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Full-Text Articles in Law
Disguised Patent Policymaking, Saurabh Vishnubhakat
Disguised Patent Policymaking, Saurabh Vishnubhakat
Faculty Scholarship
Patent Office power has grown immensely in this decade, and the agency is wielding its power in predictably troubling ways. Like other agencies, it injects politics into its decisions while relying on technocratic justifications. It also reads grants of authority expansively to aggrandize its power, especially to the detriment of judicial checks on agency action. However, this story of Patent Office ascendancy differs from that of other agencies in two important respects. One is that the U.S. patent system still remains primarily a means for allocating property rights, not a comprehensive regime of industrial regulation. Thus, the Patent Office cannot …
Renewed Efficiency In Administrative Patent Revocation, Saurabh Vishnubhakat
Renewed Efficiency In Administrative Patent Revocation, Saurabh Vishnubhakat
Faculty Scholarship
Administrative patent revocation in the U.S. is poised to enter a new period of efficiency, though ironically it will be an efficiency that the America Invents Act originally put in place. The Court’s recent approval of the constitutionality of Patent Trial and Appeal Board ("PTAB") proceedings was blunted by the Court’s accompanying rejection of partial institution. This Patent Office practice of accepting and denying validity review petitions piecemeal had been a key part of the agency’s procedural structure from the start. As a result, the Court’s decision in SAS Institute v. Iancu to require a binary choice — either fully …
The Mixed Case For A Ptab Off-Ramp, Saurabh Vishnubhakat
The Mixed Case For A Ptab Off-Ramp, Saurabh Vishnubhakat
Faculty Scholarship
This Essay begins from the emerging agenda in the political branches for reforming various aspects of the USPTO Patent Trial and Appeal Board, and focuses on a particular reform: the creation of a PTAB off-ramp whereby a patent being challenged in an administrative revocation proceeding could be removed into a system primarily aimed at amending its claims and preserving its validity. To put the proposal into perspective, the Essay presents specific empirical trends, largely unexplored until now, that implicate patent reliance interests to which the PTAB has done injury. Ultimately, because the benefits and costs from a PTAB off-ramp are …
The Non-Doctrine Of Redundancy, Saurabh Vishnubhakat
The Non-Doctrine Of Redundancy, Saurabh Vishnubhakat
Faculty Scholarship
This Article explores and evaluates a controversial practice that the Patent Office undertook beginning early in the post-AIA regime, the practice of denying otherwise meritorious requests for review because of what the Office termed "redundant" grounds. The controversy over redundancy-based rejections had several sources. One was that making such rejections required the Patent Office to decide petitions piecemeal—and, indeed, the agency claimed that power for itself—even though it was not clear that this power lay within the statute. Another source was that the Patent Office persistently declined to explain what, in the agency's view, did or did not constitute redundancy. …
The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat
The Porous Court-Agency Border In Patent Law, Saurabh Vishnubhakat
Faculty Scholarship
The progression toward reevaluating patent validity in the administrative, rather than judicial, setting became overtly substitutionary in the America Invents Act. No longer content to encourage court litigants to rely on Patent Office expertise for faster, cheaper, and more accurate validity decisions, Congress in the AIA took steps to force a choice. The result is an emergent border between court and agency power in the U.S. patent system. By design, the border is not absolute. Concurrent activity in both settings over the same dispute remains possible. What is troubling is the systematic weakening of this border by Patent Office encroachments …
When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat
When Can The Patent Office Intervene In Its Own Cases?, Saurabh Vishnubhakat
Faculty Scholarship
The rise of administrative patent validity review since the America Invents Act has rested on an enormous expansion of Patent Office authority. A relatively little-known aspect of that authority is the agency's statutory ability to intervene in Federal Circuit appeals from adversarial proceedings in its own Patent Trial and Appeal Board. The Patent Office has exercised this intervenor authority frequently and with specific apparent policy objectives, including where one of the adverse parties did not participate in the appeal. Moreover, until recently, there has been no constitutional inquiry into the Article III standing that the Patent Office must establish in …
The Antitrusting Of Patentability, Saurabh Vishnubhakat
The Antitrusting Of Patentability, Saurabh Vishnubhakat
Faculty Scholarship
Deciding a patent’s validity is costly, and so is deciding it incorrectly. Judges and juries must expend significant resources in order to reach a patent validity determination that is properly informed by the relevant facts. At the same time, patent validity determinations reached quickly and cheaply may conserve resources today while creating future costs. Wrongly preserving an invalid patent can distort the competitive market and enable abuses, such as nuisance litigation. Meanwhile, wrongly striking down a valid patent can undermine incentives for continued investment and commercialization in knowledge assets. Courts facing patent validity issues have begun to strike this balance …
The Field Of Invention, Saurabh Vishnubhakat
The Field Of Invention, Saurabh Vishnubhakat
Faculty Scholarship
Federal courts can ill afford to ignore, assume, or improvise a pervasively important administrative power that the Patent Office exercises regularly and effectively: technology classification. This agency-court asymmetry has persisted for decades but has now become unmanageably problematic for two related reasons. First, Supreme Court guidance, patent reform legislation, and academic commentary have all broadly rejected long-standing patent exceptionalism in administrative law, while making the Patent Office a major substitute for federal courts in resolving patent disputes. Still, patent doctrine has been slow to correct, particularly in judicial deference to agency action. Second, criticisms of the patent system are highly …
Correlative Obligation In Patent Law: The Role Of Public Good In Defining The Limits Of Patent Exclusivity, Srividhya Ragavan
Correlative Obligation In Patent Law: The Role Of Public Good In Defining The Limits Of Patent Exclusivity, Srividhya Ragavan
Faculty Scholarship
In light of the recent outrageous price-spiking of pharmaceuticals, this Article questions the underlying justifications for exclusive rights conferred by the grant of a patent. Traditionally, patents are defined as property rights granted to encourage desirable innovation. This definition is a misfit as treating patents as property rights does a poor job of defining the limits of the patent rights as well as the public benefit goals of the system. This misfit gradually caused an imbalance in the rights versus duties construct within patent law. After a thorough analysis of the historical and philosophical perspectives of patent exclusivity, this Article …
Strategic Decision Making In Dual Ptab And District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, Jay P. Kesan
Strategic Decision Making In Dual Ptab And District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, Jay P. Kesan
Faculty Scholarship
The post-grant review proceedings set up at the U.S. Patent and Trademark Office’s Patent and Trial Appeal Board by the America Invents Act of 2011 have transformed the relationship between Article III patent litigation and the administrative state. Not surprisingly, such dramatic change has itself yielded additional litigation possibilities: Cuozzo Speed Technologies v. Lee, a case addressing divergence between the manner in which the PTAB and Article III courts construe patent claims, will soon be decided at the U.S. Supreme Court.
Of the three major new PTAB proceedings, two have proven to be popular as well as controversial: inter partes …
The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat
The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat
Faculty Scholarship
Of the three major ex post patent validity challenge mechanisms that the 2011 Leahy-Smith America Invents Act put into place, the third is beginning to show signs of use. Post-grant review is an administrative proceeding of remarkable breadth as compared both to inter partes review and to the transition program for covered business method patents. Thus far, however, patent challengers have made very limited use of post-grant reviews: in the nearly three years since the procedure became available, the United States Patent and Trademark Office has received only about two dozen petitions for post-grant review. By contrast, the number of …
An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat
An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat
Faculty Scholarship
This Article challenges the dogma of U.S. patent law that direct infringement is a strict liability tort. Impermissibly practicing a patented invention does create liability even if the infringer did not intend to infringe or know about the patent. The consensus is that this is a form of strict liability. The flaw in the consensus is that it proves too little, for the same is true of intentional torts: intent to commit the tort is unnecessary, and ignorance of the legal right is no excuse. What is relevant is intent to perform the action that the law deems tortious. So …
When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai
When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai
Faculty Scholarship
Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.
