Open Access. Powered by Scholars. Published by Universities.®
- Discipline
-
- Intellectual Property Law (111)
- Science and Technology Law (31)
- Supreme Court of the United States (12)
- Courts (11)
- Food and Drug Law (8)
-
- Life Sciences (7)
- Biotechnology (6)
- Internet Law (6)
- Agriculture (5)
- Computer Law (5)
- Health Law and Policy (5)
- Administrative Law (4)
- Business Organizations Law (4)
- Legislation (4)
- Commercial Law (3)
- Law and Economics (3)
- Law and Society (3)
- Legal History (3)
- Tax Law (3)
- Antitrust and Trade Regulation (2)
- Civil Procedure (2)
- International Law (2)
- Jurisprudence (2)
- Legal Profession (2)
- Litigation (2)
- Public Law and Legal Theory (2)
- Bankruptcy Law (1)
- Bioresource and Agricultural Engineering (1)
- Common Law (1)
- Institution
-
- University of Michigan Law School (36)
- Marquette University Law School (13)
- University of Oklahoma College of Law (10)
- American University Washington College of Law (9)
- Selected Works (6)
-
- SelectedWorks (5)
- Fordham Law School (4)
- Maurer School of Law: Indiana University (4)
- William & Mary Law School (4)
- DePaul University (3)
- University of Colorado Law School (3)
- University of Georgia School of Law (3)
- Vanderbilt University Law School (3)
- West Virginia University (3)
- Campbell University School of Law (2)
- Mitchell Hamline School of Law (2)
- Northwestern Pritzker School of Law (2)
- SJ Quinney College of Law, University of Utah (2)
- Southern Methodist University (2)
- The Catholic University of America, Columbus School of Law (2)
- University of Maryland Francis King Carey School of Law (2)
- University of Richmond (2)
- California Western School of Law (1)
- Case Western Reserve University School of Law (1)
- Chicago-Kent College of Law (1)
- Maurice A. Deane School of Law at Hofstra University (1)
- Penn State Law (1)
- University of Arkansas, Fayetteville (1)
- University of Miami Law School (1)
- University of Missouri-Kansas City School of Law (1)
- Publication Year
- Publication
-
- Articles (15)
- Marquette Intellectual Property Law Review (12)
- Michigan Telecommunications & Technology Law Review (10)
- Oklahoma Journal of Law and Technology (10)
- American University Law Review (8)
-
- Michigan Law Review First Impressions (5)
- Michigan Law Review (4)
- College of Law Faculty (3)
- Publications (3)
- Articles by Maurer Faculty (2)
- Book Chapters (2)
- Campbell Law Review (2)
- Cybaris® (2)
- Faculty Journal Articles and Book Chapters (2)
- Fordham Intellectual Property, Media and Entertainment Law Journal (2)
- Fordham Law Review (2)
- Indiana Law Journal (2)
- Journal of Health Care Law and Policy (2)
- Journal of Intellectual Property Law (2)
- Northwestern Journal of Technology and Intellectual Property (2)
- Peter Menell (2)
- Utah Law Faculty Scholarship (2)
- Vanderbilt Journal of Entertainment & Technology Law (2)
- William & Mary Law Review (2)
- American University International Law Review (1)
- Andrew Beckerman Rodau (1)
- Andrew Chin (1)
- Books (1)
- Catholic University Law Review (1)
- Chicago-Kent Law Review (1)
- Publication Type
Articles 31 - 60 of 130
Full-Text Articles in Law
The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin
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 …
Don’T Give Up Section 101, Don’T Ever Give Up, Brady P. Gleason
Don’T Give Up Section 101, Don’T Ever Give Up, Brady P. Gleason
Catholic University Law Review
In an era of tremendous and rapid technological advancement, coupled with the massive influence patents have on the global economy, determining the specific categories of inventions eligible for patent protection is of great importance. The statute governing patent eligible subject matter, 35 U.S.C. § 101, has unfortunately fallen steadily into a morass, wherein a great number of judicial philosophies as to the proper role and scope of § 101 occupy the statutes jurisprudence. This frustrates the utilitarian purpose of the patent system as research companies are uncertain whether certain categories of inventions will maintain their eligibly for patent protection. Because …
Beauty Fades: An Experimental Study Of Federal Court Design Patent Aesthetics, Dr. Andrew W. Torrance
Beauty Fades: An Experimental Study Of Federal Court Design Patent Aesthetics, Dr. Andrew W. Torrance
Journal of Intellectual Property Law
No abstract provided.
