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Patent

2009

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Full-Text Articles in Law

Enforcing Intellectual Property Rights: A Methodology For Understanding The Enforcement Problem In China, Justin Mccabe Dec 2009

Enforcing Intellectual Property Rights: A Methodology For Understanding The Enforcement Problem In China, Justin Mccabe

The University of New Hampshire Law Review

[Excerpt] “Intellectual property rights are neither protected nor enforced in strict uniformity throughout the world. However, it can be said that in most developed countries, intellectual property is preciously guarded, as evidenced by a plethora of intellectual property statutes, penalties for infringement, and consistent attempts to convince less developed nations to adopt strong—or stronger—intellectual property protections. Despite continued vigilance by developed countries in bringing about increased international harmony among intellectual property regimes, some developing countries sustain questionable enforcement policies. What the driving force is behind intellectual property enforcement policies—or more appropriately, the lack thereof—is a matter ...


Egyptian Goddess, Inc. V. Swisa, Inc.: A Dramatic Change In The Law Of Design Patents?, Evan Szarenski Dec 2009

Egyptian Goddess, Inc. V. Swisa, Inc.: A Dramatic Change In The Law Of Design Patents?, Evan Szarenski

The University of New Hampshire Law Review

[Excerpt] “On September 22, 2008, the Federal Circuit, sitting en banc, handed down the most important decision in design patent law in nearly twenty-five years. Egyptian Goddess, Inc. v. Swisa, Inc. (Egyptian Goddess III) abolished the point-of-novelty test first set out in Sears, Roebuck & Co. v. Talge and adopted by the Federal Circuit in Litton Systems, Inc. v. Whirlpool Corp. The point-of novelty test required patent holders to prove that an accused design appropriated the element which sets the patented design apart from the prior art—in addition to the ordinary-observer standard’s requirement of having substantially the same appearance ...


Prospective Of Foreign Prosecution History Estoppel In Korean Patent Litigation, Hyung Joon Lee Oct 2009

Prospective Of Foreign Prosecution History Estoppel In Korean Patent Litigation, Hyung Joon Lee

Hyung Joon Lee

This Article responds to an emerging view, in patent litigation, to employ foreign prosecution history estoppel as a doctrine in claim construction. In this regard, the United States Court of Appeals for the Federal Circuit (hereinafter, referred to as CAFC) has found a representation made during a patent litigation in Korea to be effective as a prosecution history estoppel in a U.S. patent infringement suit, i.e., AstraZeneca v. Andrx Pharmaceuticals (04-1562). This Article reviews the foundation of this decision, such as Doctrine of Equivalents and Prosecution History Estoppel. Subsequently, the present Article examines several important cases to analyze ...


How (Not) To Discourage The Unscrupulous Copyist, Peter L. Ludwig Oct 2009

How (Not) To Discourage The Unscrupulous Copyist, Peter L. Ludwig

Peter L. Ludwig

This short article explores how the U.S. and Japanese courts implement the doctrine of equivalence when determining patent infringement. The doctrine of equivalence is a balance of, on one hand, the public’s interest to know the metes and bounds of the patent; and on the other hand, the private interest of the patentee to be granted a sufficient scope for the granted patent. After comparing and contrasting the courts’ implementation of the doctrine, I propose a new method that places the burden on the patent practitioner, before infringement proceedings begin, to determine the proper scope of the patent.


Brief Of Eleven Law Professors And Aarp As Amici Curiae In Support Of Respondent, Bilski V. Kappos, 130 S. Ct. 3218 (2010) (No. 08-964), Joshua Sarnoff, Lori Andrews, Andrew Chin, Ralph Clifford, Christine Farley, Sean Flynn, Debra Greenfield, Peter Jaszi, Charles Mcmanis, Lateef Mtima, Malla Pollack Oct 2009

Brief Of Eleven Law Professors And Aarp As Amici Curiae In Support Of Respondent, Bilski V. Kappos, 130 S. Ct. 3218 (2010) (No. 08-964), Joshua Sarnoff, Lori Andrews, Andrew Chin, Ralph Clifford, Christine Farley, Sean Flynn, Debra Greenfield, Peter Jaszi, Charles Mcmanis, Lateef Mtima, Malla Pollack

Amicus Briefs

This is the brief filed by Joshua Sarnoff and Barbara Jones on behalf of various law professors and AARP in the Bilski v. Kappos case, discussing constitutional limits to the Patent power.


Is Novelty Obsolete? Chronicling The Irrelevance Of The Invention Date In U.S. Patent Law, Dennis D. Crouch Oct 2009

Is Novelty Obsolete? Chronicling The Irrelevance Of The Invention Date In U.S. Patent Law, Dennis D. Crouch

Faculty Publications

This paper presents a normative study of patent applicant use of invention-date rights during ex parte prosecution.


