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Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Utah Law Faculty Scholarship
During past viral outbreaks, researchers rushed to patent genomic sequences of the viruses as they were discovered, leading to disputes and delays in research coordination. Yet similar disputes did not occur with respect to the genomic sequence of SARS-CoV-2, the virus responsible for COVID-19. With respect to COVID-19, global research collaboration occurred rapidly, leading to the identification of new variants, the ability to track the spread of the disease, and the development of vaccines and therapeutics in record time. The lack of patenting of SARSCoV-2 is likely due the U.S. Supreme Court’s 2013 ruling in Association for Molecular Pathology v. …
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Pathogen Genomes As Global Public Goods (And Why They Should Not Be Patented), Jorge L. Contreras
Utah Law Faculty Scholarship
During past viral outbreaks, researchers rushed to patent genomic sequences of the viruses as they were discovered, leading to disputes and delays in research coordination. Yet similar disputes did not occur with respect to the genomic sequence of SARS-CoV-2, the virus responsible for COVID-19. With respect to COVID-19, global research collaboration occurred rapidly, leading to the identification of new variants, the ability to track the spread of the disease, and the development of vaccines and therapeutics in record time. The lack of patenting of SARS-CoV-2 is likely due the U.S. Supreme Court’s 2013 ruling in Association for Molecular Pathology v. …
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington
Utah Law Faculty Scholarship
In July 2021, the US Patent and Trademark Office (PTO) issued a public request for comments regarding the impact of recent patent eligibility jurisprudence on US businesses and markets. The PTO received 145 responses to its request by the October 2021 deadline. In this paper, we analyze the responses by industry sector and respondent type, assessing whether responses were generally positive, neutral or negative toward US patent eligibility jurisprudence, and also identifying those responses that cited international competitiveness of US businesses (particularly with respect to China) in their reasoning.
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras
Utah Law Faculty Scholarship
The proliferation of international jurisdictional conflicts and competing “anti-suit injunctions” in litigation over the licensing of standards-essential patents has raised concerns among policy makers in the United States, Europe and China. This article suggests that national courts temporarily “stand down” from assessing global “fair, reasonable and nondiscriminatory” (FRAND) royalty rates while international bodies develop a more comprehensive, efficient and transparent methodology for resolving issues around FRAND licensing.
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil
Utah Law Faculty Scholarship
Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” …
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras
Utah Law Faculty Scholarship
Recent arguments for stronger patent rights, particularly on 5G wireless telecommunications technologies, are relevant to discussions of national industrial policy and economic development, but are not matters of national security.
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras
Utah Law Faculty Scholarship
In 2007, eleven major U.S. research universities and the Association of American Medical Colleges signed an accord titled “In the Public Interest: Nine Points to Consider in Licensing University Technology.” It outlined a range of issues that universities should consider when licensing their technology to the private sector - from reservations of rights and limitations on exclusivity to refraining from dealing with patent assertion entities to making medical technologies accessible at affordable prices. More than talking points, the document proposed specific contractual clauses intended to promote the educational and public welfare missions of universities. Today, more than one hundred academic …
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras
Utah Law Faculty Scholarship
The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin
Utah Law Faculty Scholarship
The United States has traditionally held a dim view of compulsory patent licensing, which occurs when a government mandates the licensing of privately held patents to a third party in order to advance a public goal. Yet following the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, federal courts have denied a substantial number of requests for permanent injunctions following a finding of patent infringement. Without an injunction, an infringing party may continue to practice the infringed patent subject, in most cases, to the payment of a courtapproved ongoing royalty. In the years following eBay, courts and scholars have …
