Law Commons^™

How A Changing Nation Is Fueling The Rise Of Trade Secret Litigation, David S. Almeling

David S. Almeling

Reports of pilfered trade secrets have grown increasingly common, and as recent studies demonstrate, trade secret litigation is on the rise. A 2010 study of the federal courts shows that trade secret litigation has grown exponentially while litigation in general has decreased. And a 2011 study of state courts shows that trade secret litigation is increasing at a faster rate than the rate of litigation in general. This essay asks: Why? Why is trade secret litigation more prevalent than ever? This essay posits — for the first time — explanations for the fact that trade secrets are increasingly important to …

Copyright For Engineered Dna: An Idea Whose Time Has Come?, Christopher M. Holman

Christopher M Holman

The rapidly emerging field of synthetic biology has tremendous potential to address some of the most compelling challenges facing our planet, by providing clean renewable energy, nutritionally-enhanced and environmentally friendly agricultural products, and revolutionary new life-saving cures. However, leaders in the synthetic biology movement have voiced concern that biotechnology's current patent-centric approach to intellectual property is in many ways ill-suited to meet the challenge of synthetic biology, threatening to impede follow-on innovation and open access technology. For years, copyright and patent protection for computer software have existed side-by-side, the two forms of intellectual property complementing one another. Numerous academic commentators …

Towards A Holistic Approach To Technology And Climate Change: What Would Form Part Of An Answer?, Estelle Derclaye, Abbe Brown

Estelle Derclaye

No abstract provided.

Unwinding A Case: Issues That May Arise Regarding Settlement Agreements In Patent Infringement Litigation, Jayme Partridge, Jayne Piana

Jayme Partridge

In a patent infringement case, district court orders such as an unfavorable claim construction or a partial summary judgment of invalidity may have a devastating effect not only on present litigation but on any subsequent litigation involving the same patents. Are these orders preclusive in subsequent litigation? For example, is the patentee precluded from asserting a patent where there has been a partial summary judgment finding of invalidity in prior litigation? What can the patentee do to mitigate the effect of an unfavorable ruling on subsequent litigation? This article reviews these issues in detail, including the different standards applied by …

Inequitable Conduct: A Flawed Doctrine Worth Saving, Lisa A. Dolak

Lisa A Dolak

A growing chorus of voices is calling for reform or even elimination of the doctrine of inequitable conduct. Critics argue that innocent or even irrelevant prosecution mistakes can be met with the ultimate penalty: unenforceability of the entire patent.

There is no question the doctrine is in need of repair. Patent owners are subject to different materiality standards in the U.S. Patent and Trademark Office and the courts. Inequitable conduct charges can be based on information completely immaterial to patentability. Findings of deceptive intent are increasingly based on inference and not evidence. And the one-size-fits-all remedy of total unenforceability deprives …

Patent Litigation, Personal Jurisdiction, And The Public Good, Megan M. La Belle

Megan M La Belle

There is consensus among scholars, policymakers, and industry leaders that our patent system currently faces a crisis of confidence as a result of the proliferation of bad patents. For now, validity challenges asserted in litigation – usually as a defense to a claim of patent infringement – serve as the primary gatekeeper of patent quality. When an alleged infringer’s validity challenge is successful, the court invalidates the patent and the intellectual property enters the public domain where anyone may use it. This creates a “public good” which inures to the benefit of society at large. In recent years, scholars have …

Is "Best Mode" The Worst? Dueling Arguments, Empirical Analysis, And Recommendations For Reform, Wesley D. Markham

Wesley D Markham

The “best mode” requirement, which mandates that an inventor disclose in her patent application the best way to practice her invention, has become a polarizing force as Congress endeavors to comprehensively revamp U.S. patent law. In this article, I examine the “best mode” requirement through a variety of lenses. In doing so, my ultimate goal is to recommend the ideal course of action for “best mode” reform – to fix “best mode,” if it is indeed broken, or to scuttle it if it is beyond repair. To begin, I set forth and evaluate the arguments advanced by both proponents and …

Not Only Innovation But Also Collaboration, Funding, Goodwill And Commitment: Which Role For Patent Laws In Postcopenhagen Climate Change Action, Estelle Derclaye

Estelle Derclaye

Patent laws can do their bit to help reduce our greenhouse gas emissions. In 2009, accelerated grant procedures and reduction of fees have been put in place by among others the UK and US patent offices. Private initiatives such as the eco-patent commons to licence technology free of charge have been taken. But greening patent law is only a small part of the solution. However well-intentioned all these initiatives are, for several reasons, they may not be sufficient or even at all used. More than intellectual property-related solutions, what will be needed is non-intellectual property-related solutions such as using technology …

The Hacker's Aegis, Derek E. Bambauer, Oliver Day

Derek Bambauer

Intellectual property law stifles critical research on software security vulnerabilities, placing computer users at risk. Researchers who discover flaws often face IP-based legal threats if they reveal findings to anyone other than the software vendor. This Article argues that the interplay between law and vulnerability data challenges existing scholarship on how intellectual property should regulate information about improvements on protected works, and suggests weakening, not enhancing, IP protections where infringement is difficult to detect, lucrative, and creates significant negative externalities. It proposes a set of three reforms – “patches,” in software terms – to protect security research. Legal reform would …

