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Abstract:
This essay provides a brief defense of the much maligned "written description" requirement in patent law. Many argue that there is no such requirement, and that a patent specification that enables a person having ordinary skill in the art (the PHOSITA) to make and use the invention is sufficient, even if the specification contains no description of the invention. This essay briefly describes the dispute, and then raises an important but under-theorized argument in favor of a separate written description requirement. The essay accepts the persuasive grammatical reading of the statute proposed by opponents of a separate written description requirement. This reading suggests that a patent disclosure is sufficient so long as the PHOSITA can practice the invention. However, while enablement is necessary to satisfy Section 112, it is not sufficient. Even if the specification enables a PHOSITA to practice the invention, the applicant is not relieved of the obligation to identify the invention. Instead, the specification must contain a “description of the invention” even if such description would only serve to reinforce other parts of the disclosure that enable one to make and use the invention. This reading of the statute is consistent with the grammatical breakdown of Section 112. It is also the preferred interpretation, because a description of the invention fulfills an important purpose in the patent system. Finally, the essay considers the Ariad v. Eli Lilly case currently pending before the Federal Circuit and concludes, perhaps surprisingly, that under the vision of written description presented in this essay the claims at issue may well be described.

patent, written description, enablement, invention, conception, priority

Abstract:
Trade secrets are arguably the most important and most litigated form of intellectual property, yet very little has been written that justifies their existence, perhaps because they differ so much from other forms of intellectual property. This article explores the history of trade secret law in the United States and examines why it is that every state has opted to protect secret information, even though such protection is antithetical to the policies of access associated with patent law and non-protection of 'facts' associated with copyright law.

In this article, I examine four potential ways to justify trade secret law. First, I consider property rights. I propose a different way to look at whether or not trade secrets are property, and conclude that further examination of the underlying bundle of rights is necessary for normative justification.

I then provide and respond to criticism of three independent normative justifications for trade secret law's bundle of rights: economic justifications, philosophical justifications, and populist justifications. Contrary to other areas of intellectual property law, none of these includes an incentive to innovate as a primary feature; instead, I expand on prior economic analysis that justifies trade secrets by examining the marginal benefits of the law, answering criticism of past detractors, and considering remedies provided by the law.

trade secrets, economic analysis, intellectual property, copyright, patent, reverse engineering, independent devlopment

Abstract:
The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule - that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentabilty - namely category, utility, novelty, non-obviousness, and specification - then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena.

The primary virtue of the proposed rule is that it provides a more rigorous and consistent doctrinal framework for determining patentability. A close analysis of the Supreme Court's historical subject matter opinions provides evidence in support of this virtue. In each case analyzed, the Court was actually concerned with the underlying patentability of the particular claim at issue - problems such as obviousness or insufficient disclosure - when its opinions announced broad subject matter statements.

The proposed rule may give pause to some who favor non-expansion and even contraction in patent protection; they might fear that the rule will expand the types of discoveries considered patentable. This article, however, demonstrates that abandoning subject matter restrictions in favor of rigorous application of patentability requirements will not necessarily lead to more bad patents, and in fact may reduce the number of discoveries that are currently considered patentable. Furthermore, the proposed rule does not foreclose Congressional restriction of patentable subject matter in a narrowly tailored and consistently applicable manner based on actual evidence of harm caused by particular types of patents. However, the judiciary should not limit the subject matter of all patents based on any single case at bar, and certainly not without concrete evidence of the supposed harm that such a patent may allegedly cause.

patent, patent law, patentable subject matter, DNA, genes, Bilski, mental steps, products of nature, metabolite, comiskey, nuijten

Abstract:
Patents often contain technical information intertwined with legal meaning, and inventions are often difficult to describe in words. Despite complex interpretive rules, patent law has failed in one of its essential missions - giving those who need to read patents the ability to understand the scope of a patent's claims in a consistent and predictable manner. As a result, those who rely on patents - patentees, potential and actual licensees, potential and actual defendants, future patent applicants, courts, and even the Patent and Trademark Office - may find it difficult or impossible to discern the metes and bounds of any particular patent at any particular time.

This article examines a root cause of this failing: patents are interpreted in different ways during the application and enforcement processes. When someone applies for a patent, the patent examiner considers the 'broadest reasonable construction' of the claims regardless of how one skilled in the art might construe them. During litigation, the court considers how one skilled in the art would interpret the claims. The article considers why different interpretive rules are applied, whether the rules are applied as intended, and the problems associated with using two different rules.

