• Selected
• Entire List

Abstract:
Although there has been much commentary on patent claim interpretation methodology in general, very little has been written about the unique interpretation approach the Patent Office employs. The courts, starting with the Court of Customs and Patent Appeals and continuing with the Federal Circuit, instruct the Patent Office to give every applied-for claim its 'broadest reasonable interpretation' (BRI) during patent examination. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.

patent, PTO, USPTO, patent office, claim interpretation, claim construction

Abstract:
The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity.

This Article will explore the not-yet-discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope, an aspect of methodologies that the Article identifies as their "claim scope paradigm." Introducing the claim scope paradigm concept is mainly beneficial for two reasons. First, identifying the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process.

patent, claim, claim interpretation, patent scope, patent theory, interpretation

Abstract:
The optimal scope of patent protection is an issue that patent system observers have struggled with for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion over patent scope and patent theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system - framing questions of patent infringement and validity.

This Article will explore the not as of yet discussed relationship between claim interpretation methodology and patent scope. The discussion will focus on how changes in interpretation methodology affect patent scope - an aspect of methodologies the Article identifies as their claim scope paradigm. Introduction of the concept of claim scope paradigm is beneficial for two main reasons. First, the identification of the claim scope paradigm allows different interpretation methodologies to be evaluated as to their impact on the substantive function of patent claims. A claim scope paradigm criterion represents a significant and worthwhile departure from the current standard of certainty used by courts and commentators. Second, recognizing claim scope paradigms facilitates the use of claim interpretation methodology as a patent policy lever. Interpretation methodologies can be highly effective levers, having the ability to inject patent policy at the most basic level of the patent process.

patent, claim, claim interpretation, patent scope, patent theory, interpretation

Abstract:
Patent law is virtually alone in intellectual property (IP) in punishing independent development. To infringe a copyright or trade secret, defendants must copy the protected IP from the plaintiff, directly or indirectly. But patent infringement requires only that the defendant's product falls within the scope of the patent claims. Not only doesn't the defendant need to intend to infringe, but the defendant may be entirely unaware of the patent or the patentee and still face liability.

Nonetheless, copying does play a role in some subsidiary patent doctrines. For example, the question of whether patent damages should be set in order to deter infringement depends critically on whether infringers are in fact aware they are infringing, or at least that they are using the plaintiff's technology. Copying - or at least intent to infringe - is also an element of claims for indirect infringement. The definition of "willful infringement" also turns on the question of culpability, at least in the popular understanding of that term. More significantly, the rhetoric of patent law (and of IP law more generally) often seems to presuppose that defendants in patent cases are in fact engaged in copying. Similarly, the outcome of public policy debates over patent reform may well turn on the perception of patent infringers as either bad actors or as innocent businesspeople who accidentally ran afoul of a patent.

Unfortunately, no one seems to know whether patent infringement defendants are in fact unscrupulous copyists or independent developers. In this paper, we seek to answer that question. Because copying is not an element of any patent cause of action, courts do not normally make explicit findings as to whether defendants have copied. Instead, we turn to a variety of proxies to try to identify the subset of cases in which copying is alleged or proven. We look both at the allegations made in a random sample of complaints and at the treatment of copying in recent reported decisions. We find that a surprisingly small percentage of patent cases involve even allegations of copying, much less proof of copying. Copying in patent law seems to be the exception, not the rule.

Abstract:
The compulsory licensing of patents is a contentious issue in international patent law. The dispute over whether and when a government may issue a compulsory license has focused, in part, on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Recently, the question of allowed unauthorized use of a patented invention has also arisen under United States patent law in a unique context. In its 2006 decision in eBay Inc. v. MercExchange L.L.C., the Supreme Court of the United States decided that courts must use a four-factor equitable test to decide whether an injunction should be awarded in patent cases. As a result of this opinion, injunctions have been denied by United States district courts in at least seven cases, allowing the infringer to continuing practicing the patented technology without the patentee's consent.

The reason the eBay decision and its application are mentioned in the same context as TRIPS and compulsory licensing is that one of the arguments before the Supreme Court, advanced by the United States and others, is that a move away from automatic permanent injunctions potentially puts the United States in noncompliance. The Supreme Court did not address this question. But with the denial of injunctions and resulting unauthorized use due to eBay, the question is ripe for answering.

