Intellectual Property Law Commons^™

Current And Potential Methods To Undermine A Competitor’S U.S. Patent Application, W. Keith Robinson, M. Haq

Faculty Journal Articles and Book Chapters

The current PTO procedures provide a few choices for a third party to influence the prosecution of a competitors patent application prior to issuance. In the case of protests and public use hearings, the third party may submit documents and explain their relevancy, but must know of the application’s existence prior to publication in order to meet the timeliness requirement. In the case of third-party submissions, the third party has a short two-month window post-publication, but cannot explain the relevancy of the documents submitted. In each case, the time frame within which a third party can act is extremely limited. …

Competition Within Intellectual Property Regimes: The Instance Of Patent Rights, Rudolph J.R. Peritz

Articles & Chapters

No abstract provided.

Three Statutory Regimes At Impasse: Reverse Payments In Pay-For-Delay Settlement Agreements Between Brand-Name And Generic Drug Companies, Rudolph J.R. Peritz

Articles & Chapters

No abstract provided.

Patent Settlements, Risk, And Competition, Mark R. Patterson

Faculty Scholarship

PowerPoint presentation delivered at the session, Patent Settlements: The Issues Beyond the "Reverse Payment" Cases at the ABA 59th Annual Antitrust Spring Meeting, March 30, 2011.

A Patent Misperception, Elizabeth I. Winston

Scholarly Articles

Antitrust and intellectual property laws promote innovation and competition. As long as the costs of promotion do not exceed the benefit to society, then the laws act in harmony. Discord arises when patent holders use public and private ordering to restrain competition, restrict downstream trade, prevent the development of competing products and limit output by competitors. Using the Patent Act and the misperception of antitrust immunity to create a parallel and under-regulated legal system allows a small number of patent holders to coordinate their behavior to maximize profits and minimize competition. The Patent Act provides no shield to prosecution for …

Standing To Sue In The Myriad Genetics Case, Megan M. La Belle

Scholarly Articles

In recent years, the topic of gene patents has generated significant debate among medical researchers, biotechnology companies, academics, policymakers, and patent lawyers. The controversy implicates a wide range of legal and policy questions, including whether human genes should be patentable, and whether such patents stimulate or stifle innovation. In Association for Molecular Pathology v. Myriad Genetics, a high-profile case recently before the United States Court of Appeals for the Federal Circuit, a divided panel of the court addressed these questions. Before reaching the merits of the case, however, the court had to decide whether the plaintiffs had standing to sue …

Rules For Growth: Promoting Innovation And Growth Through Legal Reform, Nicole Stelle Garnett, Robert E. Litan, Yochai Benkler, Henry N. Butler, John Henry Clippinger, Robert Cook-Deegan, Robert D. Cooter, Aaron S. Edlin, Ronald J. Gilson, Oliver R. Goodenough, Gillian K. Hadfield, Mark A. Lemley, Frank Partnoy, George L. Priest, Larry E. Ribstein, Charles F. Sabel, Peter H. Schuck, Hal S. Scott, Robert E. Scott, Alex Stein, Victoria Stodden, John E. Tyler Iii, Alan D. Viard, Benjamin Wittes

Journal Articles

The United States economy is struggling to recover from its worst economic downturn since the Great Depression. After several huge doses of conventional macroeconomic stimulus - deficit-spending and monetary stimulus - policymakers are understandably eager to find innovative no-cost ways of sustaining growth both in the short and long runs. In response to this challenge, the Kauffman Foundation convened a number of America’s leading legal scholars and social scientists during the summer of 2010 to present and discuss their ideas for changing legal rules and policies to promote innovation and accelerate U.S. economic growth. This meeting led to the publication …

Improving Antibiotic Markets For Long Term Sustainability, Aaron S. Kesselheim, Kevin Outterson

Faculty Scholarship

The world faces a worsening public health crisis: A growing number of bacteria are resistant to available antibiotics. Yet there are few new antibiotics in the development pipeline to take the place of these increasingly ineffective drugs. We review a number of proposals intended to bolster drug development, including such financial incentives for pharmaceutical manufacturers as extending the effective patent life for new antibiotics. However, such strategies directly conflict with the clear need to reduce unnecessary antibiotic prescriptions and could actually increase prescription use. As an alternative, we recommend a two-prong, “integrated” strategy based on prizes administered through the insurance …

Harvesting Intellectual Property: Inspired Beginnings And 'Work-Makes-Work,' Two Stages In The Creative Processes Of Artists And Innovators, Jessica Silbey

