Law Commons^™

Nonobviousness: Before And After, Dmitry Karshtedt

GW Law Faculty Publications & Other Works

The requirement of nonobviousness, codified in 35 U.S.C. § 103, has been called “the ultimate condition of patentability” because of its crucial function of keeping technically trivial inventions out of the patent system. The obviousness determination must be made based on the state of the invention’s field at a particular point in time—in the Patent Act’s current version, the date that the patent application was effectively filed with the U.S. Patent and Trademark Office (“PTO”).

However, in spite of the critical role of time in patent law and the danger that hindsight bias could distort § 103 analysis when patentability …

Incentive Effects From Different Approaches To Holdup Mitigation Surrounding Patent Remedies And Standard-Setting Organizations, F. Scott Kieff, Anne Layne-Farrar

GW Law Faculty Publications & Other Works

Debates about patent policy often focus on the potential for the threat of a court-imposed remedy for patent infringement to cause manufacturing entities and others to suffer patent holdup, especially when standardized industries are involved. This article uses lessons from the broader economics and political science literatures on holdup to explore various approaches to setting remedies for patent infringement—namely injunctions and money damages in the form of lost profits or reasonable royalties—with an eye towards the nature and extent of various forms of holdup they each might generate. In so doing, the article contrasts various narrower sub-categories of the broad …

Forward To Festschrift Honoring Chief Judge Rader, Martin J. Adelman

GW Law Faculty Publications & Other Works

This Forward discusses papers that highlight the judicial work of Chief Judge Rader in the field of patent law.

The America Invents Act, Its Unique First-To-File System And Its Transfer Of Power From Juries To The United States Patent And Trademark Office, Martin J. Adelman

GW Law Faculty Publications & Other Works

The signing of the Leahy-Smith America Invents Act (AIA) by President Obama on 16 September 2011 is a landmark event in the history of American patent law. It has already been the subject of numerous articles on the web and in the law reviews as well as in the popular press. I have no intention here of going into all the details of the AIA, I just want to leave the reader with a sense for its eventual impact on American patent law. All the details are to be found in its 37 sections whose titles give the reader a …

Questioning The Frequency And Wisdom Of Compulsory Licensing For Pharmaceutical Patents, F. Scott Kieff, Richard A. Epstein

GW Law Faculty Publications & Other Works

Many advocates for using compulsory licensing (“CL”) for pharmaceutical patents in developing countries like Thailand rest their case in part on the purported use of CL in the United States. In this paper we take issue with that proposition on several grounds. As a theoretical matter, we argue that the basic presumption in favor of voluntary licenses for IP should apply in the international arena, in addition to the domestic one. In the international context, voluntary licenses are of special importance because they strengthen the supply chain for distributing pharmaceuticals and ease the government enforcement of safety standards. Next, this …

The Ftc, Ip, And Ssos: Government Hold-Up Replacing Private Coordination, F. Scott Kieff, Richard A. Epstein, Daniel F. Spulber

GW Law Faculty Publications & Other Works

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 …

Patent Claiming In The United States: Central, Peripheral, Or Mongrel, Martin J. Adelman

GW Law Faculty Publications & Other Works

This paper explains why the use of prosecution history estoppel to limit the doctrine of equivalents only when an estoppel exists is unsound. The standards for overcoming an estoppel should be used in every case and not just where there is an estoppel.

The Doctrine Of Equivalents In Various Patent Regimes: Does Anybody Have It Right?, Martin J. Adelman

GW Law Faculty Publications & Other Works

The doctrine of equivalents is arguably one of the most important aspects of patent law. The protection a patent confers is meaningless if its scope is determined to be so narrow that trivial changes to a device bring it out of the bounds of the patent. One of the greatest challenges courts and legislatures therefore face in patent law is to create rules for determining patent scope that maintain the protection a patent is meant to confer while still keeping the patent monopoly within reasonable bounds. Despite the general unity in patent laws among developed countries, the difficulty of this …

How Not To Invent A Patent Crisis, F. Scott Kieff, Henry E. Smith

GW Law Faculty Publications & Other Works

This short essay written for a broad audience addresses the problems that are at the center of current debates in academic and policy circles about the patent system. Most current patent reform proposals are designed to give officials and courts more power to weaken or eliminate ‘‘unworthy’’ patents and take primary aim at so-called patent trolls. This essay argues that in light of the rapid, and excessive, changes that have already occurred in the courts, what patent law needs is a tweaking of existing safety valves and processes - not opening the floodgates to more discretion and uncertainty.

