282 results on '"PATENT law"'
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2. Leaving the lab bench and joining the bar: Making the case for a career in patent law
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Adil Moghal
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Male ,Jurisprudence ,Career Choice ,ComputingMilieux_THECOMPUTINGPROFESSION ,Patent law ,ComputingMilieux_LEGALASPECTSOFCOMPUTING ,Patient Advocacy ,Cell Biology ,Biology ,Research Personnel ,ComputingMilieux_GENERAL ,Career Mobility ,Attitude ,Job Description ,Law ,Job Application ,ComputingMilieux_COMPUTERSANDEDUCATION ,Humans ,ComputingMethodologies_GENERAL ,Molecular Biology ,Phd students ,Career choice ,Developmental Biology - Abstract
Most PhD students have no idea what patent law is, if it is a career they might want to pursue, and how to get into the profession. Here, a recent law school graduate with a PhD in the life sciences explains everything from how to get into law school to what patent law actually is. Most importantly, he explains why he believes it is a more attractive career choice after your PhD than academia or industry.
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- 2020
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3. Patent Law: An Open-Source Casebook (Chapter 2)
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Ted M. Sichelman, Jeffrey A. Lefstin, and Mark D. Janis
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Open source ,CLs upper limits ,Political science ,Law ,Patent law ,media_common.quotation_subject ,Doctrine ,Casebook ,Subject matter ,Supreme court ,media_common - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers subject matter eligibility, particularly for living subject matter, processes and software, and doctrine following the Supreme Court’s decision in Alice Corp. v. CLS Bank.
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- 2021
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4. Patent Law: An Open-Source Casebook (Chapter 4)
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John R. Allison, Mark D. Janis, and Ted M. Sichelman
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Mode (computer interface) ,Open source ,Political science ,Patent law ,Casebook ,Law and economics - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers disclosure doctrines, including enablement, written description, and (briefly) best mode.
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- 2021
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5. Patent Law: An Open-Source Casebook (Chapter 5)
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Mark D. Janis and Ted M. Sichelman
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Open source ,Public use ,Anticipation (artificial intelligence) ,Computer science ,Patent law ,Novelty ,Casebook ,Reference standards ,Law and economics ,Test (assessment) - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers anticipation and the application of 35 U.S.C. § 102 both pre- and post-AIA. The chapter introduces the concept of anticipation (including the single-source test, inherency, and the enabling reference standard), the loss-of-right doctrines (including those based on documentary prior art, public use, and the on-sale bar), prior art based on prior-filed patent applications, and other forms of patent-defeating prior art (including the concept of derivation and the pre-AIA novelty provisions).
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- 2021
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6. Patent Law: An Open-Source Casebook (Chapter 3)
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Ted M. Sichelman, David O. Taylor, and Mark D. Janis
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Open source ,Patent law ,Political science ,Casebook ,Law and economics - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers the utility requirement.
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- 2021
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7. Patent Law: An Open-Source Casebook (Chapter 7: Infringement)
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Jason Rantanen, Mark D. Janis, and Ted M. Sichelman
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Statute ,Doctrine of equivalents ,History ,Open source ,Polymers and Plastics ,Political science ,Common law ,Patent law ,Law ,Literal (computer programming) ,Business and International Management ,Casebook ,Industrial and Manufacturing Engineering - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. (i>Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers infringement. It addresses the element-by-element comparisons required in establishing literal infringement and infringement under the doctrine of equivalents, and also covers means-plus-function claim limitations. The chapter also explores how the statute and case law define acts of infringement. In particular, the chapter discusses the geographic locus of infringing acts, the problem of divided infringement, indirect infringement, and transnational infringement.
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- 2021
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8. Artificial Intelligence: Back to the Future of Patent Law
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Matthieu Dhenne
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Computer science ,business.industry ,Patent law ,Subject (philosophy) ,Patentability ,Artificial intelligence ,business ,Object (philosophy) - Abstract
Artificial intelligence questions patent law: is it a subject or an object of patent law? This surprising question has however been at the heart of debates in recent months, since the famous DABUS affair. It is now necessary to analyze the difficulties effectively raised by the reception of AI by patent law.
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- 2021
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9. Patent Law: An Open-Source Casebook (Chapter 1)
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Ted M. Sichelman and Mark D. Janis
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Open source ,Definiteness ,Patent law ,Political science ,Patent claim ,Casebook ,Patent document ,Law and economics - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers the patent document, including patent claims, focusing on the substantive rules of claim construction and definiteness.
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- 2021
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10. Recent Developments in Patent Law 2021
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Tyler Robbins and Mark A. Lemley
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Political science ,Patent law ,Law and economics - Published
- 2021
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11. Patent Law: An Open-Source Casebook (Chapter 6)
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Mark D. Janis, Christopher Anthony Cotropia, and Ted M. Sichelman
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Open source ,Political science ,Patent law ,media_common.quotation_subject ,Law ,Doctrine ,Casebook ,media_common - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers obviousness, including the history of the doctrine in the United States, the Graham framework and secondary factors, and the modern obviousness analysis under KSR and subsequent cases.
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- 2021
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12. Limits of Using Artificial Intelligence and GPT-3 in Patent Prosecution
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Amy Cyphert and S. Sean Tu
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Balance (metaphysics) ,History ,Exclusive right ,Polymers and Plastics ,business.industry ,Patent law ,Patent prosecution ,Artificial intelligence ,Business and International Management ,business ,Patent system ,Industrial and Manufacturing Engineering - Abstract
The underlying basis for patent law is a quid pro quo: the inventor discloses how to make and use the invention and in exchange for that disclosure, the public gives the inventor an exclusive right to practice that invention, for a limited time. Pervasive use of Artificial Intelligence (AI) technologies such as Generative Pre-trained Transformer 3 (GPT-3) and other similar AI tools may shift the balance of power envisioned in the patent system away from the public and towards the inventor. Specifically, GPT-3 and other AI products may allow inventors to claim significantly more in their patent than they originally invented, thus inequitably enlarging their exclusive rights without benefiting the public. Patent law has built in tools such as the enablement, utility and definiteness requirements to help limit the possible unjustified expansion of patent rights caused by pervasive use of AI. Additionally, if AI wholly disrupts the quid pro quo established by Congress, then patent law may have to adjust by moving from a peripheral claiming approach back to central claiming approach.
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- 2021
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13. Patent Law: An Open-Source Casebook (Introduction)
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Mark D. Janis and Ted M. Sichelman
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History ,Open source ,Polymers and Plastics ,Political science ,Patent law ,Business and International Management ,Patent system ,Casebook ,Patent document ,Industrial and Manufacturing Engineering ,Law and economics - Abstract
Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook begins with an overview of the patent right, then covers historical and economic perspectives, concluding with an overview of the modern patent system and document.
