Intellectual Property Law Commons^™

Just For Show: Eliminating Judicial Exceptions To Section 101 Would Render Limits On Patent-Eligible Subject Matter Meaningless, Katie Crocker

Cybaris®

No abstract provided.

Born Too Late To Patent The Engine, Born Too Early To Patent The Lightsaber, Born Just In Time To Patent Space Inventions, Ryan Horejsi

Cybaris®

No abstract provided.

The Injunction Function: Is Ip Law Promoting Markets For Innovators And Creators?, Kristen Osenga

Law Faculty Publications

32 Federal Circuit Bar Journal 4 (2024) The Federalist Society hosted this panel on November 11, 2023, as part of their 2023 National Lawyers Convention in Washington, D.C. This panel focuses on the role injunctions play in the facilitation or constraining commercialization of patent technologies and copyright, the current state of the law, and its meaning for next-generation innovations like creative uses of artificial intelligence.

The Ungraceful Grace Period: Defining 35 U.S.C. § 102(B)'S Grace Period Exceptions Post-Helsinn, Adam Burstain

Cybaris®

No abstract provided.

Innovator Ecosystem Diversity As A Global Competitiveness Imperative, Margo A. Bagley

Marquette Intellectual Property & Innovation Law Review

None

The Effects Of Section 101'S Subject Matter Eligibility Requirement On Fintech Patent Valuation Models, Fhernam Batiz

Marquette Intellectual Property & Innovation Law Review

None

Precision Is Necessary In Patents, Twinkle Dutta

Marquette Intellectual Property & Innovation Law Review

No abstract provided.

Do Patents Drive Investment In Software?, James Hicks

Scholarship@WashULaw

In the wake of a quartet of Supreme Court decisions which disrupted decades of settled law, the doctrine of patentable subject matter is in turmoil. Scholars, commentators, and jurists continue to disagree sharply over which kinds of invention should be patentable. In this debate, no technology has been more controversial than software. Advocates of software patents contend that denying protection would stymie innovation in a vital industry; skeptics argue that patents are a poor fit for software, and that the social costs of patents outweigh any plausible benefits. At the core of this disagreement is a basic problem: the debate …

Anti-Patents, Roy Baharad, Stuart Minor Benjamin, Ehud Gutte

Faculty Scholarship

Conventional wisdom has long perceived the patent and tort systems as separate legal entities, each tasked with a starkly different mission. Patent law rewards novel ideas; tort law deters harmful conduct. Against this backdrop, this Essay uncovers the opposing effects of patent and tort law on innovation, introducing the "injurer-innovator problem." Patent law incentivizes injurers --often uniquely positioned to make technological breakthroughs--by allowing them to profit from licensing their inventions to competitors. Yet tort law, by imposing liability for failures to invest in care, forces injurers to incur the cost of implementing their own innovations. When the cost of self-implementation …

A Critical Librarianship Approach For Teaching Patent Searching: Who Becomes An Inventor In America?, Dave Zwicky, Ilana Stonebraker

Libraries Faculty and Staff Scholarship and Research

The ways in which a technology is invented, owned, and approved are strongly influenced by the same oppressive and exclusionary structures that critical librarianship interrogates. Patents, limited-term grants of rights to inventions, are issued to inventors in exchange for detailed specifications of the invention. This paper examines current practices used by business librarians in teaching students how to find patents and how these practices could be critically informed given the nature of the United States patent system as it exists today. An output of this work is a suggested lesson plan with recommended resources.

Measuring Follow-On Innovation, Janet Freilich, Sepehr Shahshahani

Faculty Scholarship

How patents affect follow-on innovation is a key question for the patent system. We disaggregate follow-on innovation into activities that infringe patents and others that do not infringe but can be indirectly affected by patents. Replicating an important study using our disaggregated measure, we find that 87 percent of follow-on scientific publications describing patented genes do not constitute patent infringement. Supplementing our empirical strategy with data on patent expiration dates, we find that gene patents which are not close to expiration cause an increase in noninfringing follow-on research, but the effect disappears for patents close to expiration. Our nuanced measure …

A Closer Look At The "Eye" Test: The British Influence On Early American Design Patent Infringement Law, Mark D. Janis

IP Theory

The Supreme Court has asserted that “[t]he Patent Clause in our Constitution ‘was written against the backdrop’ of the English system.” That notion has a long lineage. In 1818, the author of an anonymous “Note on the Patent Laws,” widely assumed to be Justice Story, claimed that “[t]he patent acts of the United States are, in a great degree, founded on the principles and usages which have grown out of the English statute on the same subject.”