Intellectual Property For Market Experimentation, Michael B. Abramowicz, John F. Duffy

GW Law Faculty Publications & Other Works

Intellectual property protects investments in the production of information, but the literature on the topic has largely neglected one type of information that intellectual property might protect: information about the market success of goods and services. A first entrant into a market often cannot prevent other firms from free-riding on information about consumer demand and market feasibility. Despite the existence of some first-mover advantages, the incentives to be the first entrant into a market may sometimes be inefficiently low, thereby giving rise to a net first-mover disadvantage and discouraging innovation. Intellectual property may counteract this inefficiency by providing market exclusivity, …

The Uneasy Case For Patent Races Over Auctions, Michael B. Abramowicz

GW Law Faculty Publications & Other Works

In advancing his prospect theory of patents, Edmund Kitch dismissed the possibility of distributing rights to particular inventions through auctions, arguing that the patent system avoids the need for governmental officials to define the boundaries of inventions that have not yet been created. Auctions for patent rights to entire inventive fields, however, might accentuate the benefits of a prospect approach, by allowing for earlier and broader patents. Auction designs that award the patent to the bidder that commits the most money to research and development or that agrees to charge the lowest price, meanwhile, can reduce the costs of the …

Coordination, Property & Intellectual Property: An Unconventional Approach To Anticompetitive Effects & Downstream Access, F. Scott Kieff

GW Law Faculty Publications & Other Works

Countless high profile cases like the recent patent litigation threatening to shut down the BlackBerry® service have long drawn sharp criticism; and in response, most of the intellectual property (IP) literature argues for the use of weaker, or liability rule, enforcement as a tool for solving the problems of anticompetitive effects and downstream access while still providing sufficient rewards to IP creators. This paper takes an unconventional approach under which rewards don't matter much, but coordination does matter a great deal. The paper shows how stronger, or property rule, enforcement facilitates the good type of coordination that increases competition and …

Engineering A Deal: Toward A Private Ordering Solution To The Anticommons Problem, F. Scott Kieff, Troy A. Paredes

GW Law Faculty Publications & Other Works

The problems of the intellectual property ("IP") anticommons are infamous. Many people fear that the potential for vast numbers of IP rights to cover a single good or service will prevent an enterprise from even attempting to launch a business for fear of being unduly taxed or retarded or simply held up. This Article offers a solution based on private ordering within the context of existing laws. This approach uses a limited liability entity structured so that IP owners are given an actual stake in the operating business and thus an incentive to participate in the enterprise; and yet at …

Patent Auctions, Michael B. Abramowicz

GW Law Faculty Publications & Other Works

In his famous paper advancing a prospect theory of patents, Edmund Kitch found inspiration in, but quickly dismissed, a footnote authored by Yoram Barzel suggesting that rights to inventions might be distributed through an auction mechanism. Kitch maintained that the patent system itself achieves the benefit of an auction by giving control over the inventive process at a relatively early stage. The patent system, moreover, avoids the need for governmental officials in an auction regime to define the boundaries of inventions that have not yet been created.

Patent auctions, however, may be more appealing if the auctions are for rights …

The Basics Matter: At The Periphery Of Intellectual Property, F. Scott Kieff, Troy A. Paredes

GW Law Faculty Publications & Other Works

Controversies often arise at the interfaces where intellectual property ("IP") law meets other topics in law and economics, such as property law, contract law, and antitrust law. Participants in the debates over how to mediate these interfaces often view each interface as a special case deserving unique treatment under the law. The doctrines of copyright and patent misuse are cases in point: they graft select antitrust principles onto copyright or patent law, even though there is an entirely distinct body of law - antitrust law - designed to deal with the putative concerns about competition that allegedly give rise to …

The Case Against Copyright: A Comparative Institutional Analysis Of Intellectual Property Regimes, F. Scott Kieff

