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Innumerable inventions implicate public health--including drugs, vaccines, dietary supplements, and sewage treatment plants. Over the past century, the Patent Office and the courts have modulated the ability to obtain or enforce patents for these inventions--whether in response to a public health crisis or to protect the credulous public from unscrupulous inventors. While normative and policy-based arguments can justify these interventions, they've disrupted the delicate balance of two competing policy objectives in patent law--enhancing public welfare and promoting innovation. This Article offers a new approach for courts to protect public health in patent cases--by making public health an affirmative defense to infringement. If the patent owner has engaged in invention-related egregious misconduct that's jeopardized public health, the court could render the patent unenforceable by dismissing the lawsuit. Or the court could render the patent temporarily unenforceable until the misconduct ceases and its ill effects on public health dissipate. This proposal aligns with the increasing use of equitable remedies in patent disputes and raises interesting normative and policy questions about the role of public health issues in patent law. [ABSTRACT FROM AUTHOR]

This article published in the Northwestern Journal of Technology & Intellectual Property pays tribute to the late Professor Dmitry Karshtedt, a renowned patent law scholar. The authors discuss the impact of Professor Karshtedt's scholarship on patent law, particularly in areas such as patent enablement, patent infringement, and nonobviousness. They also reflect on their personal friendship with Professor Karshtedt and his qualities as a dedicated teacher and intellectual. The article explores various legal sources and discussions on patent law, including the written description requirement, the purpose of patents, the unpredictability of research in fields like chemistry and biotechnology, building blocks in patent law, the relationship between patent law and tort law, divided infringement, and the doctrine of nonobviousness. The authors propose alternative approaches to determining liability in multi-party infringement situations and suggest a new framework for classifying evidence in patent law. Overall, the article praises Professor Karshtedt's contributions to patent law scholarship and highlights his personal qualities. [Extracted from the article]

Patent law doesn't look kindly on patent owners who engage in wrongdoing involving the patent. The U.S. Supreme Court and lower courts have refused to enforce patents tainted with inequitableness, fraud, or bad faith. This issue typically arises in patent litigation when an accused infringer asserts that the patent should be unenforceable if the patentee engaged in one of four proscribed activities: inequitable conduct (deliberate misrepresentations or omissions of material information from the Patent Office); patent misuse (anticompetitive licensing practices); unclean hands (business or litigation misconduct); or waiver/estoppel (a lack of candor before a standard-setting organization). This seems right--a patentee shouldn't be allowed to benefit from wrongdoing. However, the use of unenforceability to remedy patentee misconduct is largely understudied and undertheorized in legal scholarship. One reason is doctrinal. Aside from the four proscribed activities, there is no clear-cut remedy for other types of patentee misconduct involving the asserted patent. For instance, should a patent for a nutritional supplement that makes affirmative misstatements about its safety and efficacy be enforceable? How about a patent that plagiarizes someone else's copyrighted work or makes intentionally misleading assertions about the invention's capabilities? This Article seeks to answer these questions and fill the doctrinal and scholarly gap in patent unenforceability remedies. It offers a new, unclean-hands-based theory of unenforceability called patent forfeiture. If a patentee engages in egregious pre- or post-issuance misconduct involving the patent and gains an inequitable benefit from it or harms a third party, the patentee may forfeit the right to enforce the patent until the misconduct has been abandoned and its ill effects dissipate. Patent forfeiture adopts the hallmarks of equity--flexibility, discretion, and individualization--but is sufficiently constrained to align with other policy objectives of the patent system. And while morality, conscience, and good faith may not play a role in obtaining a patent, patent forfeiture reaffirms the importance of these equitable principles in enforcing a patent. [ABSTRACT FROM AUTHOR]

