Monday, December 23, 2013

Follow @PatentScholar for IP Updates During Light Blogging

Due to my current job, my blogging will continue to be light until July or August, when I will begin a permanent academic position. But I continue to Tweet as @PatentScholar about new IP papers posted to SSRN and other IP news (such as updates on Supreme Court patent cases, which are also tracked on this blog). Yale ISP Fellow Camilla Hrdy will also continue to blog here. If you are interested in guest posting, email me ( And stay posted for more information about the Yale ISP Innovation Law Beyond IP conference, which will involve blog posts from a terrific array of presenters. Happy holiday patents!

Tuesday, December 3, 2013

Sichelman & O'Connor: Can Patents Promote Competition?

In the standard modern account, patents, because they provide the opportunity for market power, "tend to dampen competition."  However, in their fascinating article, Patents As Promoters of Competition: The Guild Origins of Patent Law in the Venetian Republic, Ted Sichelman and Sean O'Connor argue that patents evolved in the Venetian Republic as a way for the government to recruit foreign artisans who otherwise could not effectively compete in trades dominated by the Venetian guilds, particularly in the wool and silk industries.

Sunday, November 3, 2013

Trademarks & Innovation

I haven't had much time for blogging recently, though as new IP papers pop up on SSRN, I have been posting links on Twitter as @PatentScholar. But since I am thinking about the relationship between trademarks and innovation for one of my current research projects, I thought I would highlight four related papers that were posted in the last few months.

Monday, October 7, 2013

Lee: Patents and the University

How do universities treat patents, and how does patent law treat universities?

These are the main questions addressed by Peter Lee, Professor of Law at University of California, Davis, in his new article, "Patents and the University," forthcoming in the Duke Law Journal. Lee has written several articles on the effects of patents on university research and a more recent article examining the role of patents in university-industry technology transfer. Now Lee provides a comprehensive history of the relations between patents and universities, generally. In Lee's telling, this relationship is characterized by two parallel developments: increased use of patents by universities, on the one hand, and "internalization" of universities and university research into patent law, on the other.

Monday, September 30, 2013

Cultural Cognition of Patents

I just posted a new essay, Cultural Cognition of Patents, which is forthcoming in IP Theory. Here is the abstract:
Simply making empirical progress is not always enough to influence policy, as demonstrated by the polarized public discourse over issues ranging from climate change to gun control. The current discourse over patents appears to have a similar pathology, in which cultural values—such as respect for strong property rights or concern about limiting access to knowledge—shape priors and affect the weight given to new information, such that advocates and policymakers on both sides of the patent wars often fail to acknowledge the ambiguity of existing evidence. In this Essay, I suggest that the “cultural cognition” framework might help scholars to understand this value-based division and to study ways to design and communicate patent experiments so that the resulting knowledge has the impact it should.

Saturday, September 28, 2013

Nicholson Price II: Making Do in Making Drugs

"M&M chocolate candies are made with a precision far beyond the capabilities of many drug manufacturers." This is the intriguing opening to a thorough critique of innovation in pharmaceutical manufacturing by Nicholson Price II (Petrie-Flom Fellow), Making Do in Making Drugs: Innovation Policy and Pharmaceutical Manufacturing (forthcoming in B.C. L. Rev.). Although drug discovery "is the focus of a calibrated innovation policy," Price argues that drug manufacturing is typically inefficient and non-innovative for two reasons: high regulatory barriers, on the one hand, and ineffective intellectual-property incentives, on the other.

Saturday, September 14, 2013

Kitch & O'Connor: Should Crowdfunding Be Regulated?

"I think I'm here because I wrote an article called The Nature and Function of the Patent System..." This is how Edmund Kitch, Professor of Law at the University of Virginia School of Law, began his talk at a lively panel I attended on Thursday, September 12 at "The Commercial Function of Patents in Today's Innovation Economy," the inaugural academic conference on intellectual property at George Mason University School of Law's new Center for Protection of Intellectual Property (CPIP). Kitch, of course, was referring to his famous article on the role of patents in facilitating commercialization and efficient coordination of research. But patents were not Kitch's topic. Instead, Kitch was here to talk about what he sees as another important mechanism for facilitating commercialization of new ideas and business models: crowd funding.

Wednesday, September 11, 2013

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days (and I'm happy to be at #4!):

Friday, August 23, 2013

Moretti & Wilson: Do State Incentives for Innovation Work?

Do state incentives for innovation work? As I recently discussed in a short presentation at IP Scholars on August 8, state and local incentives for innovation, from R&D tax credits to competitive awards for research or commercialization, have become increasingly common as states attempt to build regional "clusters" of innovation like Silicon Valley. Due to the importance of proximity and localized knowledge spillovