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Abstract:
In two recent cases, Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court unanimously approved of the modern doctrine of equivalents articulated in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950). The Court also extended equivalents protection to later-arising technologies and imperfectly reconciled the modern doctrine with the doctrine of prosecution history estoppel for amended claims. The Court's new doctrine conflicts with historic implied-disclaimer standards. The U.S. Court of Appeals for the Federal Circuit has further revised the Supreme Court's reconciliation of these doctrines for amended claims, and has adopted different standards for claim construction and argument estoppel that conflict with the Court's new Festo standards. This article - forthcoming in the Federal Circuit Bar Journal - describes how the modern doctrine of equivalents operates and how it relates to prosecution history estoppel in light of the recent Supreme Court and Federal Circuit decisions. The article also discusses the differences between dedication of disclosed subject matter and implied disclaimer of equivalents and describes the conflicts that have been created among the claim scope, estoppel, and implied disclaimer doctrines. In particular, the article explains how the modern doctrine extends patent protection to later-arising equivalent technologies that the applicant could not have claimed and thus to which the modern doctrine should not apply.

This article is the first in a series of articles relating to the doctrine of equivalents. These articles seek to encourage and to set the context for future discussions of abolishing the modern doctrine of equivalents and of claiming later-arising technologies. The second article, to be published in two parts in the Journal of the Patent and Trademark Office Society, discusses the historic doctrine of equivalents, the Supreme Court's radical reshaping of the doctrine in Graver Tank, and historic limits on claiming later-arising technologies. The second article explains how the modern doctrine of equivalents conflicts with the requirement for distinct claims adopted in the 1870 Patent Act, was adopted by the Supreme Court without statutory support, and was neither codified nor impliedly ratified by Congress in the 1952 Patent Act. The third article, to be published in the Berkeley Technology Law Journal, discusses the lack of theoretical justification for the modern doctrine of equivalents, the social costs that it imposes, and the doctrinal complexity that it creates. The third article argues that the doctrine of equivalents should be restored to its historic form, limiting patent scope to the interpreted language of patent claims, and that the Supreme Court or Congress may need to impose additional limits on the ability to claim later-arising technologies in order to effectuate the Constitutional purpose of promoting progress.

patents, doctrine of equivalents, claim scope, foreseeability, predictability, disclaimer, dedication, later-arising technology

Abstract:
This article argues that the Supreme Court or Congress should abolish from patent law the modern doctrine of equivalents articulated in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), and extended to later-arising technological equivalents in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). The modern doctrine of equivalents lacks theoretical justification, imposes high costs on society and likely impedes innovation, and needlessly conflicts with other patent law doctrines and complicates patent law procedures. These adverse effects are cumulatively imposed over time in regard to every issued and litigated patent for its entire term. The doctrine of equivalents should be restored to its historic form, limiting patent protection to the scope of application of the construed language of patent claims. Any residual fairness concerns would be addressed better by non-literally interpreting claim language than by applying the modern doctrine. The Supreme Court or Congress also may need to impose additional limits on the ability to claim later-arising technologies, in order for patent law to serve its Constitutional purpose of promoting progress.

This article is the third in a series of articles relating to the doctrine of equivalents. These articles seek to encourage and to set the context for future discussions of abolishing the modern doctrine of equivalents and of claiming later-arising technologies. The first article, to be published in the Federal Circuit Bar Journal, describes conflicts among the modern doctrine and prosecution history estoppel and additional implied disclaimer and claim scope doctrines. It explains how the modern doctrine improperly extends patent protection to equivalents that could not validly be claimed. The second article, to be published in two parts in the Journal of the Patent and Trademark Office Society, discusses the historic doctrine of equivalents, the Supreme Court's radical reshaping of the doctrine in Graver Tank, and historic limits on claiming later-arising technologies. The second article explains how the modern doctrine of equivalents conflicts with the requirement for distinct claims adopted in the 1870 Patent Act, was adopted by the Supreme Court without statutory support, and was neither codified nor impliedly ratified by Congress in the 1952 Patent Act.

