Monday Deadline To Present at IP Scholars Conference

This year's IP Scholars Conference is August 11-12 at DePaul in Chicago. According to the conference website, requests to present should be made no later than May 2, which is Monday. I hope to be there (talking about my draft paper on disclosure), and I hope to meet some blog readers there!

Seaman on Willful Patent Infringement

What effect has In re Seagate had on willful infringement findings? Seagate raised the bar for willfulness by requiring patentees to show "objective recklessness." Christopher Seaman (Chicago-Kent Law) addresses this question in Willful Patent Infringement and Enhanced Damages After In re Seagate: An Empirical Study (forthcoming in the Iowa Law Review). Seaman created a dataset of all patent willfulness cases from September 2004 to July 2010 (straddling the Seagate decision in August 2007); the paper says that data "will be made publicly available on the author's website," but they don't appear to be posted yet.

Although "[m]any observers predicted that [Seagate's] heightened standard would result in far fewer willfulness findings and enhanced damage awards," Seaman's empirical study "finds that willful infringement was found only about 10% less often after Seagate." For a concise summary of the specific findings, see Peter Zura's post on his 271 Patent Blog. Of course, with studies of this sort it is always difficult to separate the effect of the new legal rule from the decisions of the parties over which cases to litigate, so it is hard to know what conclusions we can draw, but I think Seaman's findings are still useful.

15 Years of TRIPS Implementation

The Journal of Intellectual Property Law at the University of Georgia Law School hosted a conference in January called "15 Years of TRIPS Implementation: Intellectual Property Protection From a Global Perspective." Peter Yu (Drake Law), who organized the conference, presented TRIPS and Its Achilles' Heel. Yu examines "why the TRIPS Agreement fails to provide effective global enforcement of intellectual property rights" and "lessons that can be drawn from the continuous battle between developed and less developed countries over international intellectual property enforcement norms."

Edward Lee (Chicago-Kent Law) presented Measuring TRIPS Compliance and Defiance: The WTO Compliance Scorecard, which "proposes the tabulation of a TRIPS Compliance Scorecard measuring a country's attempt to correct any treaty violation that a WTO panel or the Appellate Body has found against the country. . . . Two alternative methods are offered – a simple and a complex score to track the violating country's response. Scorecards are computed for WTO countries under both methods; in both cases, the U.S. ends up with the lowest score in 2011."

The other papers presented don't appear to be online:

• Donald Harris (Temple Law), Evaluating the Success of TRIPS by Looking to Compulsory Licensing
• Sean Flynn (American University Washington College of Law), From TRIPS to ACTA: The Rise of the Enforcement Agenda
• Ruth Okediji (Minnesota Law), If WIPO Leads, Should the World Follow?: Decentralizing IP Norm-making Processes and the Norms That Result Therefrom
• Henning Grosse Ruse-Khan (Max Planck Institute for Intellectual Property, Competition and Tax Law), The International Law Relation Between TRIPS and Subsequent TRIPS-Plus Free Trade Agreements: Towards Safeguarding TRIPS Flexibilities?
• Susan Sell (George Washington), TRIPS Was Never Enough: TRIPS-Plus, ACTA, and the Trans-Pacific Partnership Negotiations

Do You Want To Blog About IP Scholarship?

Due to my clerkship plans this fall, I will be unable to blog from Sept. 2011 until Sept. 2012. But I'm sure 2011-12 will see lots of great patent and IP scholarship, and it would be great to have some blog posts about it here. So if you are interested in joining me as a co-blogger on Written Description (to begin as soon as you like, and to continue even after my clerkship ends), send me an email at lisa.ouellette@yale.edu to tell me (1) why you are interested and (2) a little about at least one patent/IP article that you would want to blog about. This blog has gotten great shout-outs from sites like The Volokh Conspiracy, Concurring Opinions, Patently-O, PriorSmart IP News, and SCOTUSblog since it began this spring, and I think it is a fantastic opportunity for law students or young academics to get their voices heard.

Also, if any blog readers will be at the Fordham IP Conference next week, feel free to email me and let me know. I would love to meet up and hear about any papers you are working on! I will probably be posting less frequently over the next month during exams, but I will want lots to blog about this summer.

Are Biotech Patents Enabled?

Stanford 3L Dmitry Karshtedt, who has guest posted on this blog, has a new post on Stanford's Law and Biosciences Blog about biologics, which are complicated drugs like erythropoietin that are typically made using living cells, as distinct from easily replicated small-molecule drugs like aspirin.

Karshtedt discusses his new paper, Limits on Hard-To-Reproduce Inventions: Process Elements and Biotechnology's Compliance with the Enablement Requirement, in which he argues that claim limitations can help enable biotech patents. I have also discussed the enablement problem for biologics starting at ¶ 106 of Access to Bio-Knowledge: From Gene Patents to Biomedical Materials, which cites Gregory Mandel's argument that many biotech patents fail enablement. What do readers think: is enablement a problem for biotech? Should biotech patents disclose more? I'd like to think about this issue more as I revise my paper on patent disclosure.

Does Microsoft v. i4i Matter?

