Law Commons^™

The U.S. Patent Office’S Proposed Fees Under The America Invents Act—Part I: The Scope Of The Office’S Fee-Setting Authority, Ron D. Katznelson

Ron D. Katznelson

This two-part article discusses the Patent and Trademark Office’s recent proposed rulemaking setting new patent user fees. In Part I the author argues that the PTO can raise fees in accordance with its aggregate costs but lacks authority to set national patent policies, or to skew certain fees to discourage or encourage a particular service. The author also asserts that the America Invents Act does not vest with the PTO discretion to set the level of its operating reserve – a determination reserved solely for congressional appropriations. In an upcoming Part II, the author will discuss specific fees and their …

Pruning The European Intellectual Property Tree - In Search Of Common Principles And Roots, Severine Dusollier

Severine Dusollier

The European Union knows a multiplicity of IP rights, from classical ones (copyright, patent, trademark or design) to more marginal ones, in terms of economic sectors concerned (rights in database, in plant varieties, in semiconductors, in geographical indications). This paper aims at identifying and assessing the existing similarities or common principles in the intellectual property rights in the European Union. Despite their apparent diverging functions, subject matter and scope of protection, copyright, trademark, patent and the other intellectual property rights share at least the fact that they belong to a set of rules granting some exclusive rights in intangible assets, …

Prometheus And The Natural Phenomenon Doctrine: Let’S Not Lose Sight Of The Forest For The Trees, Samantak Ghosh

Samantak Ghosh

The Supreme Court’s recent decision on patentable subject matter, Mayo Collaborative Services. v. Prometheus Laboratories, has come in for a lot of criticism from the biotechnology industry. Whenever the Supreme Court renders a judgment that is a significant departure from the past and arguably gets it wrong, the voices questioning the underlying principle behind the decision become stronger. Unfortunately, Prometheus was a poor vehicle for recalibrating a doctrine that has been untouched for the past three decades. However, it is important to dissociate the specific opinion from the principle animating the opinion, the natural phenomenon doctrine. If the natural phenomenon …

Will Fda Data Exclusivity Make Biologic Patents Passé?, Vincent J. Roth Esq

Vincent J Roth Esq

Much controversy has ensued over the current 12 year data exclusivity period afforded biosimilars pursuant to the Biologics Price Competition and Innovation Act of 2009 (the “BPCI”) that was recently enacted in March 2010, as part of President Obama’s Patient Protection and Affordable Care Act (the “PPACA”), to create a biosimilar market in the US. In fact, the BPCI, itself, has been controversial and just barely survived judicial scrutiny when the US Supreme Court upheld the PPACA on June 28, 2012 in a 5-4 vote. Many commentators speculate whether data exclusivity will overtake patents as the preferred method of intellectual …

Design Patent Drawings - Shading Rules And Regulations As Per Uspto & Pct Specifications, Bernadette Marshall

Bernadette Marshall

According to The United States Patent and Trademark Office (USPTO) guidelines for Design Patents, the drawing disclosure is the most important element of the application.

As we will discuss in this article, in a design patent application, surface shading directly relates to clarity.

Proper application of various shading techniques including samples.

Tangencies – what they are and how they help a patent examiner understand the shape of an item.

Bold Lines - how they are used to emphasize openings, indentations and raised areas.

Different requirements for drawings in USA (USPTO) and international filings (PCT).

Conclusion:

Avoid Japanization, Nahoko Ono

Nahoko Ono

USPTO and academia are both recently keen to encourage further transparency of patent assignment recordation system. This article contends that excessive regulatory framework is likely to deter exploitation of patents as Japan fails to do so despite of its top-ranked patent producer in the world.

Standard Of Proof For Patent Invalidation In The U.S. And Japan, Yoshinari Oyama

Yoshinari Oyama

In June 2011, the U.S. Supreme Court confirmed the standard of proof for patent invalidation in Microsoft Corp. v. i4i Limited Partnership, et al. The Court held that an invalidity defense to be proven by clear and convincing evidence rather than by a preponderance of the evidence and that burden is constant and never changes. Compared to the U.S. patent system, there is no heightened standard of proof required for patent invalidation in infringement suits in Japanese courts and the invalidation rate is high especially after Kilby cas in 2000, where the Japanese Supreme Court decided that a patentee could …

Prometheus' Revenge: Process Patent Ambiguity, Robert Devin Ricci

Robert Devin Ricci

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court returned to historical roots to determine whether a process met the subject matter criteria requirement for patents. The decision to return to historical precedent demonstrates two things: 1) the Court is hesitant to adopt black letter tests for determining patent eligibility and 2) the Court doubts the future applicability of the transformation component of the machine-or-transformation test as technology progresses. Because the decision did not provide any true guidance or light as to how a process claim should be analyzed for subject matter eligibility, the eligibility of such patents …

Could A Hub And Spoke, Homegrown Ceo Strategy Boost The Success Of University Start-Ups?, Brendan O. Baggot, Martin R. Graf Phd

Brendan O. Baggot

How can universities make more money with their spinout company (SpinCo)‐suitable technologies? By “growing” their own CEOs to improve both the quality and quantity of startup company leaders available, that’s how. Surprisingly, however, at most universities little or no effort is made to interweave this critical need into tech transfer efforts.