Injunctions In Patent Law: A Trans-Atlantic Dialog On Flexibility And Tailoring, Jorge L. Contreras, Martin Husovec,
Injunctions In Patent Law: A Trans-Atlantic Dialog On Flexibility And Tailoring, Jorge L. Contreras, Martin Husovec,
Utah Law Faculty Scholarship
This chapter is from the edited volume "Injunctions in Patent Law: A Trans-Atlantic Dialogue on Flexibility and Tailoring" (Jorge Contreras & Martin Husovec, eds., Cambridge Univ. Press, forthcoming). It offers a unique analytical synthesis of eleven national and two regional/international descriptions of flexibilities in patent remedies authored by leading scholars in the field. This synthesis identifies a range of similarities and differences among jurisdictions, explains the principal features of these different legal systems, provides an analytical framework for comparing them, and offers observations about trends and the outlook for the future. The countries studied include Canada, Finland, France, Germany, Israel, …
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
A Framework For Evaluating Willingness Of Frand Licensees, Jorge L. Contreras
Utah Law Faculty Scholarship
An increasing number of cases around the world turn on whether a manufacturer of a product – e.g., a smartphone, a tablet or a car -- (an “implementer”) is willing to pay a “fair, reasonable and nondiscriminatory” (FRAND) royalty for patents that are essential to an industry standard embodied in that product (standards-essential patents or SEPs). This determination is important both to the analysis of the appropriateness of an injunction under the 4-factor eBay test in the U.S., and for assessing the appropriateness of injunctive relief under the Huawei v. ZTE competition law case in the EU. This essay explores …
No License, No Problem – Is Qualcomm’S Ninth Circuit Antitrust Victory A Patent Exhaustion Defeat?, Jorge L. Contreras, Jorge L. Contreras
No License, No Problem – Is Qualcomm’S Ninth Circuit Antitrust Victory A Patent Exhaustion Defeat?, Jorge L. Contreras, Jorge L. Contreras
Utah Law Faculty Scholarship
The Ninth Circuit’s recent decision in FTC v. Qualcomm (9th Cir., Aug. 11, 2020) is generally viewed as a resounding victory for Qualcomm. But in praising Qualcomm’s egalitarian approach toward rival chip makers, the Ninth Circuit points out that instead of granting licenses to these rivals, Qualcomm merely “declines to enforce its patents” against them “even though they practice Qualcomm’s patents”. As such, the Ninth Circuit states that Qualcomm’s “policy toward rival chipmakers could be characterized as ‘no license, no problem’”. Yet, from the standpoint of patent exhaustion, this approach could actually be a very big problem, not only for …
Pledging Intellectual Property For Covid-19, Jorge L. Contreras
Pledging Intellectual Property For Covid-19, Jorge L. Contreras
Utah Law Faculty Scholarship
COVID-19 differs from other recent public health crises with respect to its sudden onset, its rapid spread, the lack of any known vaccine or cure and resulting shortages of critical medical equipment. The convergence of these factors has prompted both governments and IPR holders around the world to seek ways to increase the availability of IPR necessary to combat the pandemic. Governmental compulsory licensing, IPR pools and voluntary IPR pledges have all been used in the past, though in situations that differ in important respects from the COVID-19 pandemic. Each is designed to result, to a greater or lesser degree, …
Financial Terms In License Agreements, Jorge L. Contreras
Financial Terms In License Agreements, Jorge L. Contreras
Utah Law Faculty Scholarship
This chapter in the forthcoming casebook Intellectual Property Licensing and Transactions: Theory and Practice (2020, forthcoming), discusses the financial terms of IP licensing agreements including fixed payments, running royalties, sublicensing income, milestone payments, equity compensation and cost reimbursement, as well as most-favored and audit clauses. Numerous areas of recent controversy are addressed including the establishment of royalty rates through the entire market value rule (EMVR) versus the smallest salable patent practicing unit (SSPPU) rule, royalties for bundled rights, rules of thumb discredited by the courts, royalty escalation clauses and more. Examples are drawn primarily from biotechnology, high-tech and copyright licensing …
First Sale And Exhaustion, Jorge L. Contreras
First Sale And Exhaustion, Jorge L. Contreras
Utah Law Faculty Scholarship
This chapter in the forthcoming case book "Intellectual Property Licensing and Transactions: Theory and Practice" addresses issues of first sale and exhaustion for licensing transactions involving patents, copyrights and trademarks. Among the issues considered are licensing versus sale of software, patent exhaustion, post-sale restrictions, international exhaustion and gray market imports.