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- 2021
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14. Comment of Patent Law Scholars In the Matter of Request for Comments on Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office
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Joshua D. Sarnoff
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History ,Trademark ,Polymers and Plastics ,Process (engineering) ,Computer science ,business.industry ,Patent law ,Internet privacy ,Request for Comments ,Business and International Management ,business ,Industrial and Manufacturing Engineering ,Diversity (business) - Abstract
While the USPTO’s proposed updates are a necessary first step, more can and should be done now. To further the Office’s goal of promoting fairness in the application process and to help address the patent bar’s diversity gap, we propose several additional updates the USPTO should implement during this process. These added changes are themselves fairly straightforward and easy to implement, and there is no reason for the USPTO to delay.
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- 2021
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15. Innovation and intellectual property rights law—an overview of the Indian law
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Justice S. Ravindra Bhat
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Economics and Econometrics ,050208 finance ,Constitution of India ,Parliament ,media_common.quotation_subject ,Patent law ,05 social sciences ,Moral rights ,Judicial opinion ,ComputingMilieux_LEGALASPECTSOFCOMPUTING ,lcsh:Business ,Intellectual property ,General Business, Management and Accounting ,Right to property ,Political science ,Law ,0502 economics and business ,TRIPS architecture ,lcsh:HF5001-6182 ,050203 business & management ,media_common - Abstract
The present article provides an overview of the various laws dealing with innovation and intellectual property rights in India. In India, the many facets of intellectual property rights are dealt with in particular legislations enacted by the Parliament. These legislations operate within the overarching guarantee of the right to property provided by the Indian Constitution. While providing brief insights into the law of patents, copyrights, trademarks, designs, and remedies for violation of these rights, the article also covers questions relating to the inter-section of these rights in practice. Where appropriate, the article also refers to seminal judicial decisions on these areas of law. Keywords: Innovation and intellectual property rights law, Indian law, IPR, TRIPS, Patent law, Copyright law, Moral rights, Trademarks
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- 2018
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16. Inventorship in the Age of Artificial Intelligence
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Alfred Frueh
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Computer science ,business.industry ,Antenna design ,Industrial production ,Patent law ,media_common.quotation_subject ,Automation ,Transparency (behavior) ,Term (time) ,Robot ,Artificial intelligence ,business ,Autonomy ,media_common - Abstract
Artificial Intelligence is shaking up patent law. One of the most important questions in this regard is whether current patent laws adequately deal with increasing machine autonomy when it comes to inventorship. This paper uses two examples, namely Robot Scientists in drug development and antenna design in electrical engineering, to gauge the current level of machine automation in industrial production. A legal assessment carried out on this basis shows that the current use of the term inventorship is not future-proof and calls for policy adjustments: Patent law’s procedural provisions need to be amended and must overcome the requirement that only a human being can be an inventor. Moreover, droit moral considerations should be eliminated from substantive patent law altogether. Both measures would restore transparency in the patent register, reflecting the actual inventive activity.
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- 2020
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17. Digitalised Invention, Decentralised Patent System: The Impact of Blockchain and Artificial Intelligence on the Patent Prosecution
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Feroz Ali
- Subjects
Patent office ,business.industry ,Emerging technologies ,Process (engineering) ,Patent law ,Representation (systemics) ,Patent prosecution ,Artificial intelligence ,business ,Patent system - Abstract
Throughout the history of patent law, the manner of representation of invention influenced the process of the patent office in prosecuting them. This chapter traces how changes in the representation of the invention — from material to textual to digital — transformed patent prosecution. Early inventions were represented by working models, the materialised invention that needed little or no examination by the patent office, as they were the inventions themselves. Substantive examination became necessary when the representation of the invention shifted from material to textual, the point in history where the invention became textualised and represented by the patent specification, the written document that encompassed the invention. The textualised invention apart from effecting critical changes in patent prosecution, centralised the operations of the patent office. With the adoption of new technologies like blockchain and Artificial Intelligence, the manner of representation of invention will undergo yet another change resulting in the further evolution of patent prosecution. Like digital photography which changed the representation of images by radically changing the backend process, the digitalised invention will change the backend process of the patent office, i.e. patent prosecution. The most significant systemic consequence of the digitalisation of the invention will be the decentralisation of patent system.
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- 2020
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18. Brief of Amicus Curiae Electronic Frontier Foundation In Support of Petitioner in Google v. Oracle, U.S. Supreme Court No. 18-956
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Michael Barclay and Corynne McSherry
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Frontier ,Law ,Patent law ,Political science ,Petitioner ,Foundation (evidence) ,ComputingMilieux_LEGALASPECTSOFCOMPUTING ,Oracle ,Public interest ,Supreme court - Abstract
Amicus brief of Electronic Frontier Foundation in support of Google in Google v. Oracle, U.S. Supreme Court No. 18-956. The brief explains how 17 U.S.C § 102(b) has important exclusions from copyright in addition to the idea/expression dichotomy, including those derived from patent law. The brief provides several non-exclusive factors to determine copyrightability of functional aspects of computer programs, including which parts of computer programs are excluded from copyright under § 102(b), and which parts are protectable. The brief concludes with a discussion of the purpose of copyright, which is to serve the public interest.
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- 2020
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19. The Role of Antitrust in Preventing Patent Holdup
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Carl Shapiro and Mark A. Lemley
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Politics ,General theory ,Patent law ,Limiting ,Commission ,Business ,Economic Justice ,Law and economics - Abstract
Patent holdup has proven one of the most controversial topics in innovation policy, in part because companies with a vested interest in denying its existence have spent tens of millions of dollars trying to debunk it. Notwithstanding a barrage of political and academic attacks, both the general theory of holdup and its practical application in patent law remain valid and pose significant concerns for patent policy. Patent and antitrust law have made significant strides in the past fifteen years in limiting the problem of patent holdup. But those advances are currently under threat from the Antitrust Division of the Department of Justice, which has reversed prior policies and broken with the Federal Trade Commission to downplay the significance of patent holdup while undermining private efforts to prevent it. Ironically, the effect of the Antitrust Division’s actions is to create a greater role for antitrust law in stopping patent holdup. We offer some suggestions for moving in the right direction.
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- 2020
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20. Legal Issues Regarding Protection of Genetic Information
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Viktor Shestak and Alyona Tsyplakova
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Identification (information) ,business.industry ,Patent law ,Internet privacy ,Confidentiality ,Legislation ,Business ,International law ,Genetic privacy - Abstract
This paper examines both international and national legislation, regulating specific issues about genetic information. Particularly the Anglo-American system, especially the USA, according to the authors’ opinion, is leading in this category.
