Law Commons^™

Rolling Equilibriums At The Pre-Commons Frontier: Identifying Patently Efficient Royalties For Complex Products, F. Russell Denton

F. Russell Denton

Patent pricing problems have roiled industry in recent years. The biggest challenge may be splintered in-licensing of dozens or even thousands of patents for a single behemoth product, where ubiquitous overlaps in invention utility frustrate rational splitting of royalties. That issue is especially daunting for software, computer chips and biotechnology. Judicial remedies are no better: courts have been unable to streamline or standardize the analysis for infringement dam-ages under the prevailing Georgia-Pacific rule. The historic weakness of financial science for intangible assets, along with cherry picking by parties, hobbles G-P’s 15-factor analysis. The universal fog in allocating royalties creates license …

Patent Eligible Subject Matter In The Biotechnological Arts, Benjamin A. Keim

Benjamin A Keim

This paper compares the patentability of biotechnology inventions under the laws of the United States, Canada, Australia, and New Zealand. Five specific categories of biotechnology are examined: genes and DNA, microorganisms, plants and animals, human embryonic stem cells, and medical methods. The WTO-TRIPS agreement establishes the underlying framework followed by these countries. All of these counties allow patenting of genes and DNA as well as microorganisms. Plant and animal patents are allowed in all the countries except Canada. Surgical and medical methods are only patentable in the U.S. and Australia. Human embryonic cells are patentable in all jurisdictions, except for …

Bad Science In Search Of “Bad” Patents, Ron D. Katznelson

Ron D. Katznelson

This paper draws attention to fundamental deficiencies in studies that have been relied upon as authoritative sources on patent grant rate comparisons among national patent offices. The two prominent studies analyzed here had employed erroneous methods to compare patent grant rates, resulting in false high indications of such rates at the U.S. patent office compared to foreign patent offices. The three identified categories of analysis errors found in these studies were (i) the misapplication of conditional probability; (ii) miscounting invention applications; and (iii) failure to account for patent obsolescence and application attrition due to the widely differing delays among national …

Teaching Intellectual Property As A Skills Course , Malla Pollack

Malla Pollack

Students can gain experience in practical skills in substantive courses if professors spend the time to create appropriate projects. This article demonstrates by providing reproducible projects involving non-competition agreements, trademarks/trade dress, copyright, and patent. The article also explains the how projects can be expanded and how they can be transposed between counseling and litigation settings.

This paper is part of a symposium entitled “Reflections on Legal Education: How We Teach, How They Learn".

The Impact Of Regional Trade Areas On International Intellectual Property Rights, Brian Cimbolic

Brian Cimbolic

This article seeks to explore the impact of Customs Unions and Free Trade Areas (Regional Trade Areas, or “RTAs”) on both the developing world’s intellectual property concerns and on the international trade principle of most favored nation status. By examining various RTAs such as the North American Free Trade Agreement (“NAFTA”) and the upcoming Free Trade Agreement of the Americas (the “FTAA”), along with several smaller RTAs, this paper seeks to show that RTAs are undermining the principles of the International Trade Agreements they are a supposed to be a part of by refusing to apply MFN principles and by …

Re-Evaluating Declaratory Judgment Jurisdiction In Intellectual Property Disputes, Lorelei Ritchie De Larena

Lorelei Ritchie de Larena

The Declaratory Judgment Act of 1934 was quickly tagged by the U.S. Supreme Court as a simple procedural measure. Whether simple or procedural, the addition of the declaratory judgment option has dramatically increased the rights of would-be defendants. This is of special interest in patent law, where without the ability to initiate legal action, an alleged infringer would typically have no recourse but to either drop a lucrative business and lose a massive investment, or to languish in legal limbo while potentially accruing liability for treble damages. The option of a mirror-image lawsuit removes the patentee’s ability to unilaterally decide …

Total Upgrade: Intellectual Property Law Reform In Russia, Sergey Budylin, Yulia Osipova

Sergey Budylin

Russia has undertaken a large-scale intellectual prop-erty (IP) law reform. The reform abolishes most of the ex-isting IP legislation and instead puts all IP issues into the new Fourth Part of the Civil Code. The new legislation was signed into force at the end of 2006, but it was made effective starting from January 1, 2008. While the new leg-islation largely restates, consolidates, and refines the exist-ing legislation, it also introduces some concepts not known to Russian law before (such as “unified technology”). Im-portantly, the new Russian IP legislation addresses issues currently being a matter of international concern (such as …

