Peter Lee: Accession and Patent Remedies

We often refer to patents as "property," so can traditional property remedies teach us something about appropriate remedies in patent infringement cases? This is what Professor Peter Lee (UC Davis) argues in his forthcoming article, The Accession Insight and Patent Infringement Remedies, which I had the opportunity to hear him discuss last month at Fordham Law. (Full disclosure: I edited Lee's Patent Law and the Two Cultures and am already a fan of his writing style.)

Lee considers the doctrine of accession, which governs the "mistaken improvement" of property. In a canonical accession case, Wetherbee v. Green (Mich. 1871), Wetherbee chopped down $25 worth of trees under a faulty license and made $700 worth of barrel hoops. The Michigan Supreme Court held that as long as Wetherbee was acting in good faith, title to the wood would transfer and he would only need to compensate the true owners for their $25 loss, rather than giving them the $700 barrel hoops.

So what happens, Lee asks, if Wetherbee's fictitious great-great-granddaughter patents a revolutionary new battery and begins commercializing it, only to be sued for infringing a patent covering an older battery design? What if she is unable to negotiate a reasonable licensing agreement?

Mortarboard Patents

Yale Law's Commencement is today. Although square graduation hats have been around since the 16th century, there have continued to be improvements in mortarboard technology; for example, a quick Google Patents search revealed that three Chicago inventors filed mortarboard patents in the 1930s, and Ohio-based Thomas La Maida filed three patents in the 1950s. And maybe I should have a graduation cap cover?

Unfortunately, I was unable to locate any scholarship discussing this important topic. But congratulations to all my graduating classmates!

Top 10 Most-Cited Patent Articles

Update 6/10/11: I have realized that there are a lot of problems with using WestlawNext for broad searches like this. For example, I realized that Mark Lemley's Rational Ignorance at the Patent Office has 368 citations—more than any on this list—but it doesn't show up when you search the JLR database for "patent," even though it has "patent" in the title. And if you search JLR for "TI:patent" the most-cited article only has 73 citations—none of the articles below are included. So the list below contains short descriptions of some highly cited patent articles, but I no longer believe that these are the most-cited patent articles of the past 15 years. If anyone discovers how WestlawNext decides what is included in a search, please let me know.

The Federal Circuit cites legal scholarship as frequently as other circuits, according to a study by David Schwartz and Lee Petherbridge (Patently-O has a nice summary). I have also heard that patent scholarship tends to be more widely read than other legal scholarship, both because many law review articles have practical value and because patent practitioners often work at a high academic level (I have no evidence to support this claim, but it seems plausible). Of course, most citations to patent scholarship come from other scholarship and secondary sources. So what are the most cited patent law articles?

Michael Carrier on the Patent-Antitrust Paradox

Studying for my antitrust exam made me think about the intersection of patents and antitrust—something we only had time to touch on briefly during the class. I've already blogged about the chapters my professor, George Priest, wrote for the Kauffman Foundation's new book on innovation, including Chapter 8 on the role of antitrust law in promoting innovation. But to learn more about the specific patent-antitrust intersection, I read Unraveling the Patent-Antitrust Paradox (U. Pa. L. Rev. 2002) by Professor Michael Carrier (Rutgers Law), which seems to be the most-cited article to tackle the topic in the past decade.

Patent Law, State Law, and Abraxis v. Navinta

I am studying for my federal jurisdiction exam, so I have been thinking about how patent law fits into the themes of this course. We used the classic casebook, Hart and Wechsler's The Federal Courts and the Federal System, and one of the themes emphasized by the book is the interstitial nature of federal law. From p. 459:

Federal law is generally interstitial in its nature. It rarely occupies a legal field completely, totally excluding all participation by the legal systems of the states. . . . It builds upon legal relationships established by the states, altering or supplanting them only so far as necessary . . . . Congress acts, in short, against the background of the total corpus juris of the states in much the way that a state legislature acts against the background of the common law, assumed to govern unless changed by legislation.

One might think that patent law is entirely federal, but Professor Amar (who has also reviewed an earlier edition of the casebook) liked to remind us that federal law is never in a vacuum.

Kara Swanson: Feminism, Corsets, and IP

This is a guest post by Allison Tait, a Yale 3L with a Yale Ph.D. in French literature. Allison writes about women's property and marriage regulation and is the former Editor-in-Chief of the Yale Journal of Law & the Humanities.

What do feminism, the corset, and intellectual property have in common? Quite a bit, it turns out, according to Kara W. Swanson (Northeastern Law) in her latest paper, Getting a Grip on the Corset: A Feminist Analysis of Patent Law. For Swanson, feminine interventions in patent-protected technology converge in the corset. The corset involved women as both consumers and litigants. The corset constructed gender by shaping the feminine form into a graceful silhouette with a small waist. And the corset narrated gender by calling into question the divide between public and private in Egbert v. Lippmann—the 1881 “corset case” that provided a foundational examination of the public use doctrine. The case turned on the question of Francis Lee Barnes’ right to her deceased husband’s patent for an improvement in corset springs. Problems abounded for Francis because the Court cast her as a public woman at a time when the public space of the market belonged to men and the private sphere of domestic relations to women.

Sarah Tran on Expediting Green Patents

The PTO's Green Technology Pilot Program, which expedites review of green patents, "looks far greener than it actually is," argues Sarah Tran (SMU Law) in Expediting Innovation: The Quest for a New Sputnik Moment (forthcoming in the Harvard Environmental Law Review). Tran argues that the PTO should reduce obstacles to expedition in order to "better optimize the constitutional patent bargain while responding to critical public needs." Although there are problems with the Sputnik analogy, I agree that developing green technologies should be a top priority, and we should think about how to support both creation of and access to green patents.

The Green Technology Pilot Program was launched in December 2009 in response to green patent programs in the UK, Japan, Australia, and Korea. But Tran points out that it was limited to patents already in the system falling within a small subset of technology classes, with further limitations on types and number of claims. Perhaps more problematic, "accelerated review was only available for one year to applications already in the system—the program had no relevance to technologies that had not yet been invented." But even now that many of these restrictions have been removed, the program remains under-enrolled. What's wrong with it, and how can it be improved?