The doctrine of unclean hands is perhaps the most storied affirmative defense in civil cases. It allows a court to dismiss a lawsuit without reaching the merits if the patent owner (patentee) engaged in misconduct related to the claim being asserted. In patent law, the Supreme Court has stated that the doctrine is of "paramount interest" given the nature of the patent bargain between the inventor and the public. Nonetheless, unclean hands has been a relatively dormant defense in patent cases, other than in the specific context of patent procurement at the Patent Office (where it has evolved into the doctrine of inequitable conduct). It has also been mostly limited to cases involving litigation misconduct where the dismissal rendered the patent unenforceable against the accused infringer. Recently, however, the defense was successfully asserted against a patentee for prelitigation business misconduct. This holding raised eyebrows because it resurrected the doctrine and applied it more broadly than prior cases. Resurrecting unclean hands in patent law makes sense from a normative perspective. Allowing patentees to take advantage of their own misconduct contravenes the public interest, jeopardizes the legitimacy of the courts, and ultimately undermines the integrity of the patent system. But this insight raises three important normative questions: First, what types of misconduct should trigger the defense? Second, what nexus in time, causation, and logical linkage should exist between the alleged misconduct and the patent-in-suit? And third, does resurrecting the doctrine align with current patent policy and other goals of the patent system? I answer these questions in this Article by offering a new theory of unclean hands in patent law. I argue that misconduct during the acquisition of the patent right (other than at the Patent Office) should render the patent universally unenforceable against any potential defendant-infringer if the defendantinfringer can show a sufficient nexus. After exploring the types of misconduct that would or wouldn't trigger the doctrine, I describe how the proposed approach aligns with normative justifications for unclean hands and broader goals of the patent system. I also offer a set of principles to limit and guide a court's discretion in applying the doctrine in patent suits. [ABSTRACT FROM AUTHOR]

The central feature of patent law in the chemical, biotechnology, and pharmaceutical industries is the genus claim -- a patent claim 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 thirty years, to the point where it is nearly impossible to maintain a valid genus claim. Courts almost always hold them invalid, either at trial or on appeal. Remarkably, courts do this without acknowledging that they've fundamentally changed an important area of law. More remarkably, it's not clear that patent lawyers and patent owners have noticed this shift. Invention, investment, patenting, and patent litigation continue much as they have before, but the genus patents that are thought to be the basis of this activity generally end up invalid. We document this surprising shift in the law. We explain why we think it represents both bad law and bad policy. We also discuss why it hasn't seemed to matter to the relevant stakeholders, and what that fact says about the relevance of patent doctrine more generally. [ABSTRACT FROM AUTHOR]

The patent system gives courts the discretion to tailor patentability standards flexibly across technologies to provide optimal incentives for innovation. For chemical inventions, the courts deem them unpatentable if the chemical lacks a practical, non-research-based use at the time patent protection is sought. The fear is that an early-stage patent on a research input would confer too much control over yet-unknown uses for the chemical, thereby potentially hindering downstream innovation. Yet, denying patents on research inputs can frustrate patent law's broad goal of protecting and promoting scientific and technological advances. This Article addresses this problem by proposing a new form of intellectual property--a "research patent." This regime would allow inventors to obtain patents on research inputs and extract their full value through licensing and enforcement. Research patents would impose minimal administrative costs on the patent system and ultimately promote the disclosure, development, and use of early-stage inventions. At a broader level, the proposed regime raises the theoretical question of how allowing patent protection on early-stage inventions like research inputs serves patent law's instrumental justification of promoting scientific progress. It also raises significant normative and policy questions about technology-specific patentability standards and their role in furthering the goals of the patent system. [ABSTRACT FROM AUTHOR]

A bedrock principle of patent law is that old inventions cannot be patented. And a new use for an old invention does not render the old invention patentable. This is because patent law requires novelty--an invention must be new. But while a new use for an old invention does not make the old invention patentable, the new use itself might be patentable. In fact, new-use patents comprise a significant part of the patent landscape--particularly in pharmaceuticals, when drug companies obtain new-use patents to repurpose old drugs. This trend has fueled debates over follow-on innovation and patent quality. But there is a problem with new-use patents that has escaped the attention of legal scholars and commentators. The problem is when an inventor seeks a new-use patent for an old product that is, on close inspection, not new because the old product is really doing the same thing that it did before. This is a technical question that requires some understanding of the underlying science--how and why a result is achieved. But various evidentiary rules, biases, and perfunctory views of novelty preclude a true and accurate patentability assessment. Sometimes this leads to unwarranted patents; other times it derails meritorious inventions. This Article corrects this problem by offering a new framework for evaluating novelty in new-use patent claims. It proposes a probing novelty inquiry that would require inventors to elucidate and disclose mechanistic information to prove that a claimed new use is truly novel. Providing mechanistic information would promote patent law's disclosure function and improve patent (examination) quality. At a broader level, this Article raises the normative and theoretical question of what it means to be identical--which is what novelty is all about. It also raises policy questions about novelty's gatekeeping function and its role in promoting broader goals of the patent system. [ABSTRACT FROM AUTHOR]