Patents, doctrine of equivalents, claim scope, later-arising technology, fairness and efficiency

Abstract:
From its beginning, American patent law has extended patent protection beyond the explicitly disclosed examples of an invention described in a patent specification, applying patents to some range of equivalent substituted technologies. From the middle of the 19th Century until 1950, the Supreme Court was careful to limit this historic doctrine of equivalents to products or processes that physically embody the construed language of a patent's claims. In Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), the Supreme Court radically altered the nature of the doctrine of equivalents, expanding patent protection beyond the scope of application of construed claim language in order to protect the value of patents from alleged fraud. In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court extended patent protection under this modern doctrine to later-arising technologies not contemplated by the inventor. As discussed in Part I of this article - forthcoming in the Journal of the Patent and Trademark Office Society - the Supreme Court in 1853 stated that patent protection was limited to the scope of application of construed claim language. In the 1870 Patent Act, Congress codified a "distinct claiming" requirement that should have foreclosed the modern doctrine of equivalents. As discussed in Part II - also forthcoming in the Journal of the Patent and Trademark Office Society - until Graver Tank, the Supreme Court consistently limited the doctrine of equivalents under the 1870 Patent Act to the scope of application of construed claim language. In the 1952 Patent Act, Congress neither codified nor impliedly ratified the modern doctrine of equivalents, and did not extend it to later-arising technologies.

This article is the second in a series of articles relating to the doctrine of equivalents. These articles seek to encourage and to set the context for future discussions of abolishing the modern doctrine of equivalents and of claiming later-arising technologies. The first article, to be published in the Federal Circuit Bar Journal, describes conflicts among the modern doctrine and prosecution history estoppel and additional implied disclaimer and claim scope doctrines. It explains how the modern doctrine improperly extends patent protection to equivalents that could not validly be claimed. The third article, to be published in the Berkeley Technology Law Journal discusses the lack of theoretical justification for, social costs of, and complexity created by the modern doctrine. It argues that the historic doctrine of equivalents should be restored and that additional limits on claiming later-arising technologies may be needed to promote progress.

Patents, history, doctrine of equivalents, claim scope, later-arising technologies

Abstract:
From its beginning, American patent law has extended patent protection beyond the explicitly disclosed examples of an invention described in a patent specification, applying patents to some range of equivalent substituted technologies. From the middle of the 19th Century until 1950, the Supreme Court was careful to limit this historic doctrine of equivalents to products or processes that physically embody the construed language of a patent's claims. In Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), the Supreme Court radically altered the nature of the doctrine of equivalents, expanding patent protection beyond the scope of application of construed claim language in order to protect the value of patents from alleged fraud. In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), and Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), the Supreme Court extended patent protection under this modern doctrine of equivalents to later-arising technologies not contemplated by the inventor. As discussed in Part I of this article - forthcoming in the Journal of the Patent and Trademark Office Society - the Supreme Court in 1853 stated that patent protection was limited to the scope of application of construed claim language. In the 1870 Patent Act, Congress codified a "distinct claiming" requirement that should have foreclosed the modern doctrine of equivalents. As discussed in Part II - also forthcoming in the Journal of the Patent and Trademark Office Society - until Graver Tank, the Supreme Court consistently limited the doctrine of equivalents under the 1870 Patent Act to the scope of application of construed claim language. In the 1952 Patent Act, Congress neither codified nor impliedly ratified the modern doctrine of equivalents, and did not extend it to later-arising technologies.

This article is the second in a series of articles relating to the doctrine of equivalents. These articles seek to encourage and to set the context for future discussions of abolishing the modern doctrine of equivalents and of claiming later-arising technologies. The first article, to be published in the Federal Circuit Bar Journal, describes conflicts among the modern doctrine and prosecution history estoppel and additional implied disclaimer and claim scope doctrines. It explains how the modern doctrine improperly extends patent protection to equivalents that could not validly be claimed. The third article, to be published in the Berkeley Technology Law Journal discusses the lack of theoretical justification for, social costs of, and complexity created by the modern doctrine. It argues that the historic doctrine of equivalents should be restored and that additional limits on claiming later-arising technologies may be needed to promote progress.