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- 2020
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21. 'The Invention, The Patent, and The Claim' in Patent Law: An Open-Access Casebook
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Sarah R. Wasserman Rajec, Andres Sawicki, and Sarah Burstein
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Class (computer programming) ,Political science ,Patent law ,Casebook ,Patent document ,Law and economics - Abstract
This is a draft chapter, "The Invention, The Patent, and The Claim," from the forthcoming book, Patent Law: An Open-Access Casebook. In this chapter, we introduce students to different ways in which the contribution that an inventor has made to the art relates to the claims that grant her some legal rights, as mediated by the patent document. We begin with The Incandescent Lamp Patent Case, which we use to illustrate the nature of the inventive process. We then show how the role of the claim has changed over time, from Winans v. Denmead to Merrill v. Yeomans to Liebel-Flarsheim v. Medrad. That history demonstrates the range of possible roles that claims might play, and serves as a basis for class discussions arising from the still unsettled relationship between the invention, the patent, and the claim.
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- 2020
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22. Clean and Sustainable Technology Innovation
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Tabrez Y. Ebrahim
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010504 meteorology & atmospheric sciences ,business.industry ,Patent law ,General Social Sciences ,010501 environmental sciences ,Clean technology ,01 natural sciences ,Incentive ,Environmental innovation ,Sustainable design ,Narrative review ,business ,Commons ,Industrial organization ,0105 earth and related environmental sciences ,General Environmental Science ,Efficient energy use - Abstract
Has patent law provided adequate incentives for environmental innovation? This Article provides a narrative review that describes (1) clean and sustainable technological inventions and (2) various environmental innovation approaches involving patents in some form and incentivizing technological development and diffusion. Clean, sustainable, or green inventions that lower pollution, use resources in a more sustainable manner, recycle more of their wastes and products, or provide significant energy efficiency have garnered an incredible amount of attention. Scholars and other commentators have analysed the role of patents in facilitating technological development to mitigate climate change, including eco-patent commons, a fast track program, a patent rewards system, and a collaborative and cooperative platform. An analysis of the literature shows that patent law offers certain, though perhaps underutilized, opportunities to promote technological innovation that has environmental benefits.
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- 2020
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23. The U.S. Government's Apparent Co-Ownership of Patents Protecting Remdesivir
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Christopher Morten and James Krellenstein
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Food and drug administration ,Emergency Use Authorization ,Government ,Profit (real property) ,Drug candidate ,Patent law ,Control (management) ,Business ,Public administration ,Investment (macroeconomics) - Abstract
Some preliminary evidence suggests the antiviral drug remdesivir can accelerate recovery from COVID-19, although (as of writing) there is no clear evidence it can actually save the lives of people with COVID-19. Given its promise, remdesivir has been given emergency use authorization by the Food and Drug Administration and is currently being used in hospitals around the world. Remdesivir is manufactured by Gilead Sciences, Inc. (“Gilead”) and is widely perceived as being “owned” by Gilead. However, our analysis indicates that the U.S. government likely has a legal right to claim co-ownership of remdesivir—or at least co-ownership of the core U.S. patents that cover the chemical structure of remdesivir—as well as methods of using the remdesivir to treat various diseases. This is because U.S. government scientists working with United States Army Medical Research Institute of Infectious Diseases (USAMRIID) and the Centers for Disease Control and Prevention (CDC) appear to have contributed in various ways to the “invention” of remdesivir—perhaps to the selection of the compound as a drug candidate, and more clearly to the discovery of remdesivir’s antiviral properties. Based on their intellectual contributions, these government scientists should probably be named as co-inventors on these patents. If these U.S. government scientists are indeed inventors of the patents on remdesivir, then, under U.S. patent law, the patents are presumed co-owned by the U.S. government. If remdesivir proves safe and effective in treating COVID-19, as the world hopes it will, the U.S. government could exercise its patent rights to lower prices and expand access to remdesivir, if need be. This report poses a critical question—if the U.S. government co-invented remdesivir, with substantial investment by the American public in its development, why should Gilead alone profit and control who can manufacture it?
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- 2020
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24. An Empirical Study of Patent Grant Rates as a Function of Race and Gender
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Julie Ravenscraft, W. Michael Schuster, Evan Davis, and Kourtenay Schley
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History ,Patent office ,Polymers and Plastics ,media_common.quotation_subject ,Patent law ,Industrial and Manufacturing Engineering ,Race (biology) ,Balance (accounting) ,Empirical research ,Economics ,Quality (business) ,Demographic economics ,Business and International Management ,Function (engineering) ,Law ,media_common - Abstract
In this article, we examine the rate at which patent applications are granted as a function of the inventor’s race and gender. Empirical analysis of more than 3.9 million United States applications finds minority and women applicants are significantly less likely to secure a patent relative to the balance of inventors. Further analysis indicates that a portion of this bias is introduced during prosecution at the Patent Office, independent of the quality of the application. Mechanisms underlying these disparities are explored. The paper concludes with a discussion of our results and their interaction with patent law, innovation policy, and employment trends.
- Published
- 2020
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25. Enabling Science Fiction
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Camilla Alexandra Hrdy and Daniel Harris Brean
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Literary genre ,Exclusive right ,Aesthetics ,law ,Patent law ,Perpetual motion ,Affect (linguistics) ,Meaning (existential) ,Sociology ,Invention ,Time travel ,law.invention - Abstract
Patent law promotes innovation by giving inventors 20-year-long exclusive rights to their inventions. To be patented, however, an invention must be “enabled,” meaning the inventor can actually describe it in enough detail to teach others how to make and use the invention at the time the patent is filed. When inventions are not enabled, like a perpetual motion machine or a time travel device, they are derided as “mere science fiction”—products of the human mind, or the daydreams of armchair coots, that are not suitable for the patent system. This Essay argues that, in fact, the literary genre of science fiction has its own unique—albeit far laxer—enablement requirement. Since the genre’s origins, fans have demanded that the inventions depicted in science fiction meet a minimum standard of scientific plausibility. Otherwise, the material is denigrated as lazy hand- waving or, worse, “mere fantasy.” Taking this insight further, the Essay argues that, just as patents positively affect the progress of science and technology by teaching others how to make and use real inventions, so too can science fiction, by stimulating scientists’ imagination about what sorts of technologies might one day be possible. Thus, like patents, science fiction can have real world impacts for the development of science and technology. Indeed, the Essay reveals that this trajectory—from science fiction to science reality—can be seen in the patent record itself, with several famous patents tracing their origins to works of science fiction.
- Published
- 2020
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26. Recent Developments in Patent Law 2020
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Andrew McCreary, Mark A. Lemley, and Tyler Robbins
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Law ,Patent law ,Political science ,Year-ending - Abstract
A summary of the most significant developments in patent law for the year ending April 19, 2020.
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- 2020
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27. What's In A Name? Curver Luxembourg and Its Implications for Design Patents
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Zachary Shufro
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Design patent ,Scope (project management) ,Process (engineering) ,Patent law ,Political science ,Appeal ,Court decision ,Context (language use) ,Intellectual property ,Law and economics - Abstract
This Article examines design patent law in the context of the 2019 Court of Appeals for the Federal Circuit decision of Curver Luxembourg, SARL v. Home Expressions, Inc. It first explains the law of design patents as it was prior to the Curver Luxembourg decision — providing an overview of the three key requirements for design patent eligibility, the concept of an article of manufacture, and the design patent prosecution process. Then, it examines the Curver Luxembourg decision itself: the background of the case, the district court decision, and its affirmation on appeal. Finally, it examines the decision’s implications for design patent law, industry reactions to the decision, and specifically considers the increased importance of patent titles and the decision’s impact on the scope of prior art.