Finally, the article suggests that patent claims should have the same meaning at all times, namely the standard used in litigation: patents should be interpreted as one skilled in the art might interpret them. The article then suggests additional policies designed to help achieve the goals ascribed to the 'broadest reasonable construction' standard: rejection of poorly drafted patent specifications, the use of disclaimers and definitions to clarify vague claims, and a relaxing of the evidence required to find a patent claim obvious.

patent, claim, construction, interpretation, broadest reasonable construction, PHOSITA, skill in the art, Phillips, Markman

Abstract:
In virtual worlds, where 20 million people spend $200 million each year, rules of life are governed by contract, and three-party transactions are ubiquitous; every exchange of virtual cash, property, sound, pictures, and even conversation introduces a third party into the contractual relationship between user and virtual-world provider.

Whenever a contract affects a non-party, the third-party beneficiary ("TPB") doctrine might apply; to date, however, the practical and theoretical boundaries of this important doctrine's application to virtual worlds have yet to be explored, perhaps because of an overly narrow doctrinal conception.

Many states have loosened TPB requirements somewhat; most have adopted an approach similar to that of the Second Restatement of Contracts, which looks at the totality of circumstances to determine whether a third party can enforce the terms of a contract. As a result, third-party beneficiary rights are judicially cognizable claims that will impact virtual world contracting and interacting. Though its application is not universal, third-party beneficiary enforcement envisioned by the Restatement is an important, and in some cases the only, way to vindicate user rights in the hub and spoke contractual relationships between a virtual world provider and its many users. This essay introduces the TPB concept to virtual worlds in three ways. First, it describes how third-party interactions permeate virtual worlds. Second, it provides a general framework for applying TPB doctrine to virtual world user agreements. Third, it applies that framework to particular recurring problems that virtual world users face.

virtual worlds, third-party beneficiaries, contract, Restatement of Contracts

Abstract:
Eliminating bad patents is supposed to be a good thing, and so federal law allows any interested party to challenge a patent's validity almost any time. But the law goes a step further than merely conferring broad challenge rights. It also makes them nearly impossible to contract away. Instead, federal law voids any agreement not to challenge a patent. While a contract ordinarily signifies a final resolution of all issues covered by its terms, no such peace exists in patent licensing.

This inalienability of patent challenge rights comes at a cost, a cost borne by many patent licensees and their downstream customers. Patent holders quite rationally increase the royalties licensees must pay to offset their costs if the patent is challenged: litigation costs and loss of royalties if the patent is invalidated. Licensees, it follows, might seek a lower price by agreeing not to challenge the licensed patent, but the law will not allow them to do so.

The result is royalty inflation; the policy favoring elimination of bad patents costs every licensee by providing an inalienable challenge right that might never be exercised. This cost is a tax of sorts, what this article calls the "patent challenge tax." In addition to inflated royalties, the tax causes trickle-down costs to consumers and disincentives to create and license patented technology.

This article develops an economic model that dissects the components of the patent challenge tax, examines each component's consequences, and informs the effectiveness of various strategies that might be used to reduce the tax.

Part I of this article explains the policy at the core of the model: no patent license is ever final, allowing any licensee to sue to void the license at any time. Part II introduces and explores the patent challenge tax and its role in royalty inflation, and Appendix I fully derives the model. Part III analyzes a variety of licensing signal strategies, and considers each strategy's effectiveness, legality, and practicality. The article concludes by highlighting some of the broader policy issues associated with the tax and its components.

patent, licensing, medimmune, deadweight loss, tax

Abstract:
The basic economic goal of copyright law is to balance an author's incentive to create with his or her ability to build on prior work in order to maximize social wealth. This balance is extremely important for computer software. On the one hand, software is often expensive to create and companies therefore need protection in order to recoup their investment. On the other hand, software is often expensive to create and companies can save costs by reusing pre-existing work. Quite often, the same companies that want to protect their software also want to use pre-existing work.

As a result of the competing costs and benefits of copyright protection and the general complexity of computer software, the state of copyright law with respect to computer software has been in flux since the early 1980's and is still not settled. It appears that federal courts have been able to determine efficient economic outcomes based on the cases before them, but they have been unable to settle on a rule that definitively determines how much reuse to allow in each case.