Faculty Scholarship

This Article is part of a larger empirical study based on face-to-face interviews with artists, scientists, engineers, their lawyers, agents, and business partners. The book-length project involves the collecting and analysis of stories from artists, scientists, and engineers about how and why they create and innovate. It also collects stories from their employers, business partners, managers, and lawyers about their role in facilitating the process of creating and innovating. The book’s aim is to make sense of the intersection between intellectual property law and creative and innovative activity, specifically to discern how intellectual property intervenes in the careers of the …

Dependent On The Jury: Anticipation And Obviousness Of Dependent Patent Claims And Irreconcilable Jury Verdicts, Patrick Bickley

Chicago-Kent Law Review

A jury verdict finding an independent claim valid but a related dependent claim either anticipated or obvious is irreconcilable. However, the Federal Circuit has used the inconsistencies between regional circuits on the issue of jury verdicts to reach different outcomes in similar cases based solely on the region in which the patent case originated. This note advocates a modification to the Federal Circuit's rule of deference to consider irreconcilable verdicts of independent and dependent claims under its own independent analysis. A consistent approach allowing for appellate review regardless of post-verdict motions is advocated, although a more modest position of requiring …

Written Description: Protecting The Quid Pro Quo Since 1793, Jacob Adam Schroeder

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Explaining The Demise Of The Doctrine Of Equivalents, David L. Schwartz

All Faculty Scholarship

This article provides a novel theoretical model and extensive empirical evidence to explain the decline of a historically important patent law doctrine known as the “doctrine of equivalents.” In recent years, distinguished academics have studied the doctrine of equivalents. While these scholars noted that the doctrine of equivalents had decreased in its successful use and provided some grounds for the decline, none clearly explained why. As such, the cause and precise mechanism behind the so-called “demise” of the doctrine of equivalents have largely remained a mystery.

This article explains that the demise occurred because of two complementary forces discussed for …

Supplemental Examinations To Consider, Reconsider, Or Correct Patent-Related Information: A Tangled Web Indeed, Lisa Dolak

College of Law - Faculty Scholarship

A pending legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to …

The Time And Place For "Technology-Shifting" Rights, Max Stul Oppenheimer

Marquette Intellectual Property Law Review

Intellectual property policy requires balance between the goal of motivating innovation and the need to prevent that motivation from stifling further innovation. The constitutional grant of congressional power to motivate innovation by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries is qualified by the requirement that congressional enactments under the Intellectual Property Clause promote progress. The Supreme Court has already recognized a time-shifting exception to the intellectual property rights of innovators and lower courts have recognized a place-shifting exception. It is now the time and place for a general technology-shifting exception …

Innovation And Recovery, John F. Duffy

Marquette Intellectual Property Law Review

Crisis inevitably brings hope for recovery. The recent past has seen a great economic crisis and a crisis in the patent system. Precisely because crisis reveals the flaws in the old, recovery demands the new; it demands innovation. Economic crisis thus makes recovery in the patent system especially urgent because it reveals the degree to which continuing prosperity depends on society's ability to reorganize itself, to change, to innovate. Towards that end, society should reconsider how our patent system makes judgments about invention. More specifically, Professor Duffy will seek to show through this lecture that the change most necessary for …

What About Know-How: Heightened Obviousness And Lowered Disclosure Is Not A Panacea To The American Patent System For Biotechnology Medication And Pharmaceutical Inventions In The Post-Ksr Era, Yi-Chen Su

Marquette Intellectual Property Law Review

In KSR International Co. v. Teleflex, Inc., the Supreme Court rejected the Federal Circuit's rigid application of the teaching, suggestion, or motivation test (TSM test), and replaced it with an expansive and flexible approach, in determining the question of obviousness. Nevertheless, an expansive and flexible approach to obviousness may not be consistent with the international norms of practice if it is applied literally. The U.S. Patent and Trademark Office's literal application of the decision has essentially created another set of inflexible rules, which is contrary to the Supreme Court's intent. The Federal Circuit's recent decision in In re Kubin cautiously …

Lessons Learned From Fifteen Years In The Trenches Of Patent Litigation , Rick Mcdermott

Marquette Intellectual Property Law Review

Marquette Law alum and partner with Alston+Bird, LLP, offers insights into patent litigation. In his speech, given March 5, 2010, McDermott examines how patent law developments such as Markman v. Westview Instruments, Cybor Corp. v. FAS Technologies, Inc., and In re Seagate have impacted the practice of patent infringement litigation.