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- 2020
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28. Inter Partes Review Estoppel: The Patent Law Tug-of-War
- Author
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Matthew Modderman
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Political science ,Law ,Patent law ,Tug of war ,Petitioner ,Estoppel ,Limiting ,Res judicata ,Real party in interest - Abstract
Inter partes review estoppel has violated the principles of traditional res judicata since its inception. For the first several years of its life, IPR estoppel served to preserve a petitioner’s ability to harass patent owners and repetitively attempt to invalidate patents. Following SAS in 2018, IPR estoppel began to reverse course. The courts that once were allowing patent owner abuse are now limiting it with a broad application of IPR estoppel. However, this broad application of IPR estoppel is a soft claim preclusion that allows many exceptions behind the principles of res judicata. Furthermore, the PTAB allows petitioners to file numerous IPR petitions and does not enforce estoppel until a final written decision is issued to which the petitioner is a real party in interest. This practice likewise allows the harassment of patent owners and violates the principles of res judicata. To resolve the inter partes review estoppel problems, Congress must reintroduce the principles of res judicata with exceptions only where patent litigation absolutely requires it. Such an analysis leads to the conclusion that by enacting only the petitioner standing requirement and the estoppel provisions of the STRONGER Patents Act of 2019, IPR estoppel would achieve a balance equitable to patent owners and petitioners alike. These two provisions do well to support the principles of res judicata, grant adequate leeway where patent litigation requires it, yet still provide claim preclusion strong enough to avoid abuse. The doctrine of res judicata does not need reinventing for 21st century patent litigation—it merely needs reintegration.
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- 2020
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29. The Unfolding Story of Copyright Protection for Functional Shapes – Where Copyright and Patent Law Meet but Should not Merge
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Thomas Gils
- Subjects
ComputingMilieux_GENERAL ,Computer science ,Originality ,media_common.quotation_subject ,Patent law ,Copyright law ,Novelty ,ComputingMilieux_LEGALASPECTSOFCOMPUTING ,Contrast (music) ,Creativity ,Law and economics ,Merge (linguistics) ,media_common - Abstract
Copyright protection for functional shapes has historically been quite a hot topic in copyright law. The various types of creativity used in cognitive sciences do, however, provide another indication on how to resolve this issue. The solution can further be illustrated by using the contrast with patent law and its underlying concept of creativity.
- Published
- 2020
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30. COVID-19: Hope for a New World of IP?
- Author
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Matthieu Dhenne
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Lever ,Property (philosophy) ,business.product_category ,Coronavirus disease 2019 (COVID-19) ,Political science ,Patent law ,Pandemic ,Compulsory license ,Intellectual property ,Geopolitics ,business ,Law and economics - Abstract
The COVID-19 pandemic is having a two-fold impact on the world of IP: after an initial retreat towards the classic utilitarian model, focused on the utility of property to its holder, the modern utilitarian model, focused on societal utilities of property, is rising in such a way that IP could now, more than ever, constitute a geopolitical tool as much as a potential economic lever.
- Published
- 2020
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31. An Empirical Study Comparing Patent Validity Challenges at the Patent Trial and Appeal Board vs. the Federal District Courts
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Amy Semet
- Subjects
Empirical research ,Tribunal ,State (polity) ,Statutory law ,Political science ,media_common.quotation_subject ,Law ,Patent law ,Institution ,Patent Trial and Appeal Board ,media_common ,Subject matter - Abstract
Using an originally-constructed database of over 12,000 patent decisions heard at the Patent Trial and Appeal Board (“PTAB”) and over 75,000 patent law decisions heard by the federal district courts from 2012 through October 2020, this Article analyzes the interplay between the two forums in how patent validity claims are adjudicated, particularly focusing on inter partes review (“IPR”). Reviewing over 7,500 patents assessed at the PTAB over the past six years of the adjudicative tribunal’s existence, the Article analyzes whether there are differences in institution rates and final outcomes depending on the type of patentee owner, the technology type, and whether or not there is a prior or past district court case and decision. While about 80% of PTAB proceedings involve a patent that has or is being litigated in at least one district court, there are only about 2,000 PTAB cases in which the district court has ruled on invalidity grounds. Further, in most cases that do involve a PTAB proceeding, the district court rules a patent invalid based on lack of statutory subject matter—a legal challenge that cannot even be brought in an IPR proceeding. Comparing district court cases where the court rules on eligible PTAB statutory sections—namely obviousness and anticipation grounds—indicates preliminarily that the district court and the PTAB largely agree on outcomes. Overall, this empirical research contributes to the debate about how the patent system—and in particular, the practices at the PTAB—should be reformed, and about the role that the administrative state has in patent policy and in influencing outcomes in the federal courts. Specifically, it questions whether the grounds for PTAB proceedings should be enlarged to encompass challenges based on section 101 subject matter issues.
- Published
- 2020
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32. Strategic Patenting: Evidence from the U.S. Court of Appeals for the Federal Circuit
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Ivan P. L. Png, Xi Xiong, and Yun Hou
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History ,geography ,Natural experiment ,geography.geographical_feature_category ,Legal protection ,Polymers and Plastics ,Jurisdiction ,Patent law ,Fell ,Business ,Business and International Management ,Industrial and Manufacturing Engineering ,Law and economics - Abstract
How should businesses adjust strategic patenting to changes in patent law? Theoretically, under particular conditions, if the legal protection of patents is stronger, incumbent businesses would reduce patenting. When the Court of Appeals for the Federal Circuit assumed jurisdiction over patent appeals, it strengthened the legal protection of patents. Importantly, the strengthening varied geographically by judicial circuit. Exploiting these changes as a natural experiment, we find that post-CAFC, patents were more valuable commercially but not technologically superior, businesses reduced patenting, and new entry fell. The reduction in patenting was more pronounced among continuations, larger businesses, and in less concentrated industries.
- Published
- 2020
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33. Patenting Personalized Medicine: Molecules, Information, and the Body
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Mario Biagioli and Alain Pottage
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Cultural Studies ,Medical education ,Arts and Humanities (miscellaneous) ,business.industry ,Political science ,Patent law ,Medical practice ,Personalized medicine ,business - Abstract
The histories of patent law and medical practice in the United States have intersected in various ways over the past 150 years, beginning with the professional campaign against “patent medi...