One Size Does Not Fit All: A Framework For Tailoring Intellectual Property Rights, Michael W. Carroll Oct 2009

One Size Does Not Fit All: A Framework For Tailoring Intellectual Property Rights, Michael W. Carroll

Articles in Law Reviews & Other Academic Journals

The United States and its trading partners have adopted cultural and innovation policies under which the government grants one-size-fits-all patents and copyrights to inventors and authors. On a global basis, the reasons for doing so vary, but in the United States granting intellectual property rights has been justified as the principal means of promoting innovation and cultural progress. Until recently, however, few have questioned the wisdom of using such blunt policy instruments to promote progress in a wide range of industries in which the economics of innovation varies considerably.

Provisionally accepting the assumptions of the traditional economic case for intellectual ...


Fixing A Hole: Will Generic Biologics Find A Niche Within The Hatch-Waxman Act?, Elysa B. Goldberg Oct 2009

Fixing A Hole: Will Generic Biologics Find A Niche Within The Hatch-Waxman Act?, Elysa B. Goldberg

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.


Rethinking Patent Fraud Enforcement In A Reform Era, Kali Murray, Dmitriy Vinarov Jul 2009

Rethinking Patent Fraud Enforcement In A Reform Era, Kali Murray, Dmitriy Vinarov

Marquette Intellectual Property Law Review

This Article contends that, while the defense of inequitable conduct offers an avenue to combat fraudulent patent applications, the doctrine suffers from shortcomings that spring from two compromises. First, the amorphous nature of the equitable defense prompts institutional conflict between the United States Patent and Trademark Office and the Federal Circuit. Second, by relegating enforcement solely to a patentee's market competitors, the defense fails to protect the public interest adequately. In light of these compromises, the authors propose two goals to guide current reform efforts in Congress. Initially, Congress's attempt to reform patent fraud enforcement should relieve the ...


Emerging Scholars Series: Cross-Border Injunctions In U.S. Patent Cases And Their Enforcement Abroad, Marketa Trimble Jul 2009

Emerging Scholars Series: Cross-Border Injunctions In U.S. Patent Cases And Their Enforcement Abroad, Marketa Trimble

Marquette Intellectual Property Law Review

Injunctions enforcing a patentee's right to exclude provide an incentive to invent; however, injunctions are only effective if they can be enforced. Enforcing an injunction becomes problematic when other jurisdictions are involved, yet plaintiffs request such injunctions despite the potential inherent difficulties of cross-border enforcement. The author empirically analyzes the number and types of cross-border injunctions issued in the United States against foreign entities by discussing methods of enforcing injunctions abroad and the difficulties inherent in those methods. Comparing cases of cross-border injunctions issued by European courts, the author reviews the controversial pan-European injunction that covers not only the ...


Not All Grace Periods Are Created Equal: Building A Grace Period From The Ground Up, Renee E. Metzler Jul 2009

Not All Grace Periods Are Created Equal: Building A Grace Period From The Ground Up, Renee E. Metzler

Marquette Intellectual Property Law Review

The grace period for patent application filing is the amount of time a patent applicant has to file the application after the invention has been disclosed to the public. The rules and amount of time allowed vary greatly among countries. This comment explores the theoretical justifications for a grace period, the structural elements of a grace period, and other approaches to a grace period used in countries outside of the United States. The author proposes an ideal grace period model that would create international harmonization.


Fixing Continuing Application Practice At The Uspto, Kevin Rizzuto Jul 2009

Fixing Continuing Application Practice At The Uspto, Kevin Rizzuto

Marquette Intellectual Property Law Review

Controversy surrounds continuing application practice at the United States Patent & Trademark Office. Legal scholars highlight problems with continuing application practice and ways that applicants abuse the system. Patent practitioners admit that continuing application abuses exist, yet believe that establishing limits on continuing application practice would lead to an increase in appeals to the Board of Patent Appeals and Interferences. The USPTO attributes much of its continually growing backlog to the volume of continuing applications and requests for continued examinations, and published Proposed Rules to limit continuing applications. Legal scholars and the USPTO propose solutions that are too restrictive on the ...


Toward A More Reliable Fact-Finder In Patent Litigation, Amy Tindell Jul 2009

Toward A More Reliable Fact-Finder In Patent Litigation, Amy Tindell

Marquette Intellectual Property Law Review

Juries have been perceived as a blessing and a curse. They are perceived differently in different areas of law. For example, practitioners in patent law view juries in a negative light as the fact finders. In accordance with this view, Federal Courts of Appeals have begun to narrow the role of juries in patent trials. This paper follows the development of the Seventh Amendment in the patent context and its current status. This paper then proposes a system similar to peer-review to replace the traditional jury in patent trials.