Tomorrow, the Supreme Court will hear oral argument in Microsoft v. i4i Limited Partnership, which examines whether the invalidity defense of 35 U.S.C. § 282 must always be proved by clear and convincing evidence. Microsoft has argued that the standard should be a preponderance of the evidence, especially when the prior art used to contest validity is "unconsidered evidence," or evidence not considered by the Patent and Trademark Office (PTO).

Amicus briefs from the legal academic community generally support Microsoft. A brief of 37 law, business, and economics professors (with counsel Mark Lemley) argues that given the constraints on PTO review (e.g., that examiners only have 16-17 hours per patent), the clear and convincing evidence standard is appropriate only when the PTO considered an issue on the record. This echos a 2007 Stanford Law Review article by Lemley and Doug Lichtman, and Lichtman makes the same point in a (tritely titled) New York Times op-ed. Microsoft is also supported by a brief from the William Mitchell Intellectual Property Institute, arguing that the clear and convincing evidence standard is "historically anomalous" and "conflicts with general legal principles," and a brief from digital IP scholar Lee Hollaar, arguing that the heightened standard raises particular problems for software patents. But does the standard of patent validity actually matter?

David Fagundes on Roller Derby IP

Can you learn something about intellectual property by studying roller derby girls? Apparently yes: David Fagundes (Southwestern Law) has posted an entertaining new article, Talk Derby to Me: Emergent Intellectual Property Norms Governing Roller Derby Pseudonyms (forthcoming in the Texas Law Review). Fagundes expands on work by Robert Ellickson and others on the role of social norms in creating order without law. From the abstract:

This analysis of derby names shows that IP norms emerge independently of law’s substantive (un)availability, so long as the relevant group is close-knit and the norms are welfare-maximizing. These groups are especially likely to craft formal regulation and registration schemes to buttress informal norms where the relevant community is identity-constitutive, and where the intangible goods arise from nonmarket production. In addition to this critique of existing explanations for IP norm emergence, this study suggests a counter-theory for the emergence of user-generated IP governance systems, casts (further) doubt on the coherence of the prevailing neoclassical economic assumptions underlying IP law, and calls into question what it means for rules to be law.

If, like me, you hadn't heard of roller derby pseudonyms, check out the description of them on pp. 11-12, with names including Tara Armov, Paris Killton, Venus de Maul'r, Paris Troika, Madam Ovary, and Raven Seaward.

New Book on Innovation: Rules for Growth

An impressive array of authors have put out a new book, Rules for Growth: Promoting Innovation and Growth Through Legal Reform (free download), funded and organized by the Kauffman Foundation. The book covers a dizzying array of topics, from immigration to tort reform. Although the length (494 pages) is daunting, those who just want the take-home message can look at Table 1.1 on pp. 17-22 for the specific policy recommendations. For example, in terms of PTO reform, the book recommends (1) a second-pair-of-eyes review to weed out bad patents; (2) changing incentives for patent examiners; (3) a tiered review process; and (4) a post-grant opposition process.

Here is the Table of Contents, along with notes about what struck me during my brief skim:

Ryan Vacca: The Federal Circuit Acts Like an Administrative Agency

Is the Federal Circuit engaging in substantive rulemaking and policy setting about patent law? Should it? Professor Ryan Vacca (Akron Law) answers "yes" to both questions in Acting Like an Administrative Agency: The Federal Circuit En Banc (forthcoming in the Missouri Law Review). When only the third of the Federal Circuit's docket comprised of patent cases is considered, the Federal Circuit goes en banc more than any other circuit (see the table on p. 4), but "the more striking feature of the en banc orders is their scope": the court often requests briefing on numerous or broad questions of patent policy, and the orders often "expressly permit amici curiae to file briefs without leave of court" and "specifically invite[] the United States or the PTO to file an amicus brief." Vacca argues that when the Federal Circuit sits en banc in patent cases, it is acting like an administrative agency. And despite concerns about separation of powers and lack of meaningful review, Vacca argues that "the Federal Circuit may be the best candidate" to set patent policy currently, as Congress has shown little interest in amending the Patent Act (though that may be changing?) and the PTO lacks rulemaking authority. It's an interesting piece and a quick read, and it received a shout-out on PatentlyO.

Heidi Williams: IP on Genes

How does intellectual property protection for human genes influence the development of products based on these genes? A few weeks ago, Heidi Williams (NBER fellow and incoming MIT econ prof) presented to the Yale Law School Information Society Project about her empirical study of this topic: Intellectual Property Rights and Innovation: Evidence from the Human Genome.

Williams looked at the race to sequence the human genome between the Human Genome Project, whose genes were freely available, and Celera, whose genes were protected through contractual restrictions on redistribution and licenses for commercial uses. (So Williams was not looking at gene patents, but her results may have implications for the gene patent controversy and Myriad case.) Celera's IP protection only lasted until the gene was re-sequenced by the Human Genome Project, which meant a maximum of two years of protection, ending in 2003. To my knowledge, this is the first paper to look at the impact of open access not just on publications, but also on commercial products. The results are very interesting: