Law Commons^™

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.

Coding For Life--Should Any Entity Have The Exclusive Right To Use And Sell Isolated Dna, Douglas L. Rogers

Douglas L. Rogers

Myriad Genetics, Inc. ("Myriad") obtained patents in the 1990's on two "isolated" human breast and ovarian cancer susceptibility genes ("BRCA"). Myriad did not list all the isolated sequences it claims to have a right to monopolize, but instead claims a patent on the physical phenomena itself -- all DNA segments that code for the BRCA1 polypeptide, even the sequences Myriad has not identified and even someone else in the future creates or isolates the sequences through a method or methods not contemplated by Myriad.

An impressive array of non-profit medical societies, doctors and patients sued to have the Myriad patents …

The Ftc’S Proposal For Regulating Ip Through Ssos Would Replace Private Coordination With Government Hold-Up, F. Scott Kieff, Richard Epstein, Daniel Spulber

F. Scott Kieff

In its recent report entitled “The Evolving IP Marketplace,” the Federal Trade Commission (FTC) advances a far-reaching regulatory approach (Proposal) whose likely effect would be to distort the operation of the intellectual property (IP) marketplace in ways that will hamper the innovation and commercialization of new technologies. The gist of the FTC Proposal is to rely on highly non-standard and misguided definitions of economic terms of art such as “ex ante” and “hold-up,” while urging new inefficient rules for calculating damages for patent infringement. Stripped of the technicalities, the FTC Proposal would so reduce the costs of infringement by downstream …

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 …

Warranting Rightful Claims, Karen E. Sandrik

Karen E. Sandrik

Damage awards for patent infringement have sky-rocketed and sparked significant debate in recent years. A part of this patent damage debate focuses on non-practicing entities, or so-called “patent trolls.” A patent troll is a patent owner that demands a royalty based on patented technology, yet does not actually make use of the technology to provide an end product or service. Patent trolls are known for their aggressive and opportunistic behavior. Their strategy is simple: create nuisance and inflict fear. Often, patent trolls employ this strategy against the buyers of goods that use the patented technology. Increasingly, those buyers are availing …

The Creativity Effect (With C. Sprigman), Christopher J. Buccafusco

Christopher J. Buccafusco

No abstract provided.

Warranting Rightful Claims, Karen E. Sandrik

Karen E. Sandrik

Damage awards for patent infringement have sky-rocketed and sparked significant debate in recent years. A part of this patent damages debate focuses on non-practicing entities, or so-called “patent trolls.” A patent troll is a patent owner that demands a royalty based on patented technology, yet does not actually make use of the technology to provide an end product or service. Patent trolls are known for their aggressive and opportunistic behavior. Their strategy is simple: create nuisance and inflict fear. Increasingly, buyers of goods using patented technology are availing themselves of the “warranty against infringement” (“WAI”) provided by the Uniform Commercial …

28 U.S.C. § 1498(A) And The Unconstitutional Taking Of Patents, Joshua I. Miller

Joshua I. Miller

Eminent domain requires a showing of two elements: a property right; and a proper venue to bring suit against the government. 28 U.S.C. § 1498(a) grants patent owners the right to sue the United States for the unauthorized use of patents. This statute and its predecessors have long been viewed as an exercise of eminent domain over the patent property. The Federal Circuit ignored this view in Zoltek v. U.S., holding that patents are not subject to eminent domain. However, Congress has acknowledged that litigation costs are a necessary part of a patent taking. If, as precedent established long before …

The Creativity Effect, Christopher Sprigman, Christopher Buccafusco

Christopher Sprigman

This paper reports the first experiment to demonstrate the existence of a valuation anomaly associated with the creation of new works. To date, a wealth of social science research has shown that substantial valuation asymmetries exist between owners of goods and potential purchasers of them. The least amount of money that owners are willing to accept to part with their possessions is often far greater than the amount that purchasers would be willing to pay to obtain them. This phenomenon, known as the endowment effect, may create substantial inefficiencies in many markets. Our experiment demonstrates the existence of a related …

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 …