Assuring All Substantial Rights In Exclusive Patent Licenses, Jeff Newton Jun 2009

Assuring All Substantial Rights In Exclusive Patent Licenses, Jeff Newton

Jeff Newton

Despite their best of intentions, parties draft license agreements which purport to have the patentee grant sufficient rights for a licensee to assert a patent against third parties, but fail to grant all substantial rights to sue. The surprising number of cases decided against the intended transfer of all substantial rights to empower a licensee to sue on a patentee is a testimony to the complexity of the jurisprudence in this area. This article clarifies the jurisprudence as to all substantial rights in patent licenses by reviewing the primary categories in a licensing transactions, analyzing thirteen key cases on point ...


Construing Patent Claims In Light Of The Specification Versus Importing Claim Limitations From The Specification: Is There Any Difference?, Robbie R. Harmer Jun 2009

Construing Patent Claims In Light Of The Specification Versus Importing Claim Limitations From The Specification: Is There Any Difference?, Robbie R. Harmer

Robbie R Harmer

Patent litigation often turns on the meaning of words in patent claims. Though litigants, licensees, assignees, and examiners at the U.S. Patent and Trademark Office (PTO) all must interpret, or construe, patent claims at some point in the lifetime of a patent, judges have the final say as to the scope and meaning of the words in patent claims. Judges’ interpretive methodologies raise questions about the relationship between the claims and the specification. The Federal Circuit, having exclusive appellate jurisdiction over patents, has established that courts should construe patent claims “in light of” the patent specification. On the other ...


Allocating Intellectual Property Rights Between Parties, Ashlyn J. Lembree Jun 2009

Allocating Intellectual Property Rights Between Parties, Ashlyn J. Lembree

Law Faculty Scholarship

No abstract provided.


Courting Specialization: An Empirical Study Of Claim Construction Comparing Patent Litigation Before Federal District Courts And The International Trade Commission, David L. Schwartz Apr 2009

Courting Specialization: An Empirical Study Of Claim Construction Comparing Patent Litigation Before Federal District Courts And The International Trade Commission, David L. Schwartz

All Faculty Scholarship

The United States International Trade Commission (ITC) has recently become an important adjudicator of patent infringement disputes, and the administrative law judges (ALJs) on the ITC are widely viewed as experts on patent law. This Article empirically examines the performance of the ITC in patent claim construction cases. The Article also compares the performance of the ITC on claim construction with that of federal district courts of general jurisdiction. This study does not find any evidence that the patent-experienced ALJs of the ITC are more accurate at claim construction than district court judges or that the ALJs learn from the ...


Chinese Patent No. Cn100474520c, Adam R. Stephenson Mar 2009

Chinese Patent No. Cn100474520c, Adam R. Stephenson

Adam Stephenson

No abstract provided.


Predictability And Patentable Processes: The Federal Circuit’S In Re Bilski Decision And Its Effect On The Incentive To Invent, William M. Schuster Mar 2009

Predictability And Patentable Processes: The Federal Circuit’S In Re Bilski Decision And Its Effect On The Incentive To Invent, William M. Schuster

William M. Schuster II

Throughout the past two centuries, the U.S. patent system has defined the scope of (potentially) patentable processes by proscribing patents on fundamental principles (including abstract ideas, laws of nature, and natural phenomena). Unfortunately, such a description of patentable subject matter led to ambiguity and unpredictability in the application of the patent laws. In 2008, the Federal Circuit addressed this uncertainty by promulgating a new standard to describe the ambit of patentable processes: a process may constitute patentable subject matter if (1) it utilizes a particular machine or apparatus, or (2) it transforms an object into a different state or ...


Allocating Patent Rights Between Earlier And Later Inventions, Charles Adams Mar 2009

Allocating Patent Rights Between Earlier And Later Inventions, Charles Adams

Charles W. Adams

Allocating Patent Rights Between Earlier and Later Inventions By Charles W. Adams Abstract The patent statutes expressly authorize patents for improvements to earlier inventions, but they do not address the allocation of rights between the patents for the original inventions and the after-arising technology. From an economic standpoint, the allocation of patent rights should depend on the relative contribution of the original inventor and the improver and on the effect that the allocation would have on their respective incentives. Improvements on earlier inventions may give rise to blocking patents in which the permission of both the original inventor and the ...


Untapped Inventive Potential In U.S. Communities, Michael Meehan Mar 2009

Untapped Inventive Potential In U.S. Communities, Michael Meehan

Michael Meehan PhD

This paper combines the 2000 U.S. Census data and the National Bureau of Economic Research’s (NBER) Patent Citation Data File in order to analyze how certain community-level population and community factors correlate with overall patenting and relative rates of assigned and unassigned patenting. Among the interesting findings discussed are that, in addition to the fact that overall patenting increased with higher populations of employed people, higher populations of people with either terminal undergraduate or master’s degrees, and higher median income, the overall rates of patenting decreased, and did not merely remain the level, as the other sectors ...