Patent Busting With Prior Art?, Brendan O. Baggot

Brendan O. Baggot

Although there are many routes to invalidating a patent, what are the chances of finding prior art missed during U .S. prosecution? What are some of the factors that influence the outcome of a patent search? How can one assess a priori the likelihood of uncovering “new” prior art? How does the specific technology affect the outcome? These and other

Overcoming The "Impossible Issue" Of Nonobviousness In Design Patents, Janice M. Mueller, Daniel Harris Brean

Janice M Mueller

The United States offers legal protection for designs—the overall aesthetic appearances of objects—through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitarian device mandates a “nonobvious” advance over earlier technology, the patentability of a new and ornamental design requires that it differ from prior designs to an extent that would not have been “obvious to a designer of ordinary skill who designs articles of the type involved.” Ostensibly promoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that …

Enhanced Damages Analysis Post-Seagate, Christopher Comiskey

Christopher Comiskey

With section 284 of the Patent Act, the Congress provided permissively that a court “may” enhance damages. Shortly after the birth of the Court of Appeals of the Federal Circuit, the court ‘grafted’ a showing of willfulness as a necessary precursor to enhancing damages. For almost a quarter century the rule has required a threshold fact finding before allowing a District Court to exert its own ‘discretion’ as to how much to enhance damages, if at all. While the District Courts have had freedom to exert there discretion, the Federal Circuit has required that they weigh out a set of …

Quantifying The Cost Of Substandard Patents: Some Preliminary Evidence, George S. Ford, T. Randolph Beard, Thomas M. Koutsky, Lawrence J. Spiwak

GEORGE S FORD

The purpose of patent policy is to balance the incentive to invent against the ability of the economy to utilize and incorporate new inventions and innovations. Substandard patents that upset this balance impose deadweight losses and other costs on the economy. In this paper, we examine some of the deadweight losses that result from granting substandard patents in the United States. Under plausible assumptions, we find that the economic losses resulting from the grant of substandard patents can reach $21 billion per year by deterring valid research with an additional deadweight loss from litigation and administrative costs of $4.5 billion …

The Impact Of General And Patent-Specific Judicial Experience On The Efficiency And Accuracy Of Patent Adjudication, Jay P. Kesan

Jay P. Kesan

The Impact of General and Patent-Specific Judicial Experience On the Efficiency and Accuracy of Patent Adjudication Jay P. Kesan and Gwendolyn G. Ball University of Illinois ABSTRACT The creation of the U.S. Court of Appeals for the Federal Circuit (CAFC) is generally regarded as an improvement in the system of patent adjudication in the United States. There is, however, considerable support for the creation of a specialized patent trial court based on the argument that we need to create specialized, judicial human capital at the trial level. Proponents favoring this change base their reasoning on the two-part argument that, because …

Parallel Importation, Patent Right Exhaustion, And Strategies For Navigating The Evolving Landscape, Bryan J. Su

Bryan J Su

Parallel importation provides a means for purchasers and consumers of commercial goods protected by intellectual property law to acquire products for prices lower than the price set by intellectual property right holders. This form of “legal piracy” of grey-market goods is conducted by legally purchasing products in jurisdictions with lower prices, which allows distributors to import products into jurisdictions with higher prices, leading to a competitive advantage. The doctrine of patent exhaustion, especially when applied internationally, allows this practice by giving authorized purchasers of products unfettered ownership and control over the specific articles they acquire.

Analysis of how the United …

Patent Valuation Theory And The Economics Of Improvement, Amy L. Landers

Amy L Landers

In her response to Professor Golden's Principles of Patent Remedies, Professor Landers identifies three threads that underlie the debate on patent remedies. First, patent value may be difficult to define because of certain indeterminacies. Second, economic and technological contingencies may distort the amounts paid for patents. Third, principles of adaptation and implementation might bring the field to a theoretical consensus about patent value. After analyzing Prof. Golden’s principles in the context of each thread, Prof. Landers proposes that, in order to bridge the differences in current theoretical viewpoints, the explicit addition of the economics of improvement is necessary.

Comparative Tales Of Origins And Access: Intellectual Property And The Rhetoric Of Social Change, Jessica M. Silbey

Jessica Silbey

This Article argues that the open-source and antiexpansionist rhetoric of current intellectual-property debates is a revolution of surface rhetoric but not of deep structure. What this Article terms “the Access Movements” are, by now, well-known communities devoted to providing more access to intellectual-property-protected goods, communities such as the Open Source Initiative and Access to Knowledge. This Article engages Movement actors in their critique of the balance struck by recent law (statutes and cases) and asks whether new laws that further restrict access to intellectual property “promote the progress of science and the useful arts.” Relying on cases, statutes and recent …

Bermuda's Legacy: Policy, Patents And The Genome Commons, Jorge L. Contreras

Jorge L Contreras

The multinational effort to sequence the human genome generated vast quantities of data about the genetic make-up of humans and other organisms. But, in some respects, even more remarkable than the impressive quantity of data generated by the human genome project (HGP) is the speed at which that data has been released to the public. At a 1996 summit in Bermuda, leaders of the scientific community agreed on a groundbreaking set of principles requiring that all DNA sequence data be released in publicly-accessible databases within twenty-four hours after generation. These “Bermuda Principles” contravened the typical practice in the sciences of …