This Chapter does just that, first placing the eBay decision in the context of compulsory licensing and then evaluating the decision under TRIPS. The Chapter evaluates the effect of an injunction denial pursuant to eBay both under the exceptions in TRIPS Articles 30 and 31 and the remedial provision - Article 44. While this discussion is important on a micro-level, the discussion also has macro-ramifications, potentially prompting a shift in the overall discourse concerning compulsory licensing and TRIPS. Furthermore, eBay may identify an optimal method for Member States to address social objectives by giving their judiciaries the flexibility to allow unauthorized uses on a case-by-case basis. This approach may protect the public's interest while doing minimal violence to the patentee's rights and ability to recoup research and development costs.

TRIPS, patents, injunctions, international law, remedies, eBay, intellectual property, compulsory licensing

Abstract:
The Federal Circuit's recent nonobviousness jurisprudence has been the subject of much criticism. Reports from the Federal Trade Commission and the National Research Council and a pending petition for certiorari to the Supreme Court all conclude that the Federal Circuit has improperly relaxed the nonobviousness standard. Most of this criticism focuses on the Federal Circuit's implementation of part of the nonobviousness inquiry - the suggestion test. The suggestion test queries whether a suggestion to make the invention existed before the invention's creation. The Federal Circuit allegedly requires a suggestion to come solely from prior art references. The court ignores other evidence of undocumented suggestions that may exist in the knowledge of those skilled in the relevant technology or the nature of the problem being solved.

This Article tests the validity of this criticism and finds that the Federal Circuit has not narrowed the suggestion test. By taking a novel look at the jurisprudence, the Article concludes that, instead, the court has adopted an evidentiary-like aspect to the suggestion test. Those cases where it appears the court is focusing only on the prior art are actually instances where the court is exercising an evidentiary aspect of the suggestion test. The suggestion test's rule of evidence excludes undocumented evidence of suggestion that does not contain the requisite detail and analysis. This rule of evidence is tailored to adjust the level of detail and analysis required to correspond to the complexity of the technology at issue. As a result, the suggestion test's rule of evidence helps to reduce overvaluation of suggestion evidence and the resulting, incorrect obviousness determinations. However, the rule may produce some erroneous nonobviousness determinations of its own, particularly at the United States Patent and Trademark Office, and thus should be relaxed in this context. Finally, this use of an evidentiary lens to look at, and evaluate, patent doctrine has application in patent law far beyond nonobviousness and the suggestion test.

patents, evidence, nonobviousness, obviousness, suggestion test

Abstract:
This Article reports the results of a much needed study on the United States Court of Appeals for the Federal Circuit's nonobviousness jurisprudence. The study takes a look at all Federal Circuit cases over a four year period considering the nonobviousness of a patent claim. The study first takes a macro-level look at collected data, investigating whether the Federal Circuit has lowered the nonobviousness requirement. The study also takes a micro-level look at the reasoning for the court's findings, focusing on the impact of the suggestion test on the court's nonobviousness analysis. The results of the macro-level study provide at most a weak inference that the nonobviousness requirement is still strong, particularly in the context of appeals from the United States Patent and Trademark Office (USPTO). The micro-level study, in contrast, provides strong evidence that the suggestion test plays a fairly small role in the court's nonobviousness jurisprudence.

These findings are significant for two reasons. First, two recent reports - one by the Federal Trade Commission in 2003 and the other by the National Research Council in 2004 - and briefing in a currently pending Supreme Court case, KSR International Co. v. Teleflex, Inc., all come to opposite conclusions. They assert that the Federal Circuit lowered the nonobviousness requirement and point to the Federal Circuit's suggestion test as the reason for this bias towards findings of nonobvious. Second, the study reported in this Article is one of the first to empirically assess these recent claims about the Federal Circuit's jurisprudence. Questions about the Federal Circuit's nonobviousness case law are currently being considered by the Supreme Court in KSR and will be considered by Congress, the USPTO, and court in the future, and this Article provides valuable data to inform the Court and future decision-makers.

patents, obvious, nonobvious, obviousness, nonobviousness, federal circuit

Abstract:
The concept of invention is crucial to patent law. Inventions of patentable quality are what the patent system is trying to encourage. And in order to provide this incentive to produce such inventions, the patent system must provide protection for the invention. Furthermore, everyone in the patent system must know the contours of the protected invention to make determinations on issues of the invention's infringement and validity. The problem the patent system runs into is that inventions are difficult to define - this difficulty stemming in part from the intangible nature of inventions. Inventions are essentially ideas, information, concepts. While an invention has physical manifestations, these are merely examples of the invention. An invention's inherent lack of physicality, lack of thingness, makes it tough for any observer to comprehend.