- Published
- 2020
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34. The Death of the Genus Claim
- Author
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Dmitry Karshtedt, Mark A. Lemley, and Sean B. Seymore
- Subjects
History ,Polymers and Plastics ,Patent law ,Genus (mathematics) ,Economics ,Relevance (law) ,Business and International Management ,Intellectual property ,Patent system ,Discount points ,Industrial and Manufacturing Engineering ,Law and economics - Abstract
The central feature of patent law in the chemical, biotechnology, and pharmaceutical industries is the genus claim – a patent that covers not just one specific chemical but a group of related chemicals. Genus claims are everywhere, and any patent lawyer will tell you they are critical to effective patent protection. But as we show in this article, the law has changed dramatically in the last twenty-five years, to the point where it is no longer possible to have a valid genus claim. Courts almost always hold them invalid. Remarkably, they do this without having acknowledged that they have fundamentally changed an important area of law. More remarkably, patent lawyers and patent owners don’t seem to have noticed. Invention, investment, patenting, and patent litigation continue much as they had before. It’s just that the patents that are the basis of all that activity are invalid. We document this surprising shift in the law. We explain why we think it represents both bad law and bad policy. We also explain why it hasn’t seemed to matter, and what that fact says about the relevance of law more generally in governing business behavior.
- Published
- 2020
- Full Text
- View/download PDF
35. The Effects of Myriad and Mayo on Molecular Test Development in the US and Europe: Interviews from the Frontline
- Author
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John Liddicoat, Mateo Aboy, and Kathleen Liddell
- Subjects
European Union law ,Supreme Court Decisions ,Patentable subject matter ,business.industry ,Patent law ,Political science ,Public relations ,Speculation ,Patent system ,business ,Competitive advantage ,Test (assessment) - Abstract
US Supreme Court decisions in Mayo Collaborative Services v. Prometheus Laboratories and Association for Molecular Pathology v. Myriad Genetics Inc. caused US and European law on what is patentable subject matter to diverge significantly. Both cases related to molecular tests and changed decades of patent practice. Whether the decisions adversely affect the development of molecular tests in the United States and Europe has been a matter of much speculation but limited empirical investigation. This interview-based study has three main findings. First, Myriad and Mayo have negatively affected the development of some molecular tests. Notably, half of the US university technology-transfer offices interviewed decided not to develop tests, and many other organizations have found the legal uncertainty following the cases problematic. Second, small "patent-precarious" organizations—those that rely heavily on patents for competitive advantages, such as technology-transfer offices—have been the most affected because patent protection is now often weaker and more difficult
- Published
- 2019
- Full Text
- View/download PDF
36. Research Handbook on Patent Law and Practice (Table of Content and Preface)
- Author
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UW Law Submitter and Toshiko Takenaka
- Subjects
Scope (project management) ,Examination procedure ,Political science ,Patent law ,Computer software ,Table of contents ,Patentability ,Patent system ,Medical science ,Law and economics - Abstract
This significantly updated second edition of the Research Handbook on Patent Law and Practice provides comprehensive coverage of new research for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners provide an innovative comparative analysis of fundamental issues such as patentability, examination procedure and the scope of patent protection, with current issues such as patent protection for industry standards, computer software and business methods. Updates to this second edition reflect on the dramatic changes that have taken place in the US Patent System since the first edition, including the America Invents Act that has introduced the first-inventor-to-file policy and post issuance proceedings to challenge validity. Current topics, such as the Unified Patent Court, patent litigation updates reform in the US, design patents and patent inventions in medical science, are also addressed.
- Published
- 2019
- Full Text
- View/download PDF
37. Proprietà intellettuale e antitrust nel settore farmaceutico (Intellectual Property and Antitrust in the Pharmaceutical Sector)
- Author
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Carmine Di Sanza
- Subjects
Abuse of rights ,Innovator ,Political science ,Common law ,Patent law ,Jurisprudence ,National level ,Intellectual property ,Humanities ,European court of justice - Abstract
Italian Abstract: Questa tesi tratta della c.d. intersezione tra diritto antitrust e diritti di proprieta intellettuale e, in particolare, il tema dell’abuso di posizione dominante commesso tramite l’esercizio delle facolta derivanti da un diritto di brevetto. Il tema e analizzato specificamente nel settore farmaceutico, tramite lo studio dei casi Astrazeneca e Pfizer, decisi rispettivamente dalla Corte di Giustizia dell’Unione europea e dal Consiglio di Stato. In dottrina si afferma, generalmente, che diritto antitrust e proprieta intellettuale perseguono, seppure con mezzi diversi, lo stesso fine, quello dell’allocazione efficiente delle risorse. Tuttavia, nella pratica, emergono contraddizioni tra i due settori dell’ordinamento: l’esercizio di un diritto di proprieta intellettuale puo condurre a pratiche considerate, a volte, anticoncorrenziali. E necessario quindi decidere a quale branca dell’ordinamento assegnare la prevalenza. Cio rappresenta un problema sia giuridico che economico: far prevalere il diritto antitrust su quello brevettuale implica dare maggior importanza allo stimolo dell’efficienza allocativa statica, piuttosto che all’efficienza allocativa dinamica. Un tempo la Corte di giustizia risolveva la questione ricorrendo al criterio delle “circostanze eccezionali”, consolidato in Magill, IMS e Microsoft. Tuttavia, esso non viene affatto menzionato in Astrazeneca, e non e chiaro se esso sia tuttora applicabile. La societa farmaceutica innovatrice AstraZeneca ottiene illegittimamente dei Certificati di protezione complementare e richiede il ritiro di alcune Autorizzazioni all’immissione in commercio di cui e titolare. Tali operazioni sono sanzionate come abuso di posizione dominante, in quanto determinano l’esclusione dal mercato dei concorrenti genericisti. Tuttavia, la Corte di giustizia non riesce ad elaborare un criterio chiaro in base al quale spiegare la natura illecita della condotta: ricorre al vago criterio della “concorrenza basata sui meriti” ed enfatizza l’elemento soggettivo dell’abuso, cioe l’intento escludente. La societa farmaceutica Pfizer ottiene un brevetto divisionale e, sulla base di esso, un CPC per l’Italia, in prossimita dell’entrata in commercio dei concorrenti genericisti. Cio e sanzionato come abuso di posizione dominante. La sentenza del Consiglio di Stato che sanziona Pfizer rappresenta la “ricaduta” nazionale della decisione Astrazeneca. E infatti, la decisione del CdS e affetta dagli stessi difetti: spiegazione insoddisfacente della natura anticoncorrenziale della condotta ed enfasi eccessiva sull’elemento soggettivo. Non riuscendo a fornire una spiegazione soddisfacente del perche la condotta di Pfizer sia anticoncorrenziale, il CdS si trova costretto a ricorrere alla teoria dell’abuso del diritto, all’interno della quale ricomprende l’abuso di posizione dominante. La motivazione con cui la Corte di giustizia decide il caso Astrazeneca non e del tutto soddisfacente. La “concorrenza basata sui meriti” e una formula imprecisa, che non permette di comprendere se una condotta sia lecita o illecita in base all’art. 102 TFUE. Il ricorso all’elemento soggettivo e contrario alla giurisprudenza della stessa Corte di giustizia, che ha sempre qualificato l’abuso di posizione dominante come fattispecie oggettiva. Inoltre, l’intento escludente non puo essere posto a fondamento dell’abuso in un caso di intersezione tra antitrust e ordinamento brevettuale: esso sarebbe sempre presente, dato che il brevetto si acquisisce proprio con l’intenzione