Law Commons^™

Korean Patent No. Kr1020067027478, Adam R. Stephenson

Adam Stephenson

No abstract provided.

Jurisdictional Issues In The Adjudication Of Patent Law Malpractice Cases In Light Of Recent Federal Circuit Decisions, Michael Ena

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Patent Lottery: Exploiting Behavioral Economics For The Common Good, Dennis D. Crouch

Faculty Publications

Lotteries are immensely popular. Players are willing to give the organizer a large monetary cut of every ticket purchase in return for a chance at a jackpot. In some ways, our current patent system operates as a lottery as well. Most patents are relatively worthless, while a few are highly valuable. Reaching the major payout of a highly valuable patent takes perseverance in the face of tremendous uncertainty. Like lottery players, small entrepreneurial companies and individuals have shows signs of bounded rationality. In particular, what I call the patent lottery effect is associated with the phenomena of potential innovators overweighting …

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 …

On Breaking Patents: Separating Strands Of Fact From Fiction Under Trips, Cynthia M. Ho

Cynthia M Ho

This article provides the first comprehensive analysis of when compulsory licensing of patents is permissible as a matter of international law under the Agreement of Trade-Related Aspects of Intellectual Property (TRIPS). Thailand’s recent compulsory licenses of patents on a variety of medications provide a convenient vehicle to analyze the limits of compulsory licensing under TRIPS. Thailand’s actions are unique; most countries hesitate to issue compulsory licenses in the wake of legal uncertainties regarding TRIPS requirements as well as political pressure. This article capitalizes on the many issues involved in Thailand’s licenses to provide an authoritative interpretation of the scope of …

Improving The Federal Circuit's Approach To Choice Of Law For Procedural Matters In Patent Cases, Ted L. Field

Ted L. Field

Because of its virtually exclusive jurisdiction over patent cases from the entire country, the United States Court of Appeals for the Federal Circuit faces a unique situation with respect to choice of law for procedural matters in patent cases. Normally, in a non-patent-related case, a district court applies the procedural-law precedent of the U.S. Court of Appeals for the circuit in which the district court sits. However, because the Federal Circuit’s jurisdiction is based on subject matter rather than geography, the court has had to choose whether (1) to develop and apply its own precedent to procedural matters or (2) …

Intellectual Property Rights And Global Warming, Estaelle Derclaye

Marquette Intellectual Property Law Review

Global warming is an issue that is everywhere in today's society. This article examines whether intellectual property rights could be the solution to the global warming problem. The article limits its discussion to patent and copyright law and explores solutions to global warming that are applicable in Europe. The author suggests that these recommendations could influence other countries to make their intellectual property rights greener, as intellectual property rights are based on international instruments and universal agreements that could apply in any country. The article examines how current copyright and patent laws already tackle global warming and explains how these …

Kewanee Revisited: Returning To First Principles Of Intellectual Property Law To Determine The Issue Of Federal Preemption, Sharon K. Sandeen

Marquette Intellectual Property Law Review

In the early 1970s it was thought that states could regulate in the areas of trade secrets without interfering with federal patent policies. However, this concept was called into question in the Sixth Circuit's ruling in Kewanee Oil Co. v. Bicron. In 1974 the Supreme Court ruled that Ohio's trade secret law was not preempted by federal patent law. This article revisits the issues raised in Kewanee in light of the Supreme Court's current preemption jurisprudence, changes in patent law, copyright law, and trade secret law since that time. First, the article reviews the history and context of the Kewanee …

Phillips V. Awh, Corp., A Doctrine Of Equivalents Case?, Natalie Sturicz

Marquette Intellectual Property Law Review

For a number of years, U.S. courts have noted that the doctrine of equivalents has been unworkable. This article explains that as American courts move toward a more holistic approach to claim interpretation, the doctrine of equivalents will become increasingly unnecessary as a means of expanding patent scope. The author asserts that adopting a "person having ordinary skill in the art" approach to claim interpretation and eliminating the doctrine of equivalents in patent infringement cases would benefit patent law in several ways: (1) when courts interpret patent claims from the perspective of a person reasonably skilled in the art, patentees …

The Experimental Use Exception And Undergraduate Engineering Projects, Henry L. Welch

Marquette Intellectual Property Law Review

The experimental use exception was originally conceived as a defense applicable when the infringing activities were philosophical. Over time the exception has evolved into a test of the profit motives of the infringer. Despite their status as non-profits, universities now find themselves under the same narrow interpretation of the experimental use exception as previously applied only to profit-seeking businesses. This article explains that the experimental use exception is still a viable defense to patent infringement for a student-sponsored capstone senior design project. In a student-sponsored capstone senior design project, the impetus and general direction of the project are provided almost …

Patent Search, Kaviraj Singh

Kaviraj Singh Sr.