Patent law, therefore, encounters an information cost problem. Everyone in the patent system needs information about the invention, but the invention's intangibleness makes this information costly to produce, collect, and comprehend. Patent law responds by enforcing certain information producing rules. These rules are located in 35 U.S.C. section 112 and dictate the creation of the patent document itself. The onerous is placed on the patentee to provide a specification and one or more claims for the whole world to see. The specification must include a description of the invention, how to make and use the invention, and any best way of practicing the invention known to the inventor. The patent must also include one or more claims that specify the borders of the invention the patentee wishes to protect.

These information producing rules do not completely rectify the information cost problem in defining the edges of patent protection. The patent claim, while meant to inform everyone about the boundaries of the grant of exclusivity, must be interpreted to be of any use. Claim interpretation places the claims in context to resolve a given dispute. The method of claim interpretation presents information cost issues of its own - costs associated with the production, collection, and processing of information in order to define the exact area of exclusivity given by the patent claim. And the lower the information costs incurred during this process, the easier it is for any actor in the patent system to comprehend the most crucial aspect of a patent - its scope of exclusivity.

This Article addresses the information cost issues presented by the process of interpreting the claimed invention. This Article takes a specific look at the information costs generated when using two different information tools - the specification and external definitional sources such as dictionaries. This Article concludes that full use of the specification early in the claim interpretation process minimizes information costs. The information in the specification is already tailored to and in context with the claim under interpretation. In addition, the specification provides invention-specific information in a low cost fashion and includes information that caters to an interpreter's familiarity and ease with understanding tangible things. In contrast, a claim interpretation methodology that employs a heavy presumption in favor of external definitional sources introduces information costs. The selection and processing of these definitional sources can be extremely costly. Furthermore, such an approach squanders the cost savings gained by using the whole specification early in the interpretation process. This Article further concludes that any interpretation methodology should consider the information costs it imposes on both the patentee and any patent observer, keeping in mind the invention-specific information patent law already requires to be produced.

Patent, Claim, Claim Interpretation, Claim Construction, Information Costs, Specification, Methodology

Abstract:
Since its inception, the inequitable conduct doctrine, which requires the inventor to disclose to the Patent Office all information relevant to the patentability of the invention at issue, has received tremendous attention from the judiciary, the Patent Office, the bar, and scholars. Many scholars have also written on the Patent Office's failure to properly exam patent applications and the resulting negative impact on society from the Office's issuance of "bad patents." Surprisingly, however, no one has fully linked these two discussions and, in turn, performed a fundamental, theoretical analysis of the inequitable conduct doctrine in light of the utilitarian theory that underlies American patent law. This Article fills this gap by developing such a conceptual framework with which to evaluate the inequitable conduct doctrine and identify its capacity to reform the patent system. The Article then applies this framework to suggest reforms that enhance the doctrine's ability to improve patent quality, while restraining the inherent tendency to overcomply by overloading the Patent Office with information.

This new conceptual framework is important in two ways. First, it has immediate use in both evaluating proposed changes to the doctrine, such as those in the pending Patent Reform Act, and suggesting others. Second, the framework is a building block to be used in future scholarship on the inequitable conduct doctrine and, more generally, the ever-present movement to reform the patent system.

inequitable conduct, patent law, patent reform, patent quality, over compensation, USPTO, Patent Office

Abstract:
The United States Supreme Court recently decided, in Holmes Group, Inc. v. Vornado Circulation Systems, Inc., that the United States Court of Appeals for the Federal Circuit's exclusive appellate jurisdiction over a case could not rest solely on a counterclaim for patent infringement. This decision represents a significant departure from over ten years of established Federal Circuit patent law that even if the only patent claim present in a case was a counterclaim, the Federal Circuit still had appellate jurisdiction over the case. Federal Circuit jurisdiction over such cases made sense, considering the Federal Circuit was created by Congress to be the exclusive venue for patent appeals. In reaction to the Supreme Court's decision in Holmes, many commentators have discussed this change in the Federal Circuit's appellate jurisdiction and its effects on patent law.

