Law Commons^™

Echoes From The Past: How The Federal Circuit Continues To Struggle With Patentable Subject Matter Post-Bilski, Jeff Thruston

Missouri Law Review

This Note will examine whether the cases comprising the eligible subject matter trio are inherently inconsistent. In looking at this issue, this Note will ask if Classen Immunotherapies can be reconciled with the patent eligibility trio, or if both the case and Judge Rader's concerns could have been dealt with more effectively by applying 35 U.S.C. § 101 as a last resort, and instead determining patent eligibility via 35 U.S.C. §§ 102, 103, and 112. It is fundamentally more difficult, expensive, and time consuming to ascertain which category of patentable subject matter a claimed invention falls into, or if the …

Continuing The Conversation Of "The Economic Irrationality Of The Patent Misuse Doctrine", Christa J. Laser

Chicago-Kent Journal of Intellectual Property

This Article uses economic tools to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. It attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic Irrationality of the Patent Misuse Doctrine. It argues that a partial economic equilibrium in patent misuse doctrine can be achieved by attempting to match Congress’s intended patent scope with the actual patent scope. It then holds that the ideal patent misuse doctrine should (1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation …

The Plumpy'nut Predicament: Is Compulsory Licensing A Solution?, Umar R. Bakhsh

Chicago-Kent Journal of Intellectual Property

No abstract provided.

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.

"Offer To Sell" As A Policy Tool, Lucas S. Osborn

Lucas S. Osborn

Gone are the days when the term “offer” is confined to first-year contracts courses and the intricacies of contract formation. The offer concept has quietly migrated throughout the law. It now regulates behavior in areas as diverse as criminal law, environmental law, securities law, and intellectual property law. Despite its wide diffusion, the offer concept remains largely unstudied as a legal concept outside of its contract-law environment. This Article begins to fill that gap. The Article begins by deconstructing the meaning of a traditional contract-law “offer” to determine its policy role in contract law, and then compares that role with …

Patent Chokepoints In The Influenza-Related Medicines Industry: Can Patent Pools Provide Balanced Access?, Dana Beldiman

Dana Beldiman

Release of samples of biological materials with high imminent commercial potential, such as the influenza virus samples, is likely to cause a “race” to patent and to gain market share among recipients. This “race” may give rise to sub-optimal functioning of the patent system, in the nature of patent thickets and hold-outs, prompted by conditions such as multiple parties inventing based on a single biological resource, high growth markets, a congested patent scene and narrow and fragmented patents. This paper examines the causes of the sub-optimal functioning of the patent system under these circumstances, using the WHO Pandemic Influenza Preparedness …

The Ontological Function Of The Patent Document, Andrew Chin

Faculty Publications

With the passage and impending implementation of the “first-to-file” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written …

The Ontological Function Of The Patent Document, Andrew Chin

Andrew Chin

With the passage and impending implementation of the “first-to-file” provisions of the America Invents Act of 2011, the U.S. patent system must rely more than ever before on patent documents for its own ontological commitments concerning the existence of claimed kinds of useful objects and processes. This Article provides a comprehensive description of the previously unrecognized function of the patent document in incurring and securing warrants to these ontological commitments, and the respective roles of legal doctrines and practices in the patent system’s ontological project. Among other contributions, the resulting metaphysical account serves to reconcile competing interpretations of the written …

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 …

Standards And Related Intellectual Property Issues For Climate Change Technology, Jorge Contreras

Working Papers

Almost every product sold today must conform to standards, whether relating to its design, manufacture, operation, testing, safety, sale or disposal, and sometimes to many of these at once. At their root, standards are no more than written requirements or design features of a product, service or other activity. They can be breathtakingly detailed or disarmingly general, ranging from thousands of pages in length to just a few sentences. Standards are set by a wide range of bodies, from governmental agencies to industry consortia to multinational treaty organizations. Some standards are adopted into local, state or federal legislation and attain …

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

Akron Law Faculty Publications

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. …

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. …

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 …

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 …

Renewing Healthy Competition: Compulsory Licenses And Why Abuses Of The Trips Article 31 Standards Are Most Damaging To The United States Healthcare Industry, Jon Matthews

The Journal of Business, Entrepreneurship & the Law

No abstract provided.