Confusing Patent Eligibility, David O. Taylor
Confusing Patent Eligibility, David O. Taylor
Faculty Journal Articles and Book Chapters
Patent law — and in particular the law governing patent eligibility — is in a state of crisis. This crisis is one of profound confusion. Confusion exists because the current approach to determining patent eligibility confuses the relevant policies underlying numerous discrete patent law doctrines, and because the current approach lacks administrability. Ironically, the result of all this confusion is seemingly clear: the result seems to be that, when challenged, patent applications and issued patents probably do not satisfy the requirement of eligibility. At least that is the perception. A resulting concern, therefore, is that the current environment substantially reduces …
Alice: The Status Quo Or Total Chaos?, Matthew Moldovanyi
Alice: The Status Quo Or Total Chaos?, Matthew Moldovanyi
Journal of Law, Technology, & the Internet
"On June 19, 2014 the Supreme Court handed down a highly important opinion discussing what is considered patentable subject matter in the United States. The case, Alice Corporation v. CLS Bank International, involved a group of patents for computer software that mitigated settlement risk in financial transactions. The Court held that these patents were not drawn to patent eligible subject matter under 35 U.S.C. § 101 (2012) because the claims were directed toward abstract ideas, which are unpatentable." "This ruling has drawn decidedly mixed reactions from commentators in the legal field. Moreover, this case leaves United States Patent and Trademark …
Stop In The Name Of The Pto! A Review Of The Fresenius Saga And Pto-Judicial Interplay, Wayne A. Kalkwarf
Stop In The Name Of The Pto! A Review Of The Fresenius Saga And Pto-Judicial Interplay, Wayne A. Kalkwarf
Journal of Intellectual Property Law
No abstract provided.
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
Method For Reforming The Patent System, A, Peter S. Menell
Peter Menell
No abstract provided.
Forcing Patent Claims, Tun-Jen Chiang
Forcing Patent Claims, Tun-Jen Chiang
Michigan Law Review
An enormous literature has criticized patent claims for being ambiguous. In this Article, I explain that this literature misunderstands the real problem: the fundamental concern is not that patent claims are ambiguous but that they are drafted by patentees with self-serving incentives to write claims in an overbroad manner. No one has asked why the patent system gives self-interested patentees the leading role in delineating the scope of their own patents. This Article makes two contributions to the literature. First, it explicitly frames the problem with patent claims as one of patentee self-interest rather than the intrinsic ambiguity of claim …
Patent Law Challenges For The Internet Of Things, W. Keith Robinson
Patent Law Challenges For The Internet Of Things, W. Keith Robinson
Faculty Journal Articles and Book Chapters
In the near future, emerging technologies will allow billions of everyday devices to be connected via the Internet. This increasingly popular phenomenon is referred to as the Internet of Things (“IoT”). The IoT is broadly defined as technology that allows everyday devices to (1) become “smart” and (2) communicate with other smart devices. Estimates indicate that the market for smart devices, such as wearables, will grow to $70 billion dollars in the next ten years. Like many other emerging technologies, the entrepreneurs and companies developing these applications will seek patent protection for their inventions. In turn, the current U.S. patent …
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
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 …
Structure From Nothing And Claims For Free: Using A Whole-System View Of The Patent System To Improve Notice And Predictability For Software Patents, Holly K. Victorson
Structure From Nothing And Claims For Free: Using A Whole-System View Of The Patent System To Improve Notice And Predictability For Software Patents, Holly K. Victorson
Michigan Telecommunications & Technology Law Review
No uniform or customary method of disclosure for software patents is currently employed by inventors. This Note examines the issues that develop from software patent claims disclosed at various levels of abstraction, and the difficulties encountered by courts and the public when investigating the contours of the software patent space. While the courts have placed some restrictions on the manner in which software inventions are claimed, they are easily bypassed by clever patent applicants who desire to claim the maximum scope of their inventions. In the long run, however, a large “patent thicket” of overlapping and potentially overbroad inventions will …
After Myriad: Reconsidering The Incentives For Innovation In The Biotech Industry, Daniel K. Yarbrough
After Myriad: Reconsidering The Incentives For Innovation In The Biotech Industry, Daniel K. Yarbrough
Michigan Telecommunications & Technology Law Review
35 U.S.C. § 101 allows a patent for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Recently, the Supreme Court issued several key decisions affecting the doctrine of patentable subject matter under § 101. Starting with Bilski v. Kappos (2011), and continuing with Mayo Collaborative Services, Inc. v. Prometheus Laboratories (2012), Association for Molecular Pathology v. Myriad Genetics (2013) and, most recently, Alice Corporation Pty. Ltd. v. CLS Bank International (2014), every year has brought another major change to the way in which the Court assesses patentability. In Myriad, the …