Notably, none of these commentators have discussed the fundamental holding at the core of the Court's decision - that federal law counterclaims cannot form the sole basis for federal question jurisdiction. This rule of law, arguably, is a natural application of the already established well-pleaded complaint rule. However, the Holmes decision's revisiting of how one determines arising under jurisdiction presents a much needed opportunity to reexamine how the contours of federal question jurisdiction is determined. Specifically, the well-pleaded complaint rule and its application to federal law counterclaims, which lay at the base of the Holmes decision, should be reconsidered. Such a discussion is needed, considering that regional circuit courts and district courts, before and after Holmes, have had to determine the proper scope of federal question jurisdiction in cases where the only federal law claim is presented in a counterclaim. Even a state supreme court, after Holmes, has discussed the ramifications of well-pleaded complaint rule as applied to counterclaims on the interrelationship between federal and state jurisdiction over a federal claim.

This Article examines the well-pleaded complaint rule as applied to federal law counterclaims. The Supreme Court's decision in Holmes is used as a springboard to discuss the well-pleaded complaint rule, counterclaims, and federal question jurisdiction, going beyond the Holmes decision's discussion of the Federal Circuit and patent law. The Article evaluates the well-pleaded complaint rules impact on a federal district court's original federal question jurisdiction and removal jurisdiction over cases where the only federal law claim is presented in a counterclaim. Implications for certain areas of exclusive federal jurisdiction are also examined. Finally, the policy consequences of excluding counterclaims from the federal question analysis are considered, and the Article suggests potential statutory responses.

Jurisdiction, Federal Jurisdiction, Counterclaims, Arising Under, Well-Pleaded Complaint, Holmes, Litigation

Abstract:
The patent law doctrine that allows patentees to gain exclusivity beyond what they literally claim in their patent - termed the doctrine of equivalents - has received a significant amount of attention as of late from both courts and scholars. Of particular emphasis in this recent focus on the doctrine of equivalents is the ability for patentees to gain exclusivity over equivalent after-arising technologies - technologies that develop after the patent's filing date.

With this recent emphasis has come questions regarding the propriety of after-arising equivalents protection in patent law. The debate focuses on two main questions. First, whether the doctrine of equivalents is needed in order to actually exclude those who use after-arising technologies to practice the invention. Some contend that a patent claim drafter cannot anticipate and account for later developed substitutes for a claim element, and therefore the doctrine of equivalents is needed. Others suggest that the literal scope of the patent's claims - the traditional metric of the patent's scope of exclusivity - can provide the patentee with protection against later developed technologies. Second, even if the doctrine is the only mechanism through which the patentee can gain protection for after-arising equivalents, questions still arise as to whether the patent system should provide such protection. Allowing the patentee to exclude the use of technology developed after her invention can be seen as giving the patentee too much protection and providing a disincentive for subsequent inventions. On the other hand, after-arising equivalents protection may be crucial to providing the patentee with adequate patent protection and maintaining the incentive to invent.

This Article takes a critical look at after-arising equivalents protection and concludes that such protection is needed to capture after-arising technologies but should be tailored to rapidly developing cumulative technology industries. In particular, tailoring protection in such way maintains the incentive to invent by giving the potential inventor some assurance that she can maintain her market position long enough to recoup her research and development costs. Furthermore, by focusing protection on rapidly developing industries, the deterrent effects on follow-on inventions are minimized and a self-correcting mechanism is introduced.

Patents, claims, claim scope, equivalents, doctrine of equivalents, after-arising technologies, later developed technology, tailoring, invention, innovation, technology

Abstract:
Congress created the United States Court of Appeals for the Federal Circuit in 1982, in part, to establish nationwide uniformity in patent law. The law governing the Federal Circuit's appellate jurisdiction was recently addressed by the Supreme Court's decision in Holmes Group, Inc. v. Vornado Circulation Systems, Inc. The Court held in Holmes that the Federal Circuit's appellate jurisdiction is governed by the well pleaded complaint rule and specifically rejected counterclaims as a vehicle to vesting appellate jurisdiction with the Federal Circuit. The Supreme Court's decision opens the door for claims of patent infringement under 35 U.S.C. Section 271, and other patent claims, to be reviewed by regional circuits, instead of the Federal Circuit. The impact of Holmes will also be felt with respect to a federal district court's removal jurisdiction and exclusive jurisdiction over patent counterclaims. The door is clearly open for the development of substantive patent law outside of the hands of the Federal Circuit and, perhaps even more importantly, outside of the federal courts. The very uniformity Congress attempted to introduce through its creation of the Federal Circuit and a federal patent law system may become undone by the Supreme Court's decision in Holmes. This Article addresses the potential non-uniformity in patent law Holmes may create and concludes that the potential for such a development is real. To prevent these situations from occurring, the effect of Holmes on the Federal Circuit's appellate jurisdiction and federal courts' jurisdiction must be limited and regional circuits and state courts must look to the Federal Circuit for guidance on patent law issues. This Article concludes that the only real solution is a legislative response, with Congress amending Section 1338 in such a way to return the Federal Circuit's appellate jurisdiction, and federal district court's original and exclusive jurisdiction, to their pre-Holmes form.