GW Law Faculty Publications & Other Works

Contemporary debates over intellectual property ("IP") generally evidence positions that appear to line up at opposite ends of the same axis, with one side arguing for more rights for IP owners under each major regime - patent, trademark, and copyright - and the other side arguing for fewer. Approaching from what some may see as a "more" IP view, this paper offers the counterintuitive suggestion to consider abolishing one of these IP regimes - copyright, at least with respect to the entertainment industry, which represents one of that regime's most commercially significant users. This realization is in fact consistent with …

Contrived Conflicts: The Supreme Court Versus The Basics Of Intellectual Property Law, F. Scott Kieff

GW Law Faculty Publications & Other Works

Asked by conference organizers to consider the impact of the Supreme Court on intellectual property this millennium, this essay offers the view that the Supreme Court's intellectual property decisions by its present members generally are premised upon what may be viewed as contrived conflicts among bodies of law. Proceeding from this faulty foundation, the Court's efforts to resolve those conflicts subsequently have generated bodies of judge-made law that frustrate in important ways the basic statutory framework of intellectual property law. Examples of cases employing this problematic approach include Bonito Boats, Dastar, Warner-Jenkinson, Festo, TrafFix, and Holmes. Avoiding the contrivances not …

The Case For Registering Patents And The Law And Economics Of Present Patent-Obtaining Rules, F. Scott Kieff

GW Law Faculty Publications & Other Works

(Note: this is a substantially revised version of Harvard Olin Working Paper No. 415 of May 2003, SSRN Abstract ID No. 392202 (http://ssrn.com/abstract=392202) and includes more detailed discussion of issues including the DOE, willfulness and the Knorr decision, and the FTC Report on patents and antitrust.)

Critics of the patent system suggest the rules for determining patentability should be stricter, subjecting patents to more scrutiny during Patent Office examination. This Article offers a counterintuitive model system under which patent applications are registered, not examined, to elucidate a new normative view that sees present positive law rules for obtaining patents as …

The Case For Registering Patents And The Law And Economics Of Present Patent-Obtaining Rules, F. Scott Kieff

GW Law Faculty Publications & Other Works

The legal rules for determining whether an inventor is entitled to a patent are presently enforced in the first instance by the Patent Office through ex parte examination of patent applications. Critics of various aspects of the patent system suggest that these rules should be ratcheted up in some way, subjecting patents to more scrutiny during Patent Office examination. Departing from existing literature, this paper offers a hypothetical model system under which patent applications are merely registered, not examined, to show how hard look approaches like examination increase social costs over soft look approaches like registration. The paper presents a …

Patents For Environmentalists, F. Scott Kieff

GW Law Faculty Publications & Other Works

This essay, written for the National Association of Environmental Law Societies' (NAELS) annual meeting, explains how patent law operates generally with an emphasis on how it may impact the environment in particular. In so doing, the essay addresses from a patent perspective some representative concerns relating to patents that appear to be prevalent in the environmental literature and shows how the patent system may provide substantial benefit for those favoring the environment.

The Use Of The Doctrine Of Equivalents To Fix Mistakes A Mistake?, Martin J. Adelman

GW Law Faculty Publications & Other Works

Through empirical research, this article examines whether the patent system of the United States should limit the doctrine of non-textual infringement to obvious after-arising equivalents. Using five decisions from multiple jurisdictions, including the United States, Japan and Great Britain, the article explains the various patent systems and limitations those patent systems face in deciding whether an infringement is an obvious equivalent. The article then discusses the interpretations of patent claims and the policy implications of those interpretations. The article presents the policy argument for patentees to cover the costs associated with patent prosecution because the alternative would be burdensome costs …

A Grace Period And European Patent Law: It's Time For Change, Martin J. Adelman

GW Law Faculty Publications & Other Works

This article begins by discussing the first-to-file and first-to-invent approaches to inventions. Next, the article describes how each of the two systems defines “prior art” and argues that employing the first-to-invent approach has two problems: a lack of incentive to file early and difficulty in advising an inventor about what qualifies as prior art. In the United States, something counts as prior art “[i]f the publication date is more than one year before the actual filing date.” The article concludes that Europe would benefit from adding a grace period because it would make the system fairer and create more similarity …