di escludere i concorrenti dal mercato dell’invenzione brevettata. I punti critici nella motivazione di Astrazeneca fanno si che essa non sia di grande aiuto per la risoluzione di casi simili, come dimostra il caso Pfizer. I criteri adottati in Astrazeneca non consentono alle imprese di poter prevedere ex ante se la propria condotta verra valutata come anticoncorrenziale, ed espandono eccessivamente la discrezionalita delle autorita antitrust nell’affermare l’esistenza di un abuso di posizione dominante. English Abstract: This work covers the topic of the “intersection” between antitrust law and IP law. Specifically, it deals with two cases of abuse of a dominant position, committed in the exercise of rights granted by patens: Astrazeneca (ECJ, judgement of 6th December 2012, case C-457/10P) and Pfizer (Consiglio di Stato, sentenza del 12 febbraio 2014 n. 693). Both the infringements of art. 102 TFEU are carried out by innovator pharmaceutical companies, in the attempt to exclude generic competitors from the market. It is said that antitrust law and patent law pursue the same objective, although using different means. However, in practice, the two sets of laws often come into conflict. When this happens, courts must decide which sector of the law should prevail. This legal issue also has economic significance. Antitrust law protects static allocative efficiency, while patent law incentivises dynamic allocative efficiency: to favour antitrust law over patent law also means to favour static efficiency over dynamic efficiency. The European Court of Justice used to apply the “exceptional circumstances” test to the problem. However, it is unclear whether such criterion is still applicable, since it is not mentioned at all in Astrazeneca. In Astrazeneca, AZ obtains certain Supplementary Protection Certificates to which it is not entitled. Later, AZ requests the withdrawal of certain Marketing Authorisations. Both the operations have the effect of excluding AZ’s competitors from the market. The ECJ sanctions AZ for abuse of dominance. The finding of abuse is based on two elements: AZ conduct was outside “competition based on the merits” and AZ acted with a purely exclusive intent. The Pfizer case is the outcome of the application of the Astrazeneca jurisprudence at the national level. The Italian Antitrust Authority finds that Pfizer abused its dominant position by obtaining a divisional patent and a SPC. The finding is supported by the same elements used in Astrazeneca: contrariety to competition based on the merits and exclusionary intent. However, the Italian Council of State adds an argument, claiming that an abuse of dominant position is just a form of abuse of rights. Such argument was previously unheard of in antitrust law. Both the elements that support the finding of an abuse in Astrazeneca and Pfizer are questionable. The ECJ resorts massively to the concept of “competition based on the merits”, but no one has ever explained what exactly that means. Great emphasis is placed on the subjective element of the abuse. However, such element should not be so relevant, according to ECJ case law. Moreover, the existence of a will to exclude competitors is inherent in every request for a patent. Excluding competitors from the market of the patented invention is the very object of a patent. The ECJ’s judgement in Astrazeneca is not entirely satisfying, and it hardly gives guidance to solve similar cases. This is evident in Pfizer, where the Council of State is almost forced to turn to the theory of abuse of rights to justify the finding of an abuse. The criteria used in Astrazeneca do not allow undertakings to predict ex ante if their conduct will be considered abusive.
- Published
- 2019
- Full Text
- View/download PDF
38. Recent Developments in Patent Law 2019
- Author
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Mark A. Lemley and Andrew McCreary
- Subjects
Patent law ,Political science ,Law and economics - Published
- 2019
- Full Text
- View/download PDF
39. Patent Trolls: Nature and Legal Issues
- Author
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Parth Singh
- Subjects
Jurisdiction ,Patent troll ,Statutory law ,Political science ,Law ,Patent law ,Legislature ,Intellectual property - Abstract
This research paper talks about the nature of Patent troll and the legal issues faced and misused by such claimants (Patent Troll). My paper talks about what exactly is patent and what are the basic 5 requirements to have it, which is then further referred to a patent troll, what exactly does patent troll mean, how does this bring up an issue in Patent Law. I have also discussed the legislative steps taken by the Indian Jurisdiction to avoid Patent Troll and ended up the paper with statutory backing up of precedents for a step which may avoid such patent trolls.
- Published
- 2019
- Full Text
- View/download PDF
40. A Framework for Patent Exhaustion of Self-Replicating Technologies
- Author
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Elizabeth Freeman Rosenzweig
- Subjects
Political science ,Patent law ,media_common.quotation_subject ,Subject (philosophy) ,Doctrine ,Context (language use) ,Tort ,Gray (horse) ,Supreme court ,Law and economics ,media_common - Abstract
The doctrine of patent exhaustion extinguishes a patent owner’s rights of exclusion over the use, sale, and import of objects that have been the subject of a patentee-authorized sale. But the doctrine appears to break down in the context of a crucial segment of the modern invention economy: self-reproducing technologies. Despite these technologies’ growing importance, there is currently no clear guidance for applying exhaustion to self-reproducing technologies. The Supreme Court has most recently addressed exhaustion in Bowman v. Monsanto in 2013 and in Impression Prods. v. Lexmark in 2017. But these two cases speak to different parts of the problem, and have not yet been integrated. Furthermore, the Court in Bowman explicitly left open two questions about how exhaustion might apply to self-reproducing technologies, both of which remain unanswered. This Note provides the first comprehensive integration of modern exhaustion caselaw with self-reproducing technologies. By integrating Bowman, Lexmark, and a tort-based understanding of infringement, this Note presents a concise and robust framework—which I have termed “Bowmark”—for applying exhaustion to self-reproducing technologies beyond Bowman’s limited holding. Finally, I show that this framework is workable against Bowman’s open questions, revealing that, to the extent that there are still gray areas regarding the role of patent law in the situations explicitly un-addressed by Bowman, those gray areas do not involve exhaustion.
- Published
- 2019
- Full Text
- View/download PDF
41. Piece Problems: Component Valuation in Marketing and in Patent and Tort Law
- Author
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Saul Levmore
- Subjects
Microeconomics ,Patent law ,Stove ,Business ,Tort ,Game theory ,Database transaction ,Valuation (finance) - Abstract
The problems referred to in the title of this chapter concern evaluating a given variable when it is one of several that have combined to bring about a result. In some cases, there is an easy market solution. Imagine that you contract to buy a house and then the beautiful kitchen stove, one of many things that attracted you to the property, is destroyed before you close the transaction or occupy the property. How much should the price now be reduced? Here there is an upper limit based on the cost of a comparable replacement appliance. A more precise valuation would also be easy if identical houses, lacking this one feature, had recently been sold. The stove is just a piece of the larger transaction, and with these convenient facts, there is not much of a “component valuation problem.” Additionally, the stove is unlikely to have been of greater value because of its interaction with other items in the house; colors and sizes are fairly standardized. “Conjoint analysis” – a term that usually refers to survey evidence that tries to elicit the value of a component – is therefore unnecessary, or at least uncomplicated, because value does not depend on an interaction among variables in a way that is not directly observed. It is also interesting because it does not present a difficult Game Theory problem, or result that might be described in common parlance as something that depends on the relative bargaining skill of the parties.