Antitrust And Competition Issues, Jorge L. Contreras
Antitrust And Competition Issues, Jorge L. Contreras
Utah Law Faculty Scholarship
This Chapter offers a broad overview of the impact of U.S. antitrust laws on IP licensing and transactions. A basic understanding of antitrust law is critical to the analysis of IP licensing arrangements, whether concerning patents, copyrights or trademarks. This chapter offers a summary of the antitrust doctrines that arise frequently in IP and technology-focused transactions — price fixing and market allocation, resale price maintenance, tying, monopolization, refusals to deal, standard setting and pay-for-delay settlements, with coverage of the major cases and enforcement agency guidance. Antitrust issues also play a role in the analysis of joint ventures, which are discussed …
Sometimes Frand Does Mean License-To-All, Jorge L. Contreras
Sometimes Frand Does Mean License-To-All, Jorge L. Contreras
Utah Law Faculty Scholarship
FRAND commitments are creations of written policy documents and contract law. Accordingly, the existence of a “License to All” obligation under a FRAND commitment must arise from the relevant policy language. Numerous SDO policies expressly impose “License to All” requirements. Some SDO policies are ambiguous with respect to this requirement and such ambiguities should be resolved based on an examination of extrinsic evidence including the intentions of policy drafters, the shared understandings of SDO participants, and the historical precedents for such policies. In many cases, an examination of these factors should lead to the conclusion that “License to All” is, …
It’S Anti-Suit Injunctions All The Way Down – The Strange New Realities Of International Litigation Over Standards-Essential Patents, Jorge L. Contreras
It’S Anti-Suit Injunctions All The Way Down – The Strange New Realities Of International Litigation Over Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
Today’s markets for technology products — from smartphones to home appliances to automobiles — are inherently global. This is especially true of products that embody technical standards — protocols like 5G, Wi-Fi, Bluetooth and USB that are covered by hundreds, thousands, or tens of thousands of patents (so-called “standards-essential patents” or “SEPs”). Given the global scope and size of these markets, it is not surprising that patent litigation over standardized products is often conducted on a global scale. This article looks at an increasingly important aspect of these global standards wars: the ability of a court in one jurisdiction to …
Association For Molecular Pathology V. Myriad Genetics: A Critical Reassessment, Jorge L. Contreras
Association For Molecular Pathology V. Myriad Genetics: A Critical Reassessment, Jorge L. Contreras
Utah Law Faculty Scholarship
The Supreme Court’s 2013 decision in Association for Molecular Pathology v. Myriad Genetics is part of the Court’s recent quartet of patent eligibility decisions, which also includes Bilski v. Kappos, Mayo v. Prometheus and Alice v. CLS Bank. Each of these decisions has significantly shaped the contours of patent eligibility under Section 101 of the Patent Act in ways that have been both applauded and criticized. The Myriad case, however, was significant beyond its impact on Sec-tion 101 jurisprudence. Perhaps one of the most remarkable things about Myriad is that it meant so many different things to so many different …
Patent Fakes: How Fraudulent Inventions Threaten Public Health, Innovation, And The Economy, Jorge L. Contreras
Patent Fakes: How Fraudulent Inventions Threaten Public Health, Innovation, And The Economy, Jorge L. Contreras
Utah Law Faculty Scholarship
Because there is no practical way for patent examiners to verify that the inventions claimed in patent applications actually work, a surprising number of patents are issued for inventions that have turned out to be imaginary, fraudulent or otherwise non-existent. What's more, as illustrated by the recent attempt by Labrador Diagnostics to assert a patent acquired from now-defunct Theranos against firms developing testing kits for COVID-19, these patents present a genuine threat to businesses operating in important sectors of the economy. While it is unrealistic to expect patent examiners to verify the functionality of every claimed invention, there are a …
Research And Repair: Expanding Exceptions To Patent Infringement In Response To A Pandemic, Jorge L. Contreras
Research And Repair: Expanding Exceptions To Patent Infringement In Response To A Pandemic, Jorge L. Contreras
