the questions for en banc rehearing presented by the Court of Appeals for the Federal Circuit in CLS Bank Intern. v. Alice Corp. Pty. Ltd., 484 Fed.Appx. 559 (Fed. Cir. 2012), asking what test should be used to analyze computer-implemented patent eligibility.

This paper first defines the historical context of subject matter eligibility for patent, beginning with the founding …

What Should Be Patentable? A Proposal For Determining The Existence Of Statutory Subject Matter Under 35 U.S.C. Sec. 101, Andrew Beckerman Rodau

Andrew Beckerman Rodau

The question of what type of inventions should be protectable under patent law is a controversial issue that has received significant attention. Recent Supreme Court decisions reject a bright line test in favor of a more-opened ended approach to determining patent eligibility. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled. Most inventions fit within the statutory requirements defining patent-eligible inventions. This article will examine the scope of patent-eligible subject matter defined by patent law section 101. It will look at judicial interpretation of the statute including exceptions judicially engrafted onto the statute by the …

Policy Tailors And The Rookie Regulator, Sarah Tran

Sarah Tran

Commentators have long lamented the lack of policy tailoring in the patent system. But unlike other administrative agencies, who regularly tailor regulatory policies to the needs of specific industries, the U.S. Patent and Trademark Office (“PTO”) was widely believed to lack the authority and institutional competence for such policymaking. This Article provides the first comprehensive analysis of recent legislative reforms to the PTO’s policymaking authority. It shows the reforms empower the PTO to have a larger say in patent policy than ever before. The big question is thus: to what extent is it good policy for a rookie regulator to …

Intellectual Property And Public Health – A White Paper, Ryan G. Vacca, Jim Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Kathy Strandburg, Kara Swanson, Andrew Torrance, Katharine Van Tassel

Ryan G. Vacca

On October 26, 2012, the University of Akron School of Law’s Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

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, …

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 …

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:

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. …

Building The Global Green Patent Highway: A Proposal For International Harmonization Of Green Technology Fast Track Programs, Eric L. Lane

Eric L. Lane

As governments around the world recognize the importance of development and implementation of clean technologies in mitigating climate change, they have looked to patenting procedures as a mechanism to promote and accelerate green innovation. In particular, many national intellectual property offices have implemented programs that provide expedited examination of patent applications directed to green technologies. These green patent fast track programs vary widely in their rules, both in eligibility requirements and process parameters. Due to these disparities, it can be costly and time consuming for applicants and their patent attorneys to select which green technology patent fast track programs to …

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 …

Patent Claim Apportionment, Patentee Injury And Sequential Invention, Amy L. Landers

Amy L Landers

Reasonable royalty compensation for patent infringement is the most popular form of recovery and becomes more so every year. This may be based on the unfortunate but accurate perception that patentees can win big using the overly malleable legal standards that now govern such awards. One of the most glaring shortcomings of the standard is that it permits an award of a reasonable royalty based on doctrine that has lost touch with its statutory purpose.

This article sets forth a theory of patentee injury to establish a causative link between the inventive contribution and the reasonable royalty award. After doing …

Patent Cases And Jurisdiction Controversies, Amelia Smith Rinehart

Amelia Smith Rinehart

No abstract provided.

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 …

Harvesting Intellectual Property: "Inspired Beginnings" And "Work Makes Work," Two Stages In The Creative Processes Of Artists And Innovators, Jessica M. Silbey

Jessica Silbey

This Article is part of a larger empirical study based on face-to-face interviews with artists, scientists, engineers, their lawyers, agents, and business partners. The book-length project involves the collecting and analysis of stories from artists, scientists, and engineers about how and why they create and innovate. It also collects stories from their employers, business partners, managers, and lawyers about their role in facilitating the process of creating and innovating. The book’s aim is to make sense of the intersection between intellectual property law and creative and innovative activity, specifically to discern how intellectual property intervenes in the careers of the …

Acting Like An Administrative Agency: The Federal Circuit En Banc, Ryan G. Vacca

Ryan G. Vacca

When Congress created the Federal Circuit in 1982, it thought it was creating a court of appeals. Little did it know that it was also creating a quasi-administrative agency that would engage in substantive rulemaking and set policy in a manner substantially similar to administrative agencies. In this Article, I examine the Federal Circuit's practices when it orders a case to be heard en banc and illustrate how these practices cause the Federal Circuit to look very much like an administrative agency engaging in substantive rulemaking. The number and breadth of questions the Federal Circuit agrees to hear en banc …

Association Of Molecular Pathology Meets Therasense: Analyzing The Unenforceability Of Isolated-Sequence-Related Patents For Upenn, Columbia, Nyu, Yale, And Emory, Sam S. Han Ph.D.

Sam Han

37 CFR 1.56 requires disclosure of material information to the United States Patent and Trademark Office ("USPTO" or "PTO") when applying for a patent. This duty is imposed on (1) each inventor; (2) each attorney or agent who prepares or prosecutes the application; and (3) every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application. Thus, for academic institutions, those who handle patent prosecution for the institution are bound by this duty …

A Critique Of Mark Lemley’S “The Myth Of The Sole Inventor”, John Howells, Ron D. Katznelson

Ron D. Katznelson

In a forthcoming article in the Michigan Law Review, Professor Mark Lemley advances a thesis that “the canonical story of the lone genius inventor is largely a myth” and describes a selection of pioneer inventions to support his thesis. We show that Lemley has many of his facts wrong. We examine his assertions and set the record straight in the pioneer invention cases of Edison, the Wright brothers, the Selden automobile patent vis a vis Ford, Watt and the steam engine and Fleming and penicillin. We are concerned with the errors in alleged historical and legal facts in what Lemley …

Should Posts On Social Networking Websites Be Considered "Printed Publications" Under Patent Law?, Xiaojing Li

Xiaojing Li

The emergence of social networking websites imposes a challenge to patent law. Courts should not make a blanket assumption that everything posted on social websites constitute a printed publication. Rather, courts should adopt a refined multiple factor test to help the analysis. This proposal would result in a balance between private and public interests in an invention, and therefore help achieve the ultimate goal of patent law.

The Evolving Role Of Opinions Of Patent Counsel In Federal Circuit Cases, Lynda J. Oswald

Lynda J Oswald

In recent years, an unexpected intersection has emerged in U.S. patent law in two types of cases addressing the roles of opinions of counsel: (1) those addressing willful infringement and enhanced damages; and (2) those addressing inducement of infringement. The U.S. Court of Appeals for the Federal Circuit appears to be weakening the role of patent opinions for willfulness determinations, but strengthening the role of such opinions in inducement cases. In light of these developments, companies doing business in the U.S., whether U.S.- or foreign-based, would do well as a strategic matter to err on the side of caution and …

Patently Obvious: Why The District Court's Ruling In Association For Molecular Pathology V. Uspto Is Incomplete, Kristin Wall

Kristin Wall

In March of 2010, the United States Court of Appeals for the Southern District of New York invalidated Myriad Genetics’ patents on the BRCA1/2 genes, which predict susceptibility to breast and ovarian cancer. Prior to this decision, the USPTO and the legal system at large accepted patents relating to human genes as patentable subject matter. In opposition to this standard, the District Court found that human DNA sequences are inherently products of nature and thus fail under 35 U.S.C. § 101.

The Court should not have stopped there, however. The Intellectual Property Clause of the U.S. Constitution creates a standard …