- Published
- 2019
- Full Text
- View/download PDF
42. Les inventions mises en œuvre par ordinateur : actualité et enjeux de l’extension contemporaine de la brevetabilité (Computer-Implemented Inventions: Current Questions and Challenges of the Extension of Patentability)
- Author
-
Christophe Geiger
- Subjects
Parliament ,Political science ,media_common.quotation_subject ,Patent law ,Appeal ,Context (language use) ,Patentability ,Proposition ,Intellectual property ,Directive ,Humanities ,media_common - Abstract
French Abstract: La question de la brevetabilite des inventions mises en œuvre par ordinateur constitue un sujet crucial pour le droit moderne des brevets et plus generalement pour le droit de la propriete intellectuelle. Absent des initiatives legislatives depuis que le Parlement europeen en 2005 a rejete a une ecrasante majorite une proposition de directive sur le sujet, la question n’a pourtant pas disparu de l’actualite juridique, notamment parce que les inventions « logicielles » ont continue de faire l’objet de decisions des chambres de recours de l’Office europeen des brevets et de tribunaux nationaux. De plus, dans le contexte d’une economie desormais mondialisee, les evolutions jurisprudentielles d’autres juridictions comme les Etats-Unis jouent un role tres important et sont scrutees avec grande attention, dans la mesure ou les exploitations des inventions se font souvent dans un contexte global. Cette contribution introductive de l’ouvrage a paraitre sur la question dans la collection du CEIPI (M. Dhenne et Ch. Geiger (dir.), « Les inventions mises en oeuvre par ordinateur : enjeux, pratiques et perspectives », Collection du CEIPI No.67, LexisNexis, 2019) revient sur trois des principaux enjeux, a savoir les enjeux juridiques, socio-economiques et theoriques, de l’extension contemporaine de la brevetabilite dans le domaine des creations informatiques. English Abstract: The patentability of computer-implemented inventions is an issue of crucial importance to modern patent law and to intellectual property law in general. Despite the absence of legislative initiatives on this topic since 2005, when the European Parliament rejected a proposal for a directive on this subject by an overwhelming majority, the issue has not disappeared from legal discussions, mainly due to the fact that "software" inventions continued to be the subject of decisions delivered by the Boards of Appeal of the European Patent Office and by national courts. Moreover, in the context of an increasingly globalized economy where inventions are exploited internationally, developments taking place in the case-law of other jurisdictions, and particularly in the United States, play and important role and are subject to close scrutiny. This contribution which forms the introductory chapter to a volume that is to be published on this topic in the CEIPI collection (M. Dhenne and Ch. Geiger (eds.), “Computer-Implemented Inventions: Challenges, Current Practices and Perspectives", Collection of the CEIPI No.67, LexisNexis, 2019) examines the legal, socio-economic and theoretical implications of the extension of patentability to computer-implemented inventions under the current patent law system.
- Published
- 2019
- Full Text
- View/download PDF
43. Schutz von sensiblen Informationen in SEP/FRAND-Fällen – Ein kritischer Überblick über die jüngsten rechtlichen Entwicklungen (Confidentiality in SEP/FRAND Cases – A Critical Overview of the Recent Legal Developments)
- Author
-
Peter Georg Picht
- Subjects
German ,Law ,Patent law ,Political science ,Confidentiality protection ,language ,Legislation ,Know-how ,language.human_language - Abstract
German Abstract: Der Geheimnisschutz im (Umfeld von) Gerichtsverfahren ist ein Problemkind des Geschaftsgeheimnis- und des Patentverfahrensrechts. Der Beitrag beleuchtet drei aktuelle Entwicklungen in diesem Bereich, namlich die Vorlage von Vergleichslizenzen in SEP/FRAND-Streitigkeiten, die neuen Geheimnisschutzregeln des GeschGehG sowie deren Ubertragung in das Patentverfahrensrecht durch das geplante Patentrechtsmodernisierungsgesetz. Auf Basis dieser Zusammenschau unterbreitet er Vorschlage fur die weitere Rechtsentwicklung. English Abstract: Confidentiality protection is both an important and a controversial issue in German know-how and patent litigation. This paper assesses three current developments in the area: the submission of existing, comparable licenses before and during SEP/FRAND litigation; the confidentiality protection mechanisms of the recently introduced German Code for the Protection of Business Secrets (GeschGehG); and the envisaged transfer of these mechanisms to patent law by an impending reform of the German Patent Code. Based on this analysis, the paper makes recommendations for how to improve the legal framework for confidentiality protection in patent litigation and SEP/FRAND negotiations.
- Published
- 2019
- Full Text
- View/download PDF
44. Optimal Standards of Proof in Patent Litigation: Infringement and Non-Obviousness
- Author
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Abraham L. Wickelgren and Ezra Friedman
- Subjects
Incentive ,Patent law ,Economics ,Deadweight loss ,Monopoly ,Law and economics ,Adjudication ,Intuition - Abstract
We build a model of innovation and patent adjudication under two forms of uncertainty; uncertainty regarding whether the original invention merits protection (non-obviousness), and uncertainty as to whether a particular competitor's product should be barred (infringement). We find that when it is practical to increase the rewards from innovation by extending patent length, the standards of proof for non-obviousness should be high. The intuition for this is that patent length should be set so that the increase in innovation from extending patent length is balanced by the increase in deadweight loss from extending monopoly pricing. In this situation, the ex-ante cost of failing to protect a good patent is minimal, but there is substantial deadweight loss from protecting a bad patent. In contrast, if non-infringing competing inventions substantially decrease the original inventor's profits, it might be desirable to have a very low standard of proof for infringement, since the deadweight loss from an incorrect finding of infringement is mostly balanced out by the increased ex-ante incentive to invent.
- Published
- 2019
- Full Text
- View/download PDF
45. Limited Patent Disclosure
- Author
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Alexandra K. Zaby, Diana Heger, and Katharina Zaby
- Subjects
History ,Actuarial science ,Polymers and Plastics ,Patent law ,media_common.quotation_subject ,ComputingMilieux_LEGALASPECTSOFCOMPUTING ,Intellectual property ,Industrial and Manufacturing Engineering ,ComputingMilieux_GENERAL ,ComputingMilieux_COMPUTERSANDSOCIETY ,Quality (business) ,Profitability index ,Business ,Limit (mathematics) ,InformationSystems_MISCELLANEOUS ,Business and International Management ,Invention ,Imitation ,Empirical evidence ,media_common - Abstract
Patent law requires the full, clear, and concise disclosure of an invention in exchange for the protection of the intellectual property. Nevertheless, patent disclosure is limited. This paper presents empirical evidence as well as a theoretical approach investigating the strategic motives to limit disclosure via patents. Empirical evidence suggests that firms limit patent disclosure to avoid imitation, and further that limited disclosure increases the probability of patent rejection / prolonged pendency / invalidation in case of litigation. The theoretical model identifies insufficient patent examination quality as crucial for the profitability of limited patent disclosure.