Utah Law Faculty Scholarship
The doctrinal areas on which this essay focuses are two longstanding but narrow exemptions from patent infringement: one that permits scientific research, and one that permits the owner of a patented device to repair it. Though distinct at first glance, both of these doctrines act to permit activity that would otherwise be considered patent infringement. They are exceptions to the exclusivity that the law grants to patent holders – particularly the right to “make” a patented article and, to a lesser degree, to “use” it, and for this reason they are particularly salient when patents may impact critical lifesaving technologies. …
Is Biopharma Ready For The Standards Wars?, Jorge L. Contreras
Is Biopharma Ready For The Standards Wars?, Jorge L. Contreras
Utah Law Faculty Scholarship
This symposium contribution sheds new light on Momenta v. Amphastar, a recent federal case in which issues relating to standardization and patent disclosure that have previously been observed in the semiconductor, computing and telecommunications sectors found their way into a dispute between two biosimilar manufacturers. One such manufacturer, Momenta, participated in the development of a standard for testing the purity of generic enoxaparin under the auspices of the United States Pharmacopeial Convention, but failed to disclose that it had applied for a patent on the testing method. When Momenta later sued Amphastar for infringement based on its use of that …
Brief Of Amicus Curiae Professor Jorge L. Contreras In Support Of Appellee And Affirmance In Ftc V. Qualcomm, Jorge L. Contreras
Brief Of Amicus Curiae Professor Jorge L. Contreras In Support Of Appellee And Affirmance In Ftc V. Qualcomm, Jorge L. Contreras
Utah Law Faculty Scholarship
Qualcomm participated in the development of 3G and 4G wireless telecommunication standards under the auspices of two SDOs, the Telecommunications Industry Association (“TIA”) and the Alliance for Telecommunications Industry Solutions (“ATIS”). Each of these SDOs had adopted intellectual property rights policies (IPR Policies) that required their participants to grant licenses of SEPs to implementers of their standards on FRAND terms. Yet, over the course of several years, Qualcomm refused to license its SEPs to numerous actual and potential modem chip rivals including MediaTek, Project Dragonfly (a joint venture of NTT DoCoMo, Samsung and several Japanese manufacturers), Samsung, VIA Telecom, Intel, …
The Patentability Of Genetic Therapies: Car-T And Medical Treatment Exclusions Around The World, Luis Gil Abinader, Jorge L. Contreras
The Patentability Of Genetic Therapies: Car-T And Medical Treatment Exclusions Around The World, Luis Gil Abinader, Jorge L. Contreras
Utah Law Faculty Scholarship
More than eighty countries, including the members of the European Patent Convention, the United States, Canada, New Zealand, China, Japan, and India, currently exclude or limit the patentability of methods of medical treatment. CAR-T and other recent gene and cell therapies, which operate based on the extraction of genetic or cellular material from a patient, the alteration of such material, and the reintroduction of such material to the patient’s body, should, under most or all of these legal regimes, be considered medical treatments that are thus excluded from patentability, or as to which patent enforcement is limited. Accordingly, we urge …
Private Law, Conflict Of Laws, And A Lex Mercatoria Of Standards-Development Organizations, Jorge L. Contreras
Private Law, Conflict Of Laws, And A Lex Mercatoria Of Standards-Development Organizations, Jorge L. Contreras
Utah Law Faculty Scholarship
Technical standards created by industry standards-development organizations (SDOs) enable interoperability among products manufactured by different vendors. Over the years, SDOs have developed policies to reduce the risk that SDO participants holding patents covering the SDO’s standards will disrupt or hinder the development and deployment of these standards. These policies, including commitments to license standards-essential patents (SEPs) on terms that are fair, reasonable and non-discriminatory (FRAND), gain transnational application given the international character of SDO activities and are most effectively interpreted and applied on the basis of private law (contractual) principles. However, SDO policies are typically embodied in an SDO’s governing …
Understanding "Balance" Requirements For Standards-Development Organizations, Jorge L. Contreras