Reframing Patent Remedies, Karen E. Sandrik

Karen E. Sandrik

The strength of our patent system is waning. The Supreme Court recently opened the door for dramatic change by rejecting the long-standing presumption that a permanent injunction should issue upon the adjudication of a valid and infringed patent. Courts have since refashioned patent remedies to favor monetary liability for patent infringement, resulting in the restructuring of substantive rights for certain classes of patent holders. This shift to a liability rule means that a patent holder loses its right to require consent prior to the use of its patented technology. This is a troubling development. If a patent holder is unable …

Discordant Harmonization: Did The European Court Of Justice Interpret The Biotechnology Directive’S Exclusions To Patentability Too Broadly In Brustle V. Greenpeace?, Mark Nickas

Mark Nickas

Stem cell technology offers the hope of treating a variety of diseases for which no effective treatment is currently available. Development of most therapeutic technologies depends on the availability of patent rights, which offer the opportunity to recoup the substantial investment necessary for such inventions. The question of whether human embryonic stem cells (hESCs) are eligible for patent protection raises deep-seated questions of ethics, with compelling moral arguments on both sides. The European Union’s Biotechnology Directive, passed in 1998, excludes from patentability inventions that involve the use of human embryos as contrary to ordre public or morality. Since the enactment …

Patent Reversion: An Employee-Inventor's Second Bite At The Apple, Richard Kamprath

Richard Kamprath

In an attempt to more fully compensate employee-inventors without harming the return on investment of employers, a patent reversion is proposed in which the rights to the patent revert to joint ownership between the original inventor and the current owner. In Section I, the background of the relationship between employer and employee-inventor will be discussed in terms of patent rights. This section will outline the problems inherent in the pre-assignment status quo of these rights from employees to employers. Section II will begin with Part A, which is a review of previously proposed solutions to the under-compensation of employee-inventors. The …

Patent Reform And Best Mode: A Signal To The Patent Office Or A Step Toward Elimination?, Ryan G. Vacca

Ryan G. Vacca

On September 16, 2011, President Obama signed the America Invents Act (AIA), the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law's best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. …

Building The Global Green Patent Highway: A Proposal For International Harmonization Of Green Technology Fast Track Programs, Eric L. Lane

Eric L. Lane

As governments around the world recognize the importance of development and implementation of clean technologies in mitigating climate change, they have looked to patenting procedures as a mechanism to promote and accelerate green innovation. In particular, many national intellectual property offices have implemented programs that provide expedited examination of patent applications directed to green technologies. These green patent fast track programs vary widely in their rules, both in eligibility requirements and process parameters. Due to these disparities, it can be costly and time consuming for applicants and their patent attorneys to select which green technology patent fast track programs to …

Ethics In Intellectual Property Negotiations: Issues And Illustrations, Lisa A. Dolak

Lisa A Dolak

Negotiating – formally or informally – is a characteristic aspect of law practice. The requisite skills are acquired “on the job” and, for some, via the formal study of negotiation processes and attributes. The negotiator has much to consider, including the client’s goals and interests, likely litigation outcomes should negotiations fail or any ultimate agreement be breached, and what the counterparty is likely seeking to accomplish.

The challenges include negotiating within the limits imposed by the ethics rules. This paper identifies key authorities relevant to negotiation ethics and illustrates their operation in the context of hypotheticals based on intellectual property …

Patent Reversion: An Employee-Inventor's Second Bite At The Apple, Richard Kamprath

Richard Kamprath

In an attempt to more fully compensate employee-inventors without harming the return on investment of employers, a patent reversion is proposed in which the rights to the patent revert to joint ownership between the original inventor and the current owner. In Section I, the background of the relationship between employer and employee-inventor will be discussed in terms of patent rights. This section will outline the problems inherent in the pre-assignment status quo of these rights from employees to employers. Section II will begin with Part A, which is a review of previously proposed solutions to the under-compensation of employee-inventors. The …

Patent Claim Apportionment, Patentee Injury And Sequential Invention, Amy L. Landers

Amy L Landers

Reasonable royalty compensation for patent infringement is the most popular form of recovery and becomes more so every year. This may be based on the unfortunate but accurate perception that patentees can win big using the overly malleable legal standards that now govern such awards. One of the most glaring shortcomings of the standard is that it permits an award of a reasonable royalty based on doctrine that has lost touch with its statutory purpose.

This article sets forth a theory of patentee injury to establish a causative link between the inventive contribution and the reasonable royalty award. After doing …

Patent Cases And Jurisdiction Controversies, Amelia Smith Rinehart

Amelia Smith Rinehart

No abstract provided.

Valuing Publication And Attribution In Intellectual Property, Christopher Sprigman, Christopher Buccafusco, Zachary Burns

Christopher Sprigman

This is the third in a series of articles focusing on the experimental economics of intellectual property. In earlier work, we have experimentally studied the ways in which creators assign monetary value to the things that they create. That research has suggested that creators are subject to a systematic bias that leads them to overvalue their work. This bias, which we have called the 'creativity effect,' potentially results in inefficient markets in IP, because creators may be unwilling to license their works for rational amounts. Our prior research, however, like American IP law itself, focused exclusively on the monetary value …