Patents, history, doctrine of equivalents, claim scope, later-arising technology

Abstract:
In Bilcare Ltd. v. M/S The Supreme Industries Ltd., the Delhi High Court affirmed a lower court order vacating ex parte injunctions against an alleged infringer of a patent, rejecting arguments that the patent should be presumed valid even though the patent was the subject of opposition proceedings. In KSR International, Inc. v. Teleflex Co., the U.S. Supreme Court reversed the U.S. Court of Appeals for the Federal Circuit's long-standing interpretation of Section 103 of the Patent Act, i.e., that a challenger seeking to prove invalidity must demonstrate a teaching, suggestion, or motivation to combine prior art references. These cases reveal important insights (within varying procedural and substantive legal contexts) into statutory and judicial presumptions of validity that result from the grant of patents by administrative agencies.

The article explains how such presumptions relate to evidence and proof rather than to the weight accorded to legal judgments. Using Bilcare as a reference, the article suggests that opportunities to present evidence challenging validity should be provided even in preliminary relief contexts, and discusses concerns that arise when validity is challenged in both administrative and judicial systems. The article then describes how the KSR decision adopted substantive legal rules for obviousness that supersede the statutory presumption of validity, shift the burdens of production and persuasion, and (for some inventions) limit the scope of relevant evidence that can be used by patent holders to prove non-obviousness. Finally, the article argues that the U.S. statutory presumption should not continue to be construed by the courts to impose heightened burdens of proving invalidity.

(Forthcoming in Spanish as translated by Carlos Correa, Revista Juridica Argentina La Ley)

patent, patent law, presumption of validity, burden of proof, evidence, rebuttal, administrative procedure, judicial review, invalidity, preliminary relief, obviousness, inventive step

Abstract:
A vigorous discussion exists regarding the need to provide exclusive patent rights as incentives to invent and to disclose so-called "research tools," whether such exclusive rights should apply to all uses and users of patented research tools, and whether exclusive rights to prohibit all uses of research tools would unduly discourage sequential invention. This article summarizes recent developments under U.S. patent laws of particular relevance to the debate over the patenting of research tools, and provides some insights into the practices of various academic sciences, industries, and government agencies regarding the treatment of these important inventions. The article provides a brief history of the experimental use and regulatory approval exceptions to patent infringement liability and summarizes recent cases interpreting the regulatory approval exception and its application to research tool patents subsequent to the Supreme Court's 2005 Merck v. Integra decision. It then surveys empirical studies that examine the practices of scientific researchers and patent holders, and describes recent changes to patenting and licensing policies and behaviors in the public and private sectors. The article reviews and explains recent and proposed changes to the patent system that may affect patents for and use of research tools. Finally, it discusses a variety of alternatives to the experimental use and regulatory approval exceptions that could facilitate access and continued use of patented technologies in scientific research and commercial development.

patent, research tool, experimental use, regulatory approval, compulsory licensing, exceptions and limitations, licensing, enforcement, patentability

Abstract:
In Merck KGaA v. Integra LifeSciences I Ltd., the U.S. Supreme Court adopted a broad construction of the regulatory approval exception to patent law infringement, 35 U.S.C. § 271(e)(1), for experiments conducted at early stages of the pharmaceutical development process. But the Court refused to determine whether that exception applies to patented 'research tools,' and failed to address the relationship of that exception to the historic experimental use exception. The U.S. Court of Appeals for the Federal Circuit has narrowly construed the experimental use exception, but also refused in its recent decision on remand in Merck to resolve these questions, leaving in place substantial disagreements over the nature and scope of the exceptions that were reflected in its earlier decision (which the Supreme Court reversed). In contrast to the substantial uncertainties in American patent law, European experimental and regulatory approval exceptions may be subject to somewhat fewer interpretive uncertainties, particularly in light of decisions such as the U.K. Monsanto and German Klinische Versuche (Clinical Trials) cases. But the nature and scope of the European exceptions nevertheless may be subject to dispute and may vary significantly among jurisdictions based on national legislative decisions to limit or extend patent protection, such as the recent Belgian law adopting an experimental use exception that expressly applies to patented research tools.