Understanding "Balance" Requirements For Standards-Development Organizations, Jorge L. Contreras
Utah Law Faculty Scholarship
Most technical standards-development organizations (SDOs) have adopted internal policies embodying “due process” criteria such openness, balance of interest, consensus decision making and appeals. Yet these criteria lack a generally-accepted definition and the manner in which they are implemented varies among SDOs. Recently, there has been a renewed interest in the principle that SDOs should ensure a balance of interests among their stakeholders. This article explores the origins and meaning of the balance requirement for SDOs. In doing so, it identifies four “tiers” of balance requirements, ranging from those required of all SDOs under applicable antitrust law, to those required of …
Frand Royalties, Anti-Suit Injunctions And The Global Race To The Bottom In Disputes Over Standards-Essential Patents, Jorge L. Contreras
Frand Royalties, Anti-Suit Injunctions And The Global Race To The Bottom In Disputes Over Standards-Essential Patents, Jorge L. Contreras
Utah Law Faculty Scholarship
While national courts have long exercised extraterritorial authority over domestic entities whose conduct abroad is prohibited in the domestic jurisdiction, national courts have recently begun to use disputes over domestic patent rights as vehicles for shaping the global business arrangements of private parties even absent any violation of national law. This phenomenon has become particularly pronounced in the context of “fair, reasonable and non-discriminatory” (FRAND) licenses of patents that are essential to the manufacture and sale of standardized products. This essay explores the increasing extraterritorial effect of national judicial decisions on licenses for standards-essential patents, including recent instances in which …
The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra
The Effect Of Frand Commitments On Patent Remedies, Jorge L. Contreras, Thomas F. Cotter, Sang Jo Jong, Brian J. Love, Nicolas Petit, Peter George Picht, Norman Siebrasse, Rafał Sikorski, Masabumi Suzuki, Jacques De Werra
Utah Law Faculty Scholarship
This chapter addresses a special category of cases in which an asserted patent is, or has been declared to be, essential to the implementation of a collaboratively-developed voluntary consensus standard, and the holder of that patent has agreed to license it to implementers of the standard on terms that are fair, reasonable and non-discriminatory (FRAND). In this chapter, we explore how the existence of such a FRAND commitment may affect a patent holder’s entitlement to monetary damages and injunctive relief. In addition to issues of patent law, remedies law and contract law, we consider the effect of competition law on …
Global Rate Setting: A Solution For Standard-Essential Patents?, Jorge L. Contreras
Global Rate Setting: A Solution For Standard-Essential Patents?, Jorge L. Contreras
Utah Law Faculty Scholarship
The commitment to license patents that are essential to technical interoperability standards on terms that are fair, reasonable and non-discriminatory (FRAND) is a fundamental mechanism that enables standards to be developed collaboratively by groups of competitors. Yet disagreements over FRAND royalty rates continue to bedevil participants in global technology markets. Allegations of opportunistic hold-up and hold-out continue to arise, spurring competition authorities to investigate and intervene in private standard-setting. And litigation regarding compliance with FRAND commitments has led an increasing number of courts around the world to adjudicate FRAND royalty rates, often on a global basis, but using very different …
The Anticommons At Twenty: Concerns For Research Continue, Jorge L. Contreras
The Anticommons At Twenty: Concerns For Research Continue, Jorge L. Contreras
Center for Law and Biomedical Sciences (LABS)
Twenty years after Heller and Eisenberg predicted the emergence of an anticommons in biomedical research, this article assesses the currency of the anticommons theory. While a patent-fueled research anticommons does not appear to have emerged in the ways that Heller and Eisenberg envisioned, there are new ways in which the fragmentation of rights -- whether through trade secrecy, narrow licensing or data propertization -- continues to threaten research and commercial development. The anticommons theory thus remains as relevant today as it was when it was first proposed.