But these generalizations significantly overstate—and oversimplify—the influence of British law on the nascent American jurisprudence of patents. Early American jurists felt no reluctance …

What's Not Natural Phenomena? Let's Consider A Three-Step Innovative Concept Test For Composition Of Matter Claims, Sydney Hancock

IP Theory

Biotechnology innovation is rapidly growing, especially in the realm of biotech. This growth leads to questions about patent subject matter eligibility of natural phenomena. For example, currently the human genome and microbiome are being extensively studied, bacteriophages are being edited, animals are being cloned, and CRISPR is widespread. Additionally, composition of matter patent claims give the most protection to patent holders. Therefore, knowing when a natural phenomenon veers into human innovation is important for courts, lawyers, and innovators in the era of biotechnology and genetic engineering.

Part I discusses the history of Supreme Court cases on natural phenomena subject matter …

“That Means Nothing To Me As A Normal Person Who Doesn't Know About Patents”: Usability Testing Of Google Patents And Patent Public Search With Undergraduate Engineering Students, Graham Sherriff, Molly Rogers

Journal of the Patent and Trademark Resource Center Association

Patent searching is an important research tool for undergraduate engineering students, yet it requires special topic knowledge to conduct successfully. Patent database websites have the ability to alleviate or add to the complexity of patent searching, depending on their usability. Prompted by the launch of the US Patent and Trademark Office’s Patent Public Search (PPS) website in early 2022, the authors investigated the usability of PPS and Google Patents. The study's objective was to gain insights into the ways in which the websites of commonly-used patent databases support undergraduate students’ patent searching activities. The study examined students’ performance of typical …

A Case Study Of The Complicated History Of Rice University’S First Patents, Hannah G. Edlund

Journal of the Patent and Trademark Resource Center Association

Digitization and online public databases have made patent searches a much simpler pursuit in recent years. However, uncovering a pre-digital era patent’s history and context remains challenging. A search for the first patents assigned to Rice University highlighted associated issues. Older patent formats often do not clearly indicate inventor-assignee relationships, and applications and official communications are not available online. To determine how Rice came to own three 1948 patents, extensive archival research was required. Were these patents assigned to the University by inventors, independent of its support or funding, or was their work performed at and for Rice, thus obliging …

Cryptic Patent Reform Through The Inflation Reduction Act, Arti K. Rai, Rachel Sachs, Nicholson Price

Law & Economics Working Papers

If a statute substantially changes the way patents work in an industry where patents are central, but says almost nothing about patents, is it patent reform? We argue the answer is yes — and it’s not a hypothetical question. The Inflation Reduction Act (IRA) does not address patents, but its drug pricing provisions are likely to prompt major changes in how patents work in the pharmaceutical industry. For many years scholars have decried industry’s ever-evolving strategies that use combinations of patents to block competition for as long as possible, widely known as “evergreening,” but legislators have not been receptive to …

Pooling Patents For Pandemic Progress: Mrna Vaccines And The Broader Context Of Modernatx Inc V. Pfizer Inc., Francis Brefo

DePaul Journal of Art, Technology & Intellectual Property Law

No abstract provided.

Patents' New Salience, Janet Freilich

Faculty Scholarship

The vast majority of patents do not matter. They are almost never enforced or licensed and, in consequence, are almost always ignored. This is a well-accepted feature of the patent system and has a tremendous impact on patent policy. In particular, while there are many aspects of patent law that are potentially troubling-including grants of unmerited patents, high transaction costs in obtaining necessary patent licenses, and patents' potential to block innovation and hinder economic growth-these problems may be insignificant in practice because patents are under-enforced and routinely infringed without consequence.

This Article argues that technological developments are greatly increasing the …

Of Inventorship And Patent Ownership: Examining The Intersection Between Artificial Intelligence And Patent Law, Cheng Lim Saw, Zheng Wen Samuel Chan

Research Collection Yong Pung How School Of Law

Artificial intelligence (“AI”) has garnered much attention in recent years, with capabilities spanning the operation of self-driving cars to the emulation of the great artistic masters of old. The field has now been ostensibly enlarged in light of the professed abilities of AI machines to autonomously generate patentable inventions. This article examines the present state of AI technology and the suitability of existing patent law frameworks in accommodating it. Looking ahead, the authors also offer two recommendations in a bid to anticipate and resolve the challenges that future developments in AI technology might pose to patent law. In particular, the …

The Federal Circuit And The Patent Trial And Appeal Board, David O. Taylor

Faculty Journal Articles and Book Chapters

The U.S. Court of Appeals for the Federal Circuit holds a unique and powerful position in the patent system. It exercises exclusive jurisdiction over appeals in patent cases, which, short of Supreme Court intervention, empowers the court to set national patent law. But since passage of the America Invents Act, at least with respect to resolving often multimillion dollar disputes over patent validity, there is another, more powerful government institution: the Patent Trial and Appeal Board. Given its significant new power over disputes regarding patent validity, the Patent Trial and Appeal Board has been the subject of numerous disputes resolved …

The Case Of The Missing Device Patents, Or: Why Device Patents Matter, Erika Lietzan, Kristina M. L. Acri, Evan Weidner

Faculty Publications

A company that earns premarket approval of its medical device is entitled to an extension of one patent claiming the device, to make up for some of the time it spent doing premarket research. Yet, surprisingly, a mere thirteen percent of those eligible for this extension (also known as patent term "restoration") ask for one. In contrast, most drug companies entitled to this same patent extension ask for one.