Federal Patent Takings, Christopher S. Storm

The Journal of Business, Entrepreneurship & the Law

No abstract provided.

Best Practices For Drafting University Technology Assignment Agreements After Filmtec, Stanford V. Roche, And Patent Reform, Parker Miles Tresemer

Parker Tresemer

Since the end of World War II, federally funded universities and private companies have been an integral part of continued American innovation and technological production. However, like most rational economic actors, universities and private companies are only willing to invest in federally funded technologies if they are guaranteed some sort of exclusive return on their investment. By granting federal contractors exclusive patent rights to their employee’s federally funded inventions, the Bayh-Dole Act provided the necessary incentives for private sector investment in federally funded technologies. However, case law subsequent to Bayh-Dole’s enactment has significantly undermined the system of incentives Congress intended …

The "Evolving Written Description Doctrine" And The Search For Specificity (A.K.A. Adequacy Is The Matter Of Invention.), Gerald R. Prettyman Jr.

The Journal of Business, Entrepreneurship & the Law

In 1996, the U.S. Supreme Court ruled in Markman that claim construction was a matter of law for the judge to decide. There was hope in the patent bar that Markman would bring uniformity to claim construction and a reduction to the lengthy process of patent litigation. Some authors report instead that the claim construction reversal rate is increasing. Other authors question the consistency of the rulings from the Court of Appeals for the Federal Circuit. Circuit Judge Rader of the Federal Circuit recently named this controversy the “Evolving Written Description Doctrine.” Behind this controversy primarily lies judicial interpretation of …

To The Front Of The Line: Spurring Biotech Collaboration Through Patent Fast-Track Examination Vouchers, Scott E. Yackey

Saint Louis University Journal of Health Law & Policy

No abstract provided.

Standards, Patents, And The National Smart Grid, Jorge Contreras

Articles in Law Reviews & Other Academic Journals

The National Institute of Standards and Technology (NIST) is charged with overseeing the identification and selection of hundreds of standards that will be required to implement the national Smart Grid project. However, the benefits that could be realized from Smart Grid standardization could be threatened by a growing number of patents that cover Smart Grid architecture and technologies. If such patents are not revealed until technology is broadly distributed throughout the network (“locked-in”), significant disruption could occur when patent holders seek to collect unanticipated rents from large segments of the market. Moreover, even if patents are revealed early in the …

Patent Attorney Malpractice: Case-Within-A-Case-Within-A-Case, Samuel Oddi

Akron Law Faculty Publications

As literary devices, a “story-within-a story” and a “play-within-a-play” have a long lineage. Shakespeare seems to have been particularly fond of these devices. The legal analog may be seen as the “case-within-a-case” (“trial-within-a-trial,” “suit-within-a-suit”) arising in legal malpractice cases. The case-within-a-case terminology seems to be the most commonly used and hence will be used herein. While it is clear that the “case” is the malpractice case, it is not so clear what the “case-within-” is, which is usually referred to as the “underlying case.” Often, it seems to be presumed that the underlying case is limited to litigation, which would …

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 …

Top Tens In 2011: Patent, Trademark, Copyright And Trade Secret Cases, Stephen M. Mcjohn

Suffolk University Law School Faculty Works

This paper discusses notable intellectual property law cases in the United States in 2011. Patent cases addressed such issues as the scope of patent subject matter (the patentability of human genes and methods for testing for genetic links to cancer), the standards for challenges to the validity of patents (such as where technology that was not considered by the patent office is put in evidence), and the breadth of patent protection (especially with respect to the scope of protection for software patents). Other cases tested the borders of trademark protection – distinctiveness, functionality, and the interplay between trademark law and …

Usefulness Varies By Country: The Utility Requirement Of Patent Law In The United States, Europe And Canada, Jay Erstling, Amy M. Salmela, Justin N. Woo

Faculty Scholarship

The requirement that an invention have utility is one of the most fundamental of the patent laws. In the United States, for example, the concept of utility is rooted in the Constitution: Article 1, Section 8, gives Congress the power to grant exclusive rights to inventors in order “[t]o promote the progress of Science and useful Arts.” Other jurisdictions recognize utility in the form of inventions that have “industrial applicability” or are “capable of exploitation in industry,” with all of these terms and phrases generally viewed as being synonymous.

Historically, nearly every jurisdiction has excluded some type of invention from …