How should a court go about deciding when reuse should and should not be allowed? While case law and traditional economic analysis provide general solutions, they do not guide courts in specific cases. This paper analyzes the problem that courts face in computer software copyright cases, presents an economic model that describes this problem, and presents a set of economic based factors that can be used by courts to obtain efficient solutions in each case.

copyright, economics, computer, software, source code, reuse, whelan, borland, law

Abstract:
This article, which follows a presentation at the West Virginia Law Review Digital Entrepreneurship Symposium, is the first to consider whether virtual worlds provide a rule of law that sets expectations for virtual business. Many consider the rule of law a catalyst for economic development, and there is reason to believe that it will be equally important in virtual economies, despite differences from the real world. As more people turn to virtual worlds to earn a livelihood, the rule of law will become prominent in encouraging investments in virtual business. The article finds – unsurprisingly – that virtual worlds now lack many of the elements of the rule of law. Which aspects fail is more surprising, however. Provider agreements and computer software, the sources of regulation that are most often criticized as “anti-user,” provide the best theoretical hope for achieving the rule of law, even if they currently fail in practice. On the contrary, widely proposed “reforms,” such as community norms, self-regulation, and importation of real-world law face both theoretical and practical barriers to implementation of the rule of law in virtual worlds. Part I of the article describes virtual worlds and their connection to business. Part II defines a framework to measure the rule of law in virtual worlds. Part III discusses the various types of regulation in virtual worlds, and Part IV critically analyzes how these regulations measure up against rule of law requirements. The article concludes with some suggestions about how providers might enhance legal rule in virtual worlds.

virtual worlds, rule of law, legal theory

Abstract:
The patent statutes were wisely drafted with an expansive vision of patentable subject matter. Efforts to graft judicially created limitations onto that expansive scope in the past have proven fruitless and indeed counterproductive. In deciding Bilski v. Doll, the Supreme Court should not impose a requirement that patentable inventions require a machine or the physical transformation of some material. It should instead maintain the rule that patents are available for "anything under the sun made by man," including discoveries of ideas, laws of nature, or natural phenomena, so long as they are implemented in a practical application. In short, the test should be as it has been: where an idea is claimed as applied, it is eligible for patentability, but if it is claimed merely in the abstract it is not.

patentable subject matter, Bilski, patent eligibility, business method patents, software patents

Abstract:
Trade secrets differ from other forms of intellectual property in many subtle ways that affect incentives to invest in information development. These differences relate not only to the types of information protected, but also to the requirements one must meet to protect that type of information. The various divergences and intersections of trade secret laws with other intellectual property laws lead to differences in the amount and types of investments companies make in developing information.

This chapter explores five types of differential incentives associated with trade secret law:

- Trade secret law v. no trade secret law - Trade secret law v. patent law - Trade secret law v. copyright law - Trade secret law v. trademark law - Trade secret law v. right to privacy

Trade secret law provides little incentive to innovate as compared to a world without trade secret law for two possible reasons. First, the law provides little incentive because companies will create secret information even in the absence of the legal protection - trade secret law provides little protection that self-help protection does not. Second, the value of shared information means that nominal secrets would otherwise be shared, such that trade secret laws are routinely disregarded in investment decisions. This chapter explores each of these alternate theories, as well as limits and exceptions to each.

Trade secret law does, however, provide some incentives to innovate vis a vis other types of intellectual property, although the incentives are not always obvious, intuitive, or necessarily great. This chapter considers how trade secret law differs from other types of intellectual property laws, and uses those distinctions to show that trade secret law will have some effect on incentives to innovate when compared to other forms of protection.

trade secret, incentives, information, research and development, R & D, copyright, patent, trademark, privacy

Abstract:
This essay is an edited and supplemented version of comments made during the 2008 AALS Annual Meeting Section on Law & Economics panel. The comments relate to information sharing in high velocity labor markets such as Silicon Valley, as discussed by presenter Alan Hyde.

The essay discusses four topics. First, it agrees with the principle that trade secret law does generally not provide an independent incentive to generate secret information.

Second, it asserts that trade secret law in California is strong when applied to valuable information, and that "information sharing" in high velocity markets is likely primarily tangential to core technologies.

Third, the essay situates the high velocity labor market analysis into a broader theoretical framework, namely that of protection cost minimization. Under this theory, an explanation for information sharing in Silicon Valley is that the information shared is not valuable enough to warrant more protection or to justify litigation costs.

Fourth, it explores avenues for future research, including the role of non-competition agreements in information sharing policy.

trade secrets, employee mobility, high velocity, labor market