In this Article, we attribute the imbalance largely to differences between the two regulatory frameworks. In brief, because the FDA classifies and regulates devices based on what they do and how …

Unilaterally Altering The Bargain: Trips, Section 107a, And The Regulatory Review Exception Under Indian Patent Law, Eashan Ghosh, Afzal B. Khan

Indian Journal of International Economic Law

In 2003, Section 107A of the Patents Act wrote a regulatory review exception into Indian law. Its beholden purpose is to enable patent-protected pharmaceutical products to be brought to Indian markets quicker and in large numbers. Emboldened by a WTO decision brake-testing a similar Canadian statute, Indian pharmaceutical manufacturers have consistently claimed Section 107A benefits from domestic courts. Lately, the economic trail of these benefits has grown to implicate entities abroad. Pushback to this trend from patentees has duly arrived. It has culminated in a stack of Delhi High Court decisions in Bayer v. Union of India. Bayer writes three …

The Hidden Cost Of University Patents, Christopher J. Ryan Jr., W. Michael Schuster, Brian L. Frye

Articles by Maurer Faculty

Universities are encouraged to undertake research through grants from government agencies, foundations, and other organizations. The Bayh-Dole Act reinforces this incentive structure by allowing universities to take ownership of the resultant patents. The rights of ownership include the ability to generate income by licensing patents and bringing patent infringement lawsuits. Undoubtedly, exercising these rights to financially benefit the university is economically rational. But might such actions also impose a cost on the public despite the fact that these very patents arose from public research subsidies?

This study examines the relationship between a university’s research expenditures and its likelihood to litigate …

Psychedelic Drugs & The Prior Art Problem, Anneli E. Kawaoka

Indiana Law Journal

For the first time since the War on Drugs began in the 1970s, researchers have returned to the promise of psychedelic drugs for treating the growing mental health crisis in the United States. As research into psychedelic drugs as a conventional treatment method for mental health conditions grows, so does the number of filings at the U.S. Patent & Trademark Office for psychedelic-related patents. But the decades-long lapse in the development of psychedelic drugs creates the risk that low-quality psychedelic patents will issue, giving limited monopolies to companies that have not truly innovated in the psychedelic space. In this Note, …

100 Years Of International Ip - Reflections On Past, Present And Future, Frederick M. Abbott

Scholarly Publications

We have been asked to reflect on the past 100 years of international intellectual property law and to try to project forward about what changes might be necessary or desirable in the future. Only a science fiction writer would purport to have some idea about what things might look like a hundred years in the future, including from the standpoint of international intellectual property, so my remarks on that will be somewhat more proximate to the present.

Nonobviousness And Unmotivated, Yet Minor, Inventions, Christopher A. Cotropia

Law Faculty Publications

This brief essay on nonobviousness originates from a series of conversations, emails, and preliminary drafts between Dmitry Karshtedt and myself that, sadly, never got a chance to fully evolve. We were exploring what the law says, and perhaps should say, about inventions that are technologically small advances, yet unmotivated by prior art. As Dmitry so aptly framed it, “The question we’re dealing with is, what if everyone thought that something was really hard or unworkable, but turned out to be a straightforward, minor improvement? Obvious or no?” This essay puts to paper our exploration of this question. The law’s emphasis …

Return To A One-Year Robust Grace Period In United States Patent Law, Mark Kallevig

Cybaris®

No abstract provided.

Legislative Report: Patents For Humanity Act Of 2022, Stephen Kohn

Cybaris®

No abstract provided.

Much Dispute About Nothing? A Critical Examination Of The Backlash Against Investment Treaty Arbitration In International Intellectual Property Disputes, Andy Taylor

Cybaris®

No abstract provided.

Smart Patents, Stephanie Plamondon

Faculty Scholarship

Intellectual property (IP) rights differ from traditional property rights in a crucial respect: the ascertainability of their boundaries. While it is usually a simple task to figure out where a traditional property right (e.g., an ownership right in a piece of land) begins and ends, delineating the metes and bounds of an IP right (e.g., a right to exclude others from practicing an invention as described in a patent claim) can be much more difficult to do.

The indeterminate scope of patent rights in particular leads to many layers of inefficiency. Downstream inventors may find it necessary to engage in …