Step-Plus-Function Claims: An Analysis Of Federal Circuit Law, Kyle O. Logan
Step-Plus-Function Claims: An Analysis Of Federal Circuit Law, Kyle O. Logan
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Implied Obviousness: Reevaluating The Jury's Role In Nonobviousness After Kinetic Concepts, Michael A. Silliman
Implied Obviousness: Reevaluating The Jury's Role In Nonobviousness After Kinetic Concepts, Michael A. Silliman
Vanderbilt Journal of Entertainment & Technology Law
Nonobviousness is a central patentability requirement, requiring that a person with ordinary skill would not have found the patented subject matter obvious. Due to its flexibility, obviousness is the most commonly litigated requirement. It is thus crucial that the US judicial system determine obviousness uniformly, predictably, and accurately. However, because nonobviousness is a mixed question of law and fact, it is often unclear how much control the judge and jury have over the ultimate conclusion. In Kinetic Concepts v. Smith & Nephew, the United States Court of Appeals for the Federal Circuit increased the jury's role in the obviousness determination, …
Excluding Patentability Of Therapeutic Methods, Including Methods Using Pharmaceuticals, For The Treatment Of Humans Under Trade Related Aspects Of Intellectual Property Rights Article 27(3)(A), Michael H. Davis
Hofstra Law Review
The article discusses the legal aspects of excluding patentability of therapeutic methods for the treatment of humans under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), and it mentions patentmethods using pharmaceuticals, as well as the General Agreement on Tariffs and Trade (GATT) and the World Trade Organization (WTO). Patent law protections and treatments for viruses and diseases such as HIV and AIDS are examined. Public health laws are also assessed.
The Need To Reform In Pharmaceutical Protection: The Inapplicability Of The Patent System To The Pharmaceutical Industry And The Recommendation Of A Shift Towards Regulatory Exclusivities, Amanda Fachler
Fordham Intellectual Property, Media and Entertainment Law Journal
No abstract provided.
Addressing The Elephant: The Potential Effects Of The Patent Cases Pilot Program And Leahy-Smith America Invents Act, Randall R. Rader
Addressing The Elephant: The Potential Effects Of The Patent Cases Pilot Program And Leahy-Smith America Invents Act, Randall R. Rader
American University Law Review
No abstract provided.
Interpreting Biological Similarity: Ongoing Challenges For Diverse Decision Makers, Sarah M. Cork
Interpreting Biological Similarity: Ongoing Challenges For Diverse Decision Makers, Sarah M. Cork
Michigan Telecommunications & Technology Law Review
Similarity is an elusive and complicated concept facing comparisons of biological molecules, as even minute changes to a molecule's structure can dramatically affect its function in the body. Yet the flood of biologic drugs on the market will increasingly force these similarity comparisons. These concerns are particularly relevant to two groups of drugs: families of biologic drugs that closely resemble each other in structure and function, here termed "similar-impact biologics," and the biosimilars, which are intended to closely approximate generic forms of biologic drugs. In bringing biologic drugs to the market, manufacturers are likely to face dual obstacles: FDA approval …
What Should Be Patentable? A Proposal For Determining The Existence Of Statutory Subject Matter Under 35 U.S.C. Sec. 101, Andrew Beckerman Rodau
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 …
Prometheus Rebound: Diagnostics, Nature, And Mathematical Algorithms, Rebecca S. Eisenberg
Prometheus Rebound: Diagnostics, Nature, And Mathematical Algorithms, Rebecca S. Eisenberg
Articles
The Supreme Court’s decision last Term in Mayo v. Prometheus left considerable uncertainty as to the boundaries of patentable subject matter for molecular diagnostic inventions. First, the Court took an expansive approach to what counts as an unpatentable natural law by applying that term to the relationship set forth in the challenged patent between a patient’s levels of a drug metabolite and the indication of a need to adjust the patient’s drug dosage. And second, in evaluating whether the patent claims add enough to this unpatentable natural law to be patent eligible, the Court did not consult precedents concerning the …
Genes 101: Are Human Genes Patentable Subject Matter?, Andrew Bowman
Genes 101: Are Human Genes Patentable Subject Matter?, Andrew Bowman
Law Student Publications
This comment proposes a totality-of-the-circumstances approach to analyzing biological molecules under § 101 such that both the structure and its information is examined. Part II of this note reviews relevant precedent in patent law. Part III analyzes the Federal Circuit's Myriad decision, and Part IV explains the potential effects of the recent Supreme Court decision Mayo Collaborative Services v. Prometheus Laboratories. Finally, in Part V, the patent eligibility of human genes is examined. Analyzing this issue under the proposed totality-of-the-circumstances approach, this article concludes that isolated human genes are not patentable.