Let The Games Begin: Incentives To Innovation In The New Economy Of Intellectual Property Law, Amy L. Landers

Amy L Landers

Patent litigation is developing a troubling resemblance to a Las Vegas casino. Juries have awarded patentees damage amounts that far exceed the value of a patented invention. At the same time, courts have failed to define standards to align damages with the patentee’s harm. As a result, the damages awarded for patent infringement far exceed the amount that the patent is worth. These circumstances create incentives for patentees to “game” the patent system by seeking large damages and settlement jackpots from those accused of infringement. Increasingly, so-called “patent trolls” assert patent infringement allegations, seeking to turn ideas into cold hard …

What Does The Public Get? Experimental Use And The Patent Bargain, Katherine J. Strandburg

Katherine J. Strandburg

This article deals with the increasing tension between the tradition of protecting commercially valuable inventions through patenting and the need for a robust public domain of freely available technical information as a springboard for further research. The “experimental use exemption,” permitting some unauthorized research uses of patented inventions, might be used to relieve some of this tension. However, the scope of the research exemption has been shrunk so far by recent Federal Circuit opinions that even basic university research is not excused from infringement liability. This article returns to the first principles of patent law -- the incentives to invent …

The Multiple Unconstitutionality Of Business Method Patents: Common Sense, Congressional Choice, And Constitutional History, Malla Pollack

Malla Pollack

Business method patents are of sufficiently doubtful constitutionality that the Supreme Court should either render them void or, at the least, require a clear Congressional fact finding that they are likely to promote the "Progress of . . . [the] Useful Arts." Four separate arguments support this conclusion. First, common sense shows that patents on business methods do not promote progress. Second, Congress has not considered whether business method patents are likely to promote progress. Third, "useful arts," as that phrase is used in the Constitution, does not include mere commerce. Lastly, the historical background of the Intellectual Property Clause …

The Owned Public Domain: The Constitutional Right Not To Be Excluded – Or The Supreme Court Chose The Right Breakfast Cereal In Kellogg V. National Biscuit Co., Malla Pollack

Malla Pollack

Before the rise of law and economics, the Supreme Court decided several cases involving patent holders' attempts to use trademark doctrines to slow down competitors after the expiration of their utility patents; in each of these cases, the Court enforced a public right to use material in the public domain. To give one famous example, Kellogg Co. v. National Biscuit Co., the "shredded wheat case," came to the Court after the expiration of a product and process utility patent on that once-innovative breakfast cereal. The Court held that a competitor could freely copy the product's name and its well known …

Inventors Of The World, Unite! A Call For Collective Action By Employee-Inventors, Ann Bartow

Ann Bartow

While technological innovation is often lauded as the cornerstone of the American economy into the next century, and both governmental and private observers ponder with fascination and some trepidation the ability of U.S. companies to reach and sustain high levels of innovative productivity, very little attention is paid to actual inventors. This article is one effort to draw attention to the importance of employee-inventors, the people who conceive and develop the inventions that American corporations rely on for growth and profitability. Though it is universally accepted that skills gained by an employee in the course of his employment belong to …

Unconstitutional Incontestability?: The Intersection Of The Intellectual Property And Commerce Clauses Of The Constitution: Beyond A Critique Of Shakespeare Co. V. Silstar Corp., Malla Pollack

Malla Pollack

This article makes several assertions: (1) The Intellectual Property Clause of the Constitution, even read with the Commerce Clause, prevents Congress from giving authors or inventors exclusive rights unbounded by premeasured time limitations; (2) Because such limits exist, even incontestable trademarks must be subject to functionality challenges in order to prevent conflict with the Patent Clause; (3) The Intellectual Property Clause requires a similar challenge to prevent conflict with the Copyright Clause; (4) The states are also limited by either direct constitutional mandate or statutory preemption. Based on the first two assertions, this article argues that the Fourth Circuit's decision …

Guarding Your Company's Intellectual Property Rights: Patents, Trademarks, And Copyright Protection, Douglas J. Swanson Ed.D Apr

Douglas J. Swanson, Ed.D APR

No abstract provided.