Hoisting Originality: A Response, Roberta Kwall Mar 2009

Hoisting Originality: A Response, Roberta Kwall

College of Law Faculty

This commentary originally appeared as part of the inaugural Virtual Workshop sponsored by the Intellectual Property Institute at the University of Richmond School of Law. The workshop featured a paper entitled Hoisting Originality (now published at Cardozo Law Review, Vol. 31, p. 451, 2009) by Professor Joseph Miller, along with two commentaries on the paper. My commentary examines and responds to Miller's argument that the standard for copyright law's originality requirement should be "hoisted" and thus analogized to that present in patent law.


Hoisting Originality: A Response, Roberta R. Kwall Feb 2009

Hoisting Originality: A Response, Roberta R. Kwall

Roberta R Kwall

This commentary originally appeared as part of the inaugural Virtual Workshop sponsored by the Intellectual Property Institute at the University of Richmond School of Law. The workshop featured a paper entitled Hoisting Originality (now published at Cardozo Law Review, Vol. 31, p. 451, 2009) by Professor Joseph Miller, along with two commentaries on the paper. My commentary examines and responds to Miller's argument that the standard for copyright law's originality requirement should be "hoisted" and thus analogized to that present in patent law.


To © Or Not To ©? Copyright And Innovation In The Digital Typeface Industry, Jacqueline D. Lipton Feb 2009

To © Or Not To ©? Copyright And Innovation In The Digital Typeface Industry, Jacqueline D. Lipton

Jacqueline D Lipton

Intellectual property rights are often justified by utilitarian theory. However, recent scholarship suggests that creativity thrives in some industries in the absence of intellectual property protection. These industries might be called IP’s negative spaces. One such industry that has received little scholarly attention is the typeface industry. This industry has recently digitized. Its adoption of digital processes has altered its market structure in ways that necessitate reconsideration of its IP negative status, with particular emphasis on copyright. This article considers the historical denial of copyright protection for typefaces in the United States, and examines arguments both for and against ...


Uk Patent No. Gb2431278b, Adam R. Stephenson Jan 2009

Uk Patent No. Gb2431278b, Adam R. Stephenson

Adam Stephenson

No abstract provided.


Securitization Of Patents And Its Continued Viability In Light Of The Current Economic Conditions, Aleksandar Nikolic Jan 2009

Securitization Of Patents And Its Continued Viability In Light Of The Current Economic Conditions, Aleksandar Nikolic

Aleksandar Nikolic

No abstract provided.


A Question Of Deference: Contrasting The Patent And Trademark Jurisdiction Of The Federal Circuit, Brian Dean Abramson Jan 2009

A Question Of Deference: Contrasting The Patent And Trademark Jurisdiction Of The Federal Circuit, Brian Dean Abramson

Brian Dean Abramson Esq.

This article details the various routes by which a patent or trademark matter may fall within the purview of the United States Court of Appeals for the Federal Circuit, and the divergent jurisdictional approach taken by the Federal Circuit to these different areas of law. This article was a top five finalist out of 125 submissions to the Federal Circuit Bar Association’s 2009 George Hutchinson Writing Competition.


The Public Domain In Intellectual Property: Beyond The Metaphor Of A Domain, Severine Dusollier Jan 2009

The Public Domain In Intellectual Property: Beyond The Metaphor Of A Domain, Severine Dusollier

Severine Dusollier

No abstract provided.


User Innovator Community Norms At The Boundary Between Academic And Industrial Research, Katherine J. Strandburg Jan 2009

User Innovator Community Norms At The Boundary Between Academic And Industrial Research, Katherine J. Strandburg

Katherine J. Strandburg

In this essay, I consider norms of sharing research tools and materials in what has been called Pasteur’s Quadrant, in which basic science and applied research overlap. I employ a user innovation paradigm, along with a rational choice approach to social norms, to address the issue. The convergence of academic research with commercial interests has two different types of consequences for sharing norms. First, a research tool or material developed in a nonprofit research context may be a dual-purpose innovation with both research and nonresearch uses. Thus, for example, a genetic assay may be useful in research and as ...


Norms And The Sharing Of Research Materials And Tacit Knowledge, Katherine J. Strandburg Jan 2009

Norms And The Sharing Of Research Materials And Tacit Knowledge, Katherine J. Strandburg

Katherine J. Strandburg

As discussed in Wesley Cohen’s chapter in this volume, recent empirical studies have documented that scientists experience increasing difficulty obtaining tangible research materials from other scientists, while they express fewer concerns than many had anticipated about do-it-yourself tools that can be made in the laboratory, even when those tools are patented. In this Chapter I use a rational choice model of social norms to elucidate some factors that affect the likelihood that a research community will adopt a sharing norm. Based on those factors, I discuss some means by which sharing of tangible research materials can be encouraged. The ...