It is a bedrock principle of patent law that an inventor need not understand how or why an invention works. The patent statute simply requires that the inventor explain how to make and use the invention. But explaining how to make and use something without understanding how or why it works yields patents with uninformative disclosures. Their teaching function is limited; one who wants to understand or figure out the underlying scientific principles must turn elsewhere. This limited disclosure rule does not align with the norms of science and tends to make patent documents a less robust form of technical literature. To address this problem, this Article proposes a two-tiered disclosure paradigm. While compliance with the extant statutory disclosure requirements would still be sufficient to obtain a patent, the inventor could opt to provide a mechanistic disclosure--one that describes how and why the invention works. Providing a mechanistic disclosure would have several upsides for the inventor, improve patent (examination) quality, enrich the public storehouse of technical knowledge, and promote broader goals of the patent system. [ABSTRACT FROM AUTHOR]

It is a bedrock principle of patent law that an inventor need not know or understand how or why an invention works. The patent statute simply requires that the inventor explain how to make and use the invention. But explaining how to make and use something without understanding how or why it works yields patents with uninformative disclosures. Their teaching function is limited; someone who wants to understand or figure out the underlying scientific principles must turn elsewhere. This limited disclosure rule does not align with the norms of science and tends to make patent documents a less robust form of technical literature. This Essay explores the contours of the rule, the policy tradeoffs, and the broader implications for the patent system. [ABSTRACT FROM AUTHOR]

Novelty is a basic requirement of patent law. An inventor cannot obtain a patent if the invention exists in the "prior art," a term that generally refers to knowledge and technology already in the public domain. Interestingly, an earlier-filed patent document qualifies as prior art as of its filing date -- even though the document does not become accessible to the public until much later. The rationale is that the first inventor did all that could be done to promptly disclose the invention to the public; administrative delay of public accessibility due to Patent Office procedures should not count against the inventor. That the first inventor placed the patent document in the pipeline toward disclosure justifies backdating it for prior art purposes. But an earlier-filed patent application is not the only type of "pipeline" disclosure. A manuscript submitted for publication in a peer-reviewed technical journal is also on a trajectory toward public disclosure. This Essay argues that patent law should not only treat such manuscripts the same as earlier-filed patent documents for prior art purposes, but that backdating is more justifiable for peer-reviewed publications. This Essay raises interesting theoretical and policy questions about novelty and the meaning of prior art. [ABSTRACT FROM AUTHOR]

It is axiomatic that once an invention has been patented, it cannot be patented again. This aligns with the quid pro quo theory of patents—the public would receive nothing new in exchange for the second patent. Enforcing this rule is done through the novelty requirement, which bars a patent if the invention is already known. But the rule is hard to justify if the original patentee reneged on the quid pro quo by inadequately disclosing how to make and use the invention. The inadequate disclosure suggests that the original inventor did not invent anything and the public received no benefit from the original patent. Nevertheless, the current novelty rules prevent the subject matter from being patented again, even if a subsequent researcher can figure out how to make, use, and possibly commercialize it. This novelty bar might destroy the incentive to engage in research and development—an outcome that would ultimately deprive the public of a potential benefit (which, as in the case of a drug, could be enormous). In sum, the current novelty rules prevent many socially valuable inventions from reaching the public. To remedy this problem, this Article proposes a new novelty paradigm. It draws attention to a situation where a subsequent inventor—the reinventor—seeks to claim subject matter identical to that claimed by another in an expired patent. If the reinventor can prove that the subject matter was inadequately disclosed in the earlier patent, that disclosure will not have a novelty-defeating effect. So the reinventor will be allowed to (re)claim the subject matter absent any other patentability hurdles. While the public would pay for the invention twice, it would ultimately benefit from the second period of exclusivity by obtaining an invention that it might otherwise not have received, a technically robust disclosure, and full possession of the invention at the end of the reinventor’s patent term. Thus, reinvention promotes the patent system’s fundamental goals of encouraging investment, innovation, and the full public disclosure of new inventions. [ABSTRACT FROM AUTHOR]