Patent, Federal Circuit, Intellectual Property, Jurisdiction, Federal Courts, Civil Procedure

Abstract:
Intellectual property law exists because exclusive private rights provide an incentive to innovate. This is the upside of intellectual property: the production of valuable goods that society would otherwise never see. In turn, too much intellectual property protection is typically viewed as counterproductive, as too much control in the hands of private rightsholders can create more artificial scarcity than the incentive effect warrants. Such overprotection not only denies the public access to the innovation without a corresponding gain in incentive, but it also retards future innovation by making it more difficult for follow-on innovators to make use of existing products. This is the downside of intellectual property: reduced production and impeded innovation.

This article turns the traditional discussion on its head and shows that intellectual property's putative costs can actually be benefits. It does so by questioning one of the discussion's underlying assumptions: that innovation is always good. This assumption is usually valid, but not always; there are certain industries that society may prefer to suppress. If intellectual property reduces production and impedes innovation in those industries, then its protection would be a net gain for society. We examine a handful of such industries (tax planning, pornography, and others), demonstrate that keeping (or bringing) them under the intellectual property umbrella may be the best way to stifle them - an approach that runs contrary to the scholarly consensus - and thereby describe the circumstances under which intellectual property's downside can become society's upside.

patent, copyright, intellectual property, tax, biotechnology, fashion, pornography, monopoly, innovation

Abstract:
There is a definite economics literature analogizing patents to real options. A patent is like a real option, economists say, because it allows its owner to choose between exclusively commercializing the patented invention sometime during the patent term or foregoing commercialization altogether. The legal literature is a bit behind in using this analogy, with only a handful of scholars exploring the connection.

This Article continues the use of real options in patent law by taking a step back. The Article lays a foundation for future discussions in this area by describing in detail how patents are like real options. Specifically, the Article identifies the particular patent doctrines that make up the common components of a real option - the option price, the exercise price, the expiration date, and the value of the underlying asset. From here, the Article discusses some implications of using real options theory in patent law. Real option analysis allows both patent problems and patent solutions to be examined in terms of macro patent elements - elements defined by the operational components of a real option. Real options theory also facilitates viewing patents the same way industry views research and development projects - as real options. Finally, there is promise in the underlying enterprise - using the concept of real options to articulate a new theory of the patent system.

patents, real options

Abstract:
This Article questions the conventional wisdom that the patent system should continue to encourage "early filing" of patent applications-filing at the beginning stages of technological development. The current thinking regarding early filing fails to account for the lack of technical and market information available about the invention at the early stages of development. A "file early, file often" mentality is instilled in inventors, exacerbating such systemic patent problems as too many patent applications, too many patents, underdevelopment of patented technology, increased assertion of patent rights, and fuzzy patent boundaries to name a few. The Article suggests that in response patent law should require the invention be actually reduced to practice before examination-not a full-blow commercialization, but a real-world embodiment that demonstrates the invention works for its intended purpose and the inventor has proceed further down the development time line.

patent, early filing, prospect theory

Abstract:
The individual inventor motif has been part of American patent law since its inception. The question is whether the recent patent troll hunt has damaged the individual inventor's image and, in turn, caused Congress, the United States Patent and Trademark Office (USPTO), and the courts to not be as concerned with patent law's impact on the small inventor. This Article explores whether there has been an attitude change by looking at various sources such as congressional statements and testimony in discussions of the recent proposed patent reform legislation, the USPTO's response to comments on two recently proposed sets of patent rules, and recent Supreme Court patent decisions. These sources indicate that the rhetoric of the motif has remained unchanged, but its substantive impact is essentially nil. This investigation also provides a broader insight into the various governmental institutions' roles in patent law.

patent, patent trolls, individual inventor, independent inventor, patent rhetoric, patent reform