- Published
- 2019
- Full Text
- View/download PDF
46. The Legal Nature of FRAND Under U.S. Law
- Author
-
William Hubbard
- Subjects
Honor ,Law ,Patent law ,Patent infringement ,Declaration ,Business ,Commit ,Antitrust Liability - Abstract
The legal nature of FRAND in the United States has evolved into a complex, integrated system that includes aspects of patent law, contract law, and antitrust law. A SEP owner who fails to commit to FRAND licensing may potentially incur antitrust liability if a SEP is intentionally concealed during the standard setting process. On the other hand, by making a FRAND declaration, a SEP owner both accepts limits on remedies for infringement of that patent and enters a binding contract in which potential licensees of the patent are third-party beneficiaries entitled to enforce the FRAND commitment. Antitrust law further encourages a SEP owner to honor its FRAND commitment, U.S. antitrust laws may be violated by a false FRAND declaration. Of these FRAND-related claims, contract issues are poised to be most important because they often resolve other claims related to SEPs. Indeed, U.S. courts in FRAND contract cases have both determined global FRAND rates and enjoined SEP owners from pursuing related patent infringement litigation both inside of and outside of the United States. SEP owners and potential licensees therefore may find themselves haled into U.S. courts to resolve global FRAND disputes, and the legal effect of FRAND under U.S. law thus extends well beyond the borders of the United States.
- Published
- 2019
- Full Text
- View/download PDF
47. Overbreadth in Canadian Patent Law
- Author
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Norman Siebrasse
- Subjects
Scope (project management) ,Federal court ,Patent law ,media_common.quotation_subject ,Economics ,Appeal ,Doctrine ,Context (language use) ,Invention ,media_common ,Law and economics - Abstract
Under the overbreadth doctrine, a claim that exceeds the scope of the invention disclosed in the specification is invalid. While the doctrine is well established, it is redundant in the great majority of cases in which it is invoked, as an overbroad claim typically encompasses subject-matter which is not new, lacks utility, or is obvious. When overbreadth is not redundant, a puzzle arises: what is the principled justification for striking down a claim to an invention which is in fact new, useful, non-obvious and sufficiently disclosed? In such a case, how can it be said that the claim is broader than the invention? This article argues that overbreadth properly arises as an independent ground of invalidity in the context of the “roads to Brighton” problem, in which the question is whether the first inventor to achieve a result known to be desirable may claim the result itself or only their particular method of achieving it, but current Canadian law on this point does not require or invoke an independent overbreadth doctrine. Overbreadth was also applied as a truly independent ground of invalidity by the Federal Court of Appeal in Amfac Foods Inc. v Irving Pulp & Paper, Ltd. This article argues that Amfac was wrongly decided, both on its facts, and in its approach to overbreadth. The article warns that the Amfac approach, if widely adopted, risks invalidating patents for inventions which are new, useful and non-obvious, on the basis of an arbitrary parsing of the disclosure, in a manner reminiscent of the promise doctrine.
- Published
- 2019
- Full Text
- View/download PDF
48. Business Growth in Knowledge-Based Services: How Relationalism Affects Demand Side Growth Opportunities
- Author
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John Mawdsley, Deepak Somaya, Ecole des Hautes Etudes Commerciales (HEC Paris), and HEC Research Paper Series
- Subjects
Professional services ,clients ,Embeddedness ,elational ties ,Patent law ,professional services ,firm growth ,Added value ,[SHS.GESTION]Humanities and Social Sciences/Business administration ,Portfolio ,Business ,Set (psychology) ,Industrial organization ,added value - Abstract
The current paper complements and extends traditional Penrosean theories of firm growth by examining how a (supplier) firm’s relational embeddedness with its portfolio of existing buyers affects its business growth. Our theorizing rests on the foundation that a firm’s business growth stems from its breadth (or volume) of opportunities for creating added value with buyers, which more fully realizes the Penrosean vision that firm growth can be explained by a dynamic interaction between productive resources and demand-side market opportunities. While relational embeddedness may give a supplier some dyadic advantages with focal buyers, we theorize that it may lead to a narrower set of future added value business opportunities with the (supplier) firm’s entire portfolio of buyers. In addition, we hypothesize that this negative effect on business growth is moderated by a set of relational and demand-side attributes. These hypotheses are tested on a panel dataset of patent law firms (suppliers) and their relationships with corporate clients (buyers). Consistent with our hypotheses, we find that greater relational embeddedness is associated with slower supplier business growth, which is alleviated when these firms have greater cross-servicing ability and receive more relational commitment from buyers, but exacerbated when suppliers hold more buyer-specific knowledge and when buyers undertake more (internal) concurrent sourcing. In turn, our research demonstrates how the attributes of a supplier’s relationships with its portfolio of buyers can impact access to new business opportunities, and thus opens up new directions for research on firm growth, demand-side strategy and buyer-supplier relationships.
- Published
- 2019
- Full Text
- View/download PDF
49. The Bayh-Dole Act Revisited: The Impact of Intellectual Property Rights on Commercialization of University Research
- Author
-
Seojin Kim, Rafael A. Corredoira, Brent Goldfarb, and Anne Marie Knott
- Subjects
History ,Polymers and Plastics ,Patent law ,Political science ,Bayh–Dole Act ,Business and International Management ,Intellectual property ,Public domain ,Commercialization ,Industrial and Manufacturing Engineering ,Period (music) ,Law and economics ,Test (assessment) - Abstract
One of the foundational assumptions of patent law is that imbuing inventions with intellectual property rights (IPR) is necessary to bring forth innovation. We test this foundational assumption by examining the impact of IPR on commercialization of university research. Using the full set of US public firms who patented and conducted research over the period 1976 to 2007, we find little evidence that university research protected by IPR had higher commercialization relative to university research in the public domain. Indeed, if anything, university research in the public domain appears to have slightly greater commercialization.
- Published
- 2019
- Full Text
- View/download PDF
50. When Can Exclusive Licensees Initiate Patent Infringement Proceedings? Lessons for Global Ip Licensing Transactions from Two Recent UK Cases
- Author
-
Jacques de Werra and John Liddicoat
- Subjects
law ,Patent law ,Common law ,CLARITY ,Patent infringement ,Meaning (existential) ,Business ,High Court ,law.invention - Abstract
Two recent decisions of the English High Court analysed the meaning of ‘exclusive licence’ in the Patents Act 1977, providing much needed clarity on when exclusive licensees may initiate infringement proceedings.
- Published
- 2019
- Full Text
- View/download PDF
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