Determining the proper scope and application of experimental use and regulatory approval exceptions remains a pressing concern. These exceptions assure that patent laws intended to provide incentives for technological innovation do not unduly restrict scientific research, innovative medical product development and generic product competition. The social harms that can result from narrow exceptions have been emphasized by the Merck decision, by the recent (initial) invalidation of restrictively licensed stem-cell patents, and by empirical studies that suggest that valid patents may (in light of the narrow construction that has been given to the experimental use exception in the U.S.) increasingly delay or restrict scientific research. However, the scope of these exceptions remains highly controversial, particularly for biotechnological research tool inventions for which capital investments and market returns may depend upon the ability to prevent such unlicensed research uses.

In this article, we provide a comparative analysis of the history and current state of the experimental use and regulatory approval exceptions under U.S. and European laws. We explore the application of these exceptions to research tools in academic and commercial sectors, distinguishing research on an invention from research with it, discussing potential differences of treatment among the exclusive patent rights, and noting the arguments for extending or restricting the exceptions. We also discuss relevant constitutional and international treaty-law considerations for legislative and judicial policymaking. We conclude with a dialog that seeks to provide guidance for lawmakers, by identifying relevant questions that will need to be answered in order to resolve the appropriate scope of experimental use and regulatory approval exemptions.

patents, patent law, comparative law, experimental use, regulatory approval, research tools

Abstract:
Clinical legal education provides a powerful methodology for students to learn about the relationships among intellectual property law theories, policies and practices; to encounter the experiences of persons who seek protection or who feel the legal regimes of intellectual property impinging on their ability to engage in educational, creative, innovative and culturally significant work; and to develop as lawyers. We describe in this article our motivations for forming an intellectual property law clinic at the American University Washington College of Law, the goals that we seek to achieve, and the tripartite pedagogical structure that we adopted - (1) a seminar built around a year-long simulation that addresses multiple lawyering skills and legal practice settings, (2) a wide variety of live-client student representations performed under close faculty supervision, and (3) weekly case rounds discussions focusing on public interest issues experienced directly by the students in their representations. We provide an example of a particular student representation that illustrates some of the benefits of our clinical model for teaching students about the public interest and intellectual property law doctrines within the framework of teaching about lawyering. We conclude with our reflections on student experiences and the ability of our clinical program to teach intellectual property law and lawyering in concrete factual and policy contexts, helping students better understand the interaction of theory, doctrine and practice in shaping the meaning and consequences of intellectual property regimes. Students came to understand law and lawyering and to see ways to shape their lives as lawyers, through analyzing and evaluating their responses to the interests of their clients, their actions in meeting the demands of a case, their understanding of the relationships among doctrinal areas, and the connection of their activities to the public interest.

clinical legal education, intellectual property law, public interest

Abstract:
This book chapter examines the developing law in the United States regarding judicial decisions to grant or to deny various forms of equitable injunctive relief and the lessons it may provide to developing countries considering legislative and judicial intellectual property enforcement policies. It focuses on the issues of judicial discretion and the effects of orders to infringers to cease infringing activities, analyzes the recent US Supreme Court decision, eBay, Inc. v. MercExchange, L.L.C., and the effects of that decision on subsequent jurisprudence, places judicial flexibility and discretion in an international context, explaining why the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) does not meaningfully limit domestic legislative and judicial decisions to grant or to deny prospective injunctive relief, and identifies important policy considerations for legislators and judges in other countries, which include the amount of compensation considered to be fair and adequate for different types of intellectual property rights holders; the costs of judicial supervision of injunctive remedies, and concerns that such remedies may excessively empower rights holders; the potential for injunctive remedies to deter legitimate challenges to the validity of asserted rights; and the public interests that warrant authorizing prospective infringement.