Patent search All the types of patent searches are the same in the sense that searchers are trying to find closely related documents. However, to make it effective, the ways and approach must be different from each other according to the aims of search. The basic purpose of various types of patent search is described herein-below: researchers can easily understand the state-of-the-art technology and so minimize researching time; product developers can be free from anticipated infringement suits; inventors can modify their ideas to be suitable for the patentability criteria; tentative applicants can determine whether they will apply or will save …

Panel I: The Business Method Patent And The Patent Reform Act Of 2007: Can The Law Keep Pace With Technology?, John Richards, Jeanne Fromer, Walter Hanchuk, Scott D. Locke

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Business Method Patents: The Challenge Of Coping With An Ever Changing Standard Of Patentability, Scott D. Locke, William D. Schmidt

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Open Source, Open Access, Open Transfer: Market Approaches To Research Bottlenecks, Robin C. Feldman

Robin C Feldman

One of the most hotly contested issues in the field of intellectual property law concerns the existence, or non-existence, of patent thickets and the extent to which any such bottlenecks may be interfering with research. For decades, scholars warned that problems related to the over proliferation of patent rights would interfere with innovation. In contrast, a growing body of commentary argues that patent thickets are not a problem in modern industries. Either patent thickets do not exist, or if they do, patent thickets do not interfere with the progress of research.

The rhetoric is particularly heated these days because of …

Does The Supreme Court Still Matter?, Timothy B. Dyk

American University Law Review

No abstract provided.

Level Of Skill And Long-Felt Need: Notes On A Forgotten Future, Joe Miller

Scholarly Works

The Supreme Court's KSR decision transforms the way we think about patent law's ordinary artisan. The ordinary artisan, the Supreme Court states, is also a person of ordinary creativity, not an automaton. This transformation, which sweeps aside a contrary precept that had informed the Federal Circuit's nonobviousness jurisprudence for a generation, raises a key question: How do we fill out the rest of our conception, in a given case, of the ordinary artisan's level of skill at the time the invention was made? Reaching back to a large vein of case law typified by Judge Learned Hand's decisions about nonobviousness, …

Law's Misguided Love Affair With Science, Robin Feldman

Robin C Feldman

The allure of science has always captivated members of the legal profession. Its siren’s song has followed us throughout much of American legal history. We look to science to rescue us from the experience of uncertainty and the discomfort of difficult legal decisions, and we are constantly disappointed.

The notion of what constitutes science and what it would take to make law more scientific varies across time. What does not vary is our constant return to the well. We are constantly seduced into believing that some new science will provide answers to law’s dilemmas, and we are constantly disappointed.

This …

Patents, Taxes And The Nuclear Option: Do We Need A “Tax Strategy Patent” Ban?, Max Oppenheimer

All Faculty Scholarship

No abstract provided.

Speaking Words Of Wisdom: Let It Be: The Reexamination Of The Human Embryonic Stem Cell Patents, Julia Vom Wege Dovi

Marquette Intellectual Property Law Review

Embryonic stem cell research represents an area of scientific inquiry that bears great promise, and patent law ensures that stem cell technology is both protected and utilized to its fullest potential. This article analyzes why the USPTO should not invalidate or narrow three challenged stem cell patents owned by the Wisconsin Alumni Research Foundation (WARF) through the Public Patent Foundation. The author outlines the science behind stem cells, explains the applicable law, and articulates the policy considerations relevant to patent law and stem cells. Ultimately, the author argues that that the challenged patents should remain valid because they have not …

Inequitable Conduct: A Flawed Doctrine Worth Saving, Lisa A. Dolak

Lisa A Dolak

A growing chorus of voices is calling for reform or even elimination of the doctrine of inequitable conduct. Critics argue that innocent or even irrelevant prosecution mistakes can be met with the ultimate penalty: unenforceability of the entire patent.