Lawyers Acting Badly, Or Not? Misconduct In Ip Litigation: Recent Examples And The Questions They Raise, Lisa Dolak

College of Law - Faculty Scholarship

Misconduct in civil litigation is not a new phenomenon. Nor is it confined to particular types of cases. Because of their characteristic intensity. however, intellectual property cases may be more likely to inspire bad behavior than other types of cases. The associated pressures seem, on occasion, to lead litigants and trial lawyers to succumb to the temptation to step outside the bounds of vigorous advocacy.

Trial and appellate judges in a number of recent IP cases have wrestled with the issue of whether certain litigation tactics crossed the line between advocacy and abuse. For example, trial judges have recently rebuked …

Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Wendy J. Gordon, Orit Fischman Afori, Mark Janis, Susan Scafidi, Jonathan Moskin

Faculty Scholarship

Before beginning, let me mention that I will confine myself to a limited number of arenas. Thus, for example, I'm not going to discuss design patents, which will be the focus of another speaker's remarks. I will also not discuss the doctrine of aesthetic functionality. My primary goal will be to compare trademark's doctrine of utilitarian "functionality" with copyright's domain of "separability," and to show how for at least two circuit court opinions, the two doctrines may be converging. I hope to stimulate discussion of whether such convergence would be a good idea.

The Role Of The Non-Functionality Requirement In Design Law, Orit Fischman Afori

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The 2009 H1n1 Swine Flu Pandemic: Reconciling Goals Of Patents And Public Health Initiatives, Michelle Kaplan

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Bilski’S “Machine-Or-Transformation” Test: Uncertain Prognosis For Diagnostic Methods And Personalized Medicine Patents, Brian P. Murphy, Daniel P. Murphy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Panel Ii: The Global Contours Of Ip Protection For Trade Dress, Industrial Design, Applied Art, And Product Configuration, Orit Fischman Afori, Wendy J. Gordon, Mark Janis, Jonathan Moskin

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Panel I: The Patent Landscape With Bilski On The Map, Jeanne Fromer, James W. Dabney, Clarisa Long, Brian P. Murphy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Federal Circuit Patent Precedent: An Empirical Study Of Institutional Authority And Ip Ideology, David Pekarek-Krohn, Emerson H. Tiller

Faculty Working Papers

In this paper, we aim to better understand the institutional authority of the Federal Circuit as a source of law as well as the influence of pro-patent and anti-patent ideological forces at play between the Supreme Court, Federal Circuit, and the district courts. Our specific focus is on the district courts and how they cite Federal Circuit precedent relative to Supreme Court precedent to support their decisions, whether they be pro-patent or anti-patent. Using a variety of citation approaches and statistical tests, we find that federal district courts treat the Federal Circuit as more authoritative (compared to the Supreme Court) …

Fixing Our Broken Patent System, Jay Dratler

Marquette Intellectual Property Law Review

This short Article digests what the Author see as the most important substantive criticism and proposes specific solutions in the form of the "guts" of a new patent statute. Its statutory proposal tracks the current statute's organization and has numerous annotations explaining what is the same, what is changed and why, and what never-before-codified principles of judge-made law are explicitly codified. Among the proposed statute's fundamental changes are: (1) explicit restrictions on patentable subject matter to avoid patents on bare abstractions; (2) adoption of a first-to-file system requiring worldwide novelty; (3) abolition of the doctrine of constructive reduction to practice …

Generic Entry In A Rough Economy - Proposed Legislation May Ease Health Care Costs, Laura J. Grebe

Marquette Intellectual Property Law Review

When generic drugs seek FDA approval, the pharmaceutical company files an Abbreviated New Drug Application (ANDA), in which the generic company establishes bioequivalence to its usually patented counterpart. The ANDA filer must also certify that, to the best of the filer's knowledge, the generic will not infringe on a current patent-holder's rights. This can be done by showing (1) no patent on the product exists, (2) the patent is expired, (3) the patent will expire by the time the generic is marketed, or (4) the ANDA filer believes the patent is invalid - called a Paragraph IV certification. A Paragraph …

Trademark And Copyright In The Days Of Internet: The Google Influence, Michael H. Baniak, Matthew Sag

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

The Patenting Of Social Interactions:, Jonathan Masur, Matthew Sag, Joshua Sarnoff, Daniel Williams

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Who Defines The Law? Uspto Rulemaking Authority, Jonathan Masur, James B. Speta, Nicholas M. Zovko, Donald L. Zuhn, Jr

Northwestern Journal of Technology and Intellectual Property

No abstract provided.