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 …
An Explicit Policy Lever For Patent Scope, Anna B. Laakmann
An Explicit Policy Lever For Patent Scope, Anna B. Laakmann
Michigan Telecommunications & Technology Law Review
Since its inception in 1982, the Federal Circuit has declined to take an overt role in setting patent policy. Dan Burk and Mark Lemley have observed that the court instead implicitly engineers patent policy through selective application of its patentability rules, which operate as "policy levers." Recent decisions on the patentability of diagnostic and therapeutic methods illustrate a significant problem with this approach. By maintaining a façade of adjudicative rule formalism while tacitly manipulating its rules to approximate policy goals, the court perpetuates empirical uncertainty about the patent law's practical effects. This Article proposes that the Federal Circuit use the …
Chinese Patents As Copyrights, Benjamin Piwei Liu
Chinese Patents As Copyrights, Benjamin Piwei Liu
Campbell Law Review
Although harmonization efforts such as the Agreement on Trade- Related Aspects of Intellectual Property Rights (TRIPS) and the Patent Corporation Treaty regime have brought national patent systems closer, differences among them remain a continuing challenge to innovators in an interconnected global marketplace. The recent development of the Chinese patent system is of particular interest because China is the factory of the world, the most populous market, the home of the patent office that handles the most patent application filings, and the number one source of imports that violate intellectual property rights (IPR). Its patent system affects every company whose supply …
What Do America's First Patents Have To Do With Today's?, Kristen Jakobsen Osenga
What Do America's First Patents Have To Do With Today's?, Kristen Jakobsen Osenga
Law Faculty Publications
In an invited response to an article by Prof. Michael Risch, Prof. Osenga reexamines some of the conclusions drawn by his study of early American Patents and what they suggested about inventors' perceptions of patentability.
The Technological Edge, Elizabeth I. Winston
The Technological Edge, Elizabeth I. Winston
Scholarly Articles
To grant a patent to natural phenomena hinders innovation, taking back from the public that which the public has a right to possess. To deny a patent to man’s manufacture undercuts the fundamental bargain of the patent system. All inventions, at their core, may be deemed natural, rendering it difficult to distinguish between man’s manufacture and natural phenomena. Determining whether the innovative aspect of the product is a technological one, rather than a natural one, can clarify whether the patent grant promotes the progress of science and the useful arts. The higher the level of skill in the art required …
The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin
The Elusive "Marketplace" In Post-Bilski Jurisprudence, Andrew Chin
Campbell Law Review
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 …
Wisdom Of The Ages Or Dead-Hand Control? Patentable Subject Matter For Diagnostic Methods After In Re Bilski, Rebecca S. Eisenberg
Wisdom Of The Ages Or Dead-Hand Control? Patentable Subject Matter For Diagnostic Methods After In Re Bilski, Rebecca S. Eisenberg
Articles
In 1980, the Supreme Court gave a reassuring signal to the then-nascent biotechnology industry about the availability of patent protection for the fruits of its research when it upheld the patentability of a genetically modified living organism in Diamond v. Chakrabarty. Twenty-five years later, the Court seemed poised to reexamine the limits of patentable subject matter for advances in the life sciences when it granted certiorari in Laboratory Corporation v. Metabolite. But the Federal Circuit had not addressed the patentable subject matter issue in Laboratory Corporation, and the Court ultimately dismissed the certiorari p etition as improvidently granted. Five years …
Patent Law's Audience, Mark D. Janis, Timothy R. Holbrook
Patent Law's Audience, Mark D. Janis, Timothy R. Holbrook
Articles by Maurer Faculty
Many rules of patent law rest on a false premise about their target audience. Rules of patentability purport to provide subtle incentives to innovators. However, innovators typically encounter these rules only indirectly, through intermediaries such as lawyers, venture capitalists, managers, and others. Rules of patent scope strive to provide notice of the boundaries of the patent right to anyone whose activities might approach those boundaries, including, in theory, any member of the general public. But the rules of patent scope are practically incomprehensible to the general public. In this Article, we argue that rules of patent law should be designed …