Law Commons^™

The Fallacy Of Defensive Protection For Traditional Knowledge, Margo A. Bagley

Faculty Articles

Proponents of databases as defensive protection posit that having sources of traditional knowledge easily accessible to, and searchable by, examiners during the prosecution process should minimize the grant of patents covering traditional knowledge, and avoid the problems such erroneously granted patents may produce. Some countries, such as India, which support an international sui generis positive protection instrument, also support the use of traditional knowledge databases, as the two approaches are not mutually exclusive. India's CSIR, which created and maintains the TKDL, asserts that the database has thwarted the grant of scores of patents in IP offices across the globe, although …

The Supreme Court's Quiet Revolution In Induced Patent Infringement, Timothy R. Holbrook

Faculty Articles

The Supreme Court over the last decade or so has reengaged with patent law. While much attention has been paid to the Court’s reworking of what constitutes patent-eligible subject matter and enhancing tools to combat “patent trolls,” what many have missed is the Court’s reworking of the contours of active inducement of patent infringement under 35 U.S.C. § 271(b). The Court has taken the same number of § 271(b) cases as subject matter eligibility cases—four. Yet this reworking has not garnered much attention in the literature. This Article offers the first comprehensive assessment of the Court’s efforts to define active …

Ip Litigation In U.S. District Courts: 1994-2014, Matthew Sag

Faculty Articles

This Article undertakes a broad-based empirical review of intellectual property ("IP") litigation in U.S. federal district courts from 1994 to 2014. Unlike the prior literature, this study analyzes federal copyright, patent, and trademark litigation trends as a unified whole. It undertakes a systematic analysis of the records of more than 190,000 cases filed in federal courts and examines the subject matter, geographical, and temporal variation within federal IP litigation over the last two decades.

This Article analyzes changes in the distribution of IP litigation over time and their regional distribution. The key findings of this Article stem from an attempt …

Patently Unconstitutional: The Geographical Limitation On Prior Art In A Small World, Margo A. Bagley

Faculty Articles

Part I of this Article provides an overview of § 102 of the Patent Act, the role of prior art in the patentability analysis, and the origin of the limitation on relevant non-patent, nonpublished art to that existing "in this country." Part II then analyzes the constitutional deficiency of the limitation in light of the express and implied purposes of the Intellectual Property Clause as informed by judicial decisions, technological changes, global contraction, and expanded notions of inventive research sources. Policy concerns are the focus of Part III, which discusses how § 102's geographical limitation facilitates forms of "biopiracy," conflicts …

Internet Business Model Patents: Obvious By Analogy, Margo A. Bagley

Faculty Articles

Part I of this Article provides a look at Internet business model patents in light of key patentability requirements mandated by the Patent Act. Part II traces the evolution of the analogous art component of the non-obviousness determination and illustrates how the malleability of the doctrine, as exemplified in several Court of Appeals for the Federal Circuit decisions, has particular relevance to prior art definitions for Internet business model patents. Part III of this Article then examines the doctrine of equivalents and explores how the likelihood of improper application of this doctrine in the Internet business model context is increased. …

The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook

Faculty Articles

This Article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation based evidence. Second, for the obviousness version of the on-sale …