This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history …
The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat
The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat
Faculty Scholarship
In recent years, the United States Patent and Trademark Office has systematically been engaging the legal community with inventor assistance beyond the agency’s usual business of examining applications for patents and trademarks. The purpose of the USPTO’s effort has been to support innovators who are constrained by a lack of resources to pay for patent counsel necessary to protect the full scope of their inventions. This Article describes the brief history, flexible structure, and ongoing growth of that effort, embodied in the USPTO Patent Pro Bono Program. The Patent Pro Bono Program is a national network coordinated by the USPTO …
Justifying India's Patent Position To The United States International Trade Commission And Office Of The United States Trade Representative, Srividhya Ragavan, Sean Flynn, Brook Baker
Justifying India's Patent Position To The United States International Trade Commission And Office Of The United States Trade Representative, Srividhya Ragavan, Sean Flynn, Brook Baker
Faculty Scholarship
The paper below largely is an extract of the testimonial filed by the authors to the Secretary of the ITC in response to the Notice on the Federal Register dated August 29, 2013 titled Trade, Investment, and Industrial Policies in India: Effects on the U.S. Economy. Where required, the paper also draws from the written submissions that the authors made to the United States Trade Representative’s (hereinafter, USTR) office on the related question of whether India deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on intellectual property …
Cognitive Economy And The Trespass Fallacy: A Response To Professor Mossoff, Saurabh Vishnubhakat
Cognitive Economy And The Trespass Fallacy: A Response To Professor Mossoff, Saurabh Vishnubhakat
Faculty Scholarship
In his recent essay The Trespass Fallacy in Patent Law, Professor Adam Mossoff argues cogently that the metaphor of trespass has become a misused basis for patent indeterminacy critiques that it cannot conceptually or empirically support. While sharing his caution that metaphors are not to be trifled with, this reply suggests that trespass has both a smaller role and a larger potential benefit in the debate on patent indeterminacy, and advances an opposite solution.
Reverse Payments, Perverse Incentives, Murat C. Mungan
Reverse Payments, Perverse Incentives, Murat C. Mungan
Faculty Scholarship
Issuing and enforcing prescription drug patents requires courts and legislatures to strike a delicate balance. A patent gives drug manufacturers a legal, if temporary, monopoly on sales of a drug; this encourages manufacturers to engage in costly research and development of new medicines. But not all patents issued by the Patent Office are ultimately deemed valid – generic drug manufacturers can infringe the patent, and, when sued, attack its validity in court on a variety of grounds, including obviousness. In recent years, patent holders have begun to settle these suits (which they initiated) by paying the alleged infringer. Not surprisingly, …
Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson
Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson
Faculty Scholarship
Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …
The Jekyll And Hyde Story Of International Trade: The Supreme Court In Phrma V. Walsh And The Trips Agreement, Srividhya Ragavan
The Jekyll And Hyde Story Of International Trade: The Supreme Court In Phrma V. Walsh And The Trips Agreement, Srividhya Ragavan
Faculty Scholarship
The paper analyses the international impact of the approval by the United States Supreme Court to use indirect price control mechanisms to tackle public health and Medicaid issues. It traces similarities in policies implemented by the United States and those it opposed within developing nations. For example, the recent use by the developed nations of compulsory licensing and price control mechanisms, which they opposed as violating TRIPS when used by developing nations, underlines a poverty penalty suffered by developing nation signatories of TRIPS. In effect, TRIPS exempts developed nations from fulfilling obligations developing nations were forced to fulfill and thus …
A "Patent" Restriction On Research & Development: Infringers Or Innovators?, Srividhya Ragavan
A "Patent" Restriction On Research & Development: Infringers Or Innovators?, Srividhya Ragavan
Faculty Scholarship
The Trade Related Aspects of Intellectual Property Rights ("TRIPS") requires developing nations to harmonize patent regimes as a means to achieve stronger industrial growth. Countries, however, need to adopt effective patent procedures in order to successfully institute a patent regime. In spite of this, international treaties like TRIPS do not properly assist developing nations in establishing appropriate procedural mechanisms capable of complimenting a sophisticated patent regime. Consequently, developing nations may embrace ineffective patent procedures that can eventually further limit industrial growth despite establishing a TRIPS compliant patent regime. The paper uses India as a case study to demonstrate the detriments …
Can't We All Get Along? The Case For A Workable Patent Model, Srividhya Ragavan
Can't We All Get Along? The Case For A Workable Patent Model, Srividhya Ragavan
Faculty Scholarship
The global move towards a trade regime has been impeded by challenges of poverty and health crisis for the developing nations. Until now, the developed nations have touted the establishment of a trade regime as envisaged under TRIPS as the solution for the national challenges. This paper examines the effectiveness of TRIPS as a mechanism to move towards a trade regime. It argues that the patent policy in TRIPS cannot gear the world towards patent harmonization but can potentially adversely impact the developed nations and the post-world war trade structure. The impediments affecting the effectiveness of TRIPS as a harmonizing …