Law Commons^™

Operating Efficiently Post-Bilski By Ordering Patent Doctrine Decision-Making, Dennis Crouch, Robert P. Merges

Robert P Merges

The article focuses on a U.S. Supreme Court case Bilski versus Kappos and explains its holding and approach on the patent claims. The authors discuss the provisions in the patent law and argue that its sequence of patentability requirements are misleading. They state that the Patent Office can reject claims suggesting that claims should at least suffer from defects that transcend specific requirements.

The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin

Andrew Chin

The Supreme Court’s 2010 decision in Bilski v. Kappos appears to have provided inadequate guidance to the courts and the Patent Office regarding the scope of the abstract-ideas exclusion from patentable subject matter. Federal Circuit Chief Judge Randall R. Rader, however, appears to have found in that decision a clear vindication of his own view that the machine-or-transformation test is incorrectly grounded in “the age of iron and steel at a time of subatomic particles and terabytes,” and thus fails, for example, to accommodate advances in “software [that] transform[] our lives without physical anchors.” Chief Judge Rader has subsequently authored …

Forty Years Of Wondering In The Wilderness And No Closer To The Promised Land: Bilski's Superficial Textualism And The Missed Opportunity To Return Patent Law To Its Technology Mooring, Peter S. Menell

Peter Menell

No abstract provided.

Method For Reforming The Patent System, A, Peter S. Menell

Peter Menell

No abstract provided.

One Hundred Nos: An Empirical Analysis Of The First 100 Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews, Jonathan R. K. Stroud, Jarrad Wood

Jonathan R. K. Stroud

Tasked in 2011 with creating three powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeals Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. Parties on …

What Should Be Patentable? A Proposal For Determining The Existence Of Statutory Subject Matter Under 35 U.S.C. Sec. 101, Andrew Beckerman Rodau

Andrew Beckerman Rodau

The question of what type of inventions should be protectable under patent law is a controversial issue that has received significant attention. Recent Supreme Court decisions reject a bright line test in favor of a more-opened ended approach to determining patent eligibility. Unfortunately, this provides limited guidance to lower courts and consequently the issue remains unsettled. Most inventions fit within the statutory requirements defining patent-eligible inventions. This article will examine the scope of patent-eligible subject matter defined by patent law section 101. It will look at judicial interpretation of the statute including exceptions judicially engrafted onto the statute by the …

A Comparative Study On Human Embryonic Stem Cell's Patent-Eligibility In The United States, The European Patent Organization And China, Huan Zhu

Huan Zhu

Since human embryonic stem cells (hESCs) have entered the public’s view, a large number of ethical debates and moral concerns have been generated. However, these concerns have not stifled advances in biotechnology regarding hESCs. Thanks to its scientific potential and therapeutic values, scientists from all over the world contribute both funding and time to investigate hESCs and additionally seek protection for their research inventions and methods. The patent system is a known mechanism to provide this protection and promote science by granting the patentee exclusive rights to the inventions while requiring public disclosure. However, due to the intrinsic relation of …

Overcoming The "Impossible Issue" Of Nonobviousness In Design Patents, Janice M. Mueller, Daniel Harris Brean

Janice M Mueller

The United States offers legal protection for designs—the overall aesthetic appearances of objects—through the patent system. To obtain a U.S. design patent has long required something more than novelty. Just as the patentability of a utilitarian device mandates a “nonobvious” advance over earlier technology, the patentability of a new and ornamental design requires that it differ from prior designs to an extent that would not have been “obvious to a designer of ordinary skill who designs articles of the type involved.” Ostensibly promoting progress in design, Congress in 1842 shoehorned design protection into the existing utility patent system. From that …

Common Sense: Treating Statutory Non-Obviousness As A Novelty Issue, N. Scott Pierce

N. Scott Pierce

Title 35 of United States Code, at Section 103, limits patent protection to subject matter that would not be “obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The requirement was introduced as a statute by the Patent Act of 1952, but, according to the legislative history, was a codification of judicial precedent. The origin of that precedent is widely attributed to the 1851 Supreme Court decision of Hotchkiss v. Greenwood, 52 U.S. 248 (1851). However, declaration of Hotchkiss as a watershed moment in legal history …

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 …

Keeping Time Machines And Teleporters In The Public Domain: Fiction As Prior Art For Patent Examination, Daniel Harris Brean

Daniel Harris Brean