There is no question the doctrine is in need of repair. Patent owners are subject to different materiality standards in the U.S. Patent and Trademark Office and the courts. Inequitable conduct charges can be based on information completely immaterial to patentability. Findings of deceptive intent are increasingly based on inference and not evidence. And the one-size-fits-all remedy of total unenforceability deprives …

Ebay And The Blackberry®: A Media Coverage Case Study, Lisa A. Dolak, Blaine T. Bettinger

Lisa A Dolak

Patent owners, potential infringers, and the courts will continue to work through the implications of the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C. for some time. We look back, however, at media coverage relating to injunctions, “trolls,” and the U.S. patent system generally, in the months preceding the Court’s decision. We show that although eBay featured prominently in news and editorial coverage while it was pending at the Court, it could not compete in the media with another patent case pending at the same time: the case that threatened to darken the Blackberry®. Further, we note that …

The United States Patent System In The Media Mirror, Lisa A. Dolak, Blaine T. Bettinger

Lisa A Dolak

The last several years have witnessed a flurry of transformative patent reform activity. The Supreme Court has issued key rulings affecting the availability of injunctive and declaratory relief, revised the law of obviousness, and limited the extraterritorial reach of the patent act. Now Congress stands poised to ratify the most significant and far-reaching overhaul of the patent system in at least 45 years.

In this study, we analyzed major newspaper coverage of the patent system from January 1, 2005 through June 30, 2007 to systematically assess how the press portrayed the U.S. patent system. Our examination revealed a negative overall …

Striking A Balance Between Competition Law Enforcement And Patent Policy: A Developing Country's Perspective, Thomas K. Cheng

Thomas K. Cheng

This book chapter examines the tension between competition law enforcement and patent policy in developing countries. Based on the framework proposed by Louis Kaplow in an article in the early 1980s, this book chapter suggests how developing countries should balance consumer welfare against the need to provide incentives to innovate. The book chapter argues that the balance depends on the developing country at issue, in particular on that country's capacity to innovate. For those developing countries with little capacity to innovate, this book chapter suggests that the balance should be tilted towards competition law enforcement. The degree of patent protection …

Le Domaine Public, Garant De L'Intérêt Général En Propriété Intellectuelle ?, Severine Dusollier

Severine Dusollier

No abstract provided.

Mythical Beginnings Of Intellectual Property, Jessica M. Silbey

Jessica Silbey

It has become commonplace to justify intellectual property protection with homage to utilitarianism (maximizing the incentive to create, invent or produce quality goods) or natural rights (people should own the product of their creative, inventive or commercial labor). Despite the on-going dominance of these theories, there remains a dissatisfying lack of a comprehensive explanation for the value of intellectual property protection. This is in part because the economic analysis of law tends to undervalue the humanistic element of intellectual property. This Article aims to fill that void. It offers a new explanation for intellectual property rooted in narrative theory. Whereas …

Users As Innovators: Implications For Patent Doctrine, Katherine J. Strandburg

Katherine J. Strandburg

User innovators range from commercial firms, which invent new production methods in expectation of competitive advantage, to individual hobbyists motivated entirely by their enjoyment of the inventive process. In this Article, I consider the implications for patent doctrine of the fact that many user innovators derive sufficient benefit simply from developing and using their inventions to motivate them to invest the effort necessary to invent them. Moreover, user innovators often benefit from “freely revealing” their innovations to others. Trade secrecy and patenting are not central to motivating this inventive activity.

This picture of user innovation contrasts sharply with the seller …

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 …

New Research Uses For Patent And Trademark Data, Roger V. Skalbeck

Law Faculty Publications

In this article, I examine alternative uses for information found in patent and trademark filing databases, suggesting ways to locate a law firm's clients, perform competitive intelligence, and locate or investigate expert witnesses. Finally, I talk about an interesting non-law use of patent data, i.e., historical research.

Sandisk Corp. V. Stmicroelectronics, Inc., Patrick R. Colsher

NYLS Law Review

No abstract provided.

Appropriate Patent Rules In Developing Countries - Some Deliberations Based On Thai Legislation, Jakkrit Kuanpoth

Faculty of Law - Papers (Archive)

TRIPS Agreement mandates adequate and effective protection for all inventions regardless of the field of technology. The fundamental questions are whether the extent of protection of pharmaceuticals will be beneficial for the socio-economic development of developing countries and how can the impact of the new system be monitored and controlled in the interests of the concerned countries and their populations. Under the Thai Patent Law, Section 46.50 provides for the grant of compulsory licenses, which in practical terms are difficult to implement so much so that no such licenses have been granted since 1979 when the Act came into force. …