Everyone knows that it is far too easy to get a (bad) patent. Fingers often point to the U.S. Patent and Trademark Office ("PTO"), which is often criticized for making awful patenting decisions. Legal scholars have offered several reasons for the quality problem, including low substantive standards for patentability and problems with the Patent Office's inner workings, decision-making, and policy choices. This Article offers a very different explanation for the patent quality problem. Drawing attention to what happens inside the PTO is clearly the correct locus; however, any serious headway toward improving patent quality must focus more directly on patent examination. My basic claim is that the PTO issues low-quality patents primarily because of a confluence of three asymmetries -- proof, information, and legal -- that exist in the current patent examination paradigm. I explain how these asymmetries tip the scales of patentability so far in the applicant's favor that anyone who seeks a patent on anything usually gets one. I propose a new patent examination regime, which would eliminate the three asymmetries, derail frivolous filings, and make a patent grant far from guaranteed. Rebalancing the scales of patentability would improve patent quality and promote broader goals of patent policy. [ABSTRACT FROM AUTHOR]

The article looks at a framework for patentability of building block inventions in unpredictable fields objectively without reliance on the utility requirement in the U.S. Topics discussed include role of patent reform to making hard obtaining low quality patents; ways to raise substantive standards of patentability; and the impact of the foresight bias in patent denial regardless of the invention's technical merit.

The article discusses American patent laws and a utility requirement which is contained in the original U.S. Patent Act of 1790 and in Section 101 of the nation's Patent Act as of February 2014, focusing on several legal cases which deal with the social aspects of inventions. Other topics include the U.S. Congress, moral and public welfare requirements, and patentability rules in America. The U.S. Constitution and the nation's Patent and Trademark Office (USPTO) are also examined.

The article discusses the U.S. Patent and Trademark Office, the quality of patents, and the presumption of patentability under American laws as of February 2013. The statutory standards of patentability are addressed, including those which govern novel and nonobvious inventions. U.S. patent reform measures and patent examination procedures are also examined. The requirements for a prima facie case of unpatentability are also assessed.

Failure is the basis of much of scientific progress because it plays a key role in building knowledge. In fact, negative results compose the bulk of knowledge produced in scientific research. This is not a bad thing because failures always produce valuable technical information--whether it be a serendipitous finding, an abundance of unexpected technical data, or simply knowledge that an initial hypothesis was totally wrong. Though some have recognized that the dissemination of negative results has many upsides for science, transforming scientific norms toward disclosure is no easy task. As for patent law, the potentially important role that negative results can play in determining patentability has heretofore been overlooked. This Article addresses these issues by proposing a new medium of disclosure called the null patent. Whereas null patents would lack claims and therefore not confer a right to exclude, they would strongly resemble other patent documents in substantive technical content and bibliographic information--thus making them amenable to technology-based classification, indexing, and open-access searching. This new medium of disclosure has potentially transformative implications for both patent law and science. Providing the Patent Office with ready access to a vast body of technical information would lead to a more thorough examination and, as a consequence, improve patent quality. Providing inventors with access to this information would allow them to gauge patentability ex ante with greater certainty. And because the null patent repository would be freely accessible, it would serve the public good by enriching the public storehouse of knowledge. Finally, null patents would promote broader policy goals shared by both science and patent law--namely, to promote technological progress through the dissemination of knowledge, to coordinate the future development of technology, and to spur innovation. [ABSTRACT FROM AUTHOR]

The article discusses patent applications and the U.S. Patent and Trademark Office (USPTO) as of October 2011, focusing on a call for patent reform in the wake of concerns over the quality of some of the patents being issued by the USPTO, including patents issued for allegedly worthless inventions on items which promote unachievable results. The U.S. Patent Act and its § 101 provision for the rejection of non-useful inventions is addressed.

The article discusses U.S. patent law as of September 2011 and the author's view that the patent laws need to evolve to encompass the ever-growing changes within the scientific and technical communities regarding atypical inventions. The author examines various aspects of the U.S. patent laws, including the structural bias of the U.S. patent laws against accidental inventions, a proposed alternative legal framework to resolve any disparities, and the process of patenting an impossible invention

An introduction is presented in which the author discusses various reports within the issue which address America's patent law system, the disclosure of patent-related technical information to the public, and the U.S. Supreme Court's rulings in cases dealing with patent disclosures and inventions.

A bedrock principle of patent law is that an applicant must sufficiently disclose the invention in exchange for the right to exclude. Essential to the disclosure requirement is enablement, which compels a patent applicant to enable a person having ordinary skill in the art (PHOSITA) to make and use the full scope of the claimed invention without undue experimentation. Enablement may be insufficient when the applicant claims an invention broadly with a dearth of supporting data or examples. This is problematic in unpredictable fields like chemistry because a PHOSITA often needs a specific and detailed teaching in order to practice the full scope of the claimed invention. Yet the current patent examination framework allows a patentee to obtain a broad claim encompassing millions of compounds enabled by a trivial amount of supporting disclosure. Such broad patent scope can have a chilling effect on other scientists who are seeking to make and use the claimed invention while the inventor does not know how to do so. In an effort to bridge the disconnect between patent law and the experimental sciences, I propose a new approach to establishing the prima facie case of nonenablement for patent applications in the unpredictable arts. After examining the PHOSITA's role in the enablement analysis, I elucidate the problems with the current framework for the enablement inquiry, propose a new framework, and explain why it mitigates problems with the current framework. I conclude by discussing some of the concerns raised by the proposed framework and explain how the proposed approach mitigates these concerns. [ABSTRACT FROM AUTHOR]

The rhenium(I) dinitrogen complex (PhMe2P)4ClRe(N2) reacts with [Mo2(S2CNEt2)6](OTf)2 (6) to give the N2-bridged complex [(PhMe2P)4ClRe(μ-N2)Mo(S2CNEt2)3]OTf ([7]OTf). Spectroscopic (νNN = 1818 cm-1) and structural data [dNN = 1.167(6) Å] indicate that the bridging N2 moiety in 7+ is slightly activated relative to free N2 or to the mononuclear Re complex. However, the complex is stable with respect to N2 cleavage. The putative products of such a cleavage, the known (Et2NCS2)3Mo(N) (5) and the newly prepared [(PhMe2P)4ClRe(N)]OTf ([9]OTf), are stable compounds that do not react with each other to give products of nitride coupling. Thus, the failure of 7+ to interconvert with 5 and 9+ is due not to the thermodynamic stability of the NN bond but rather to kinetic factors that disfavor N2 cleavage and nitride coupling. Implications of this result for using polar effects to facilitate N2 cleavage to nitrides as a strategy for nitrogen fixation are discussed. [ABSTRACT FROM AUTHOR]

Examines the polar effects in nitride coupling reactions. Reaction of nucleophilic molybdenum nitride with electrophilic sodium nitride complex; Production of a molecular nitrogen; Formation of an osmium thionitrosyl complex.

Examines the halide abstraction of molybdenum tris(dithiocarbamato) chloride complexes. Determination of the crystallographical structure of diethyldithiocarbamato complex; Components of the dimer; Presence of competing dissociative and associative substitution pathways.

Describes the preparation of the rhenium(V) complex [(HCpz3)ReOCl2]+, the tris(pyrazolyl)methane analogue of the know tris-(pyrazolyl)borate complex (HBpz3)ReOCl2. Indication of a pronounced charge effect, with the cationic species being reduced by PPh3 about 1000 times faster than its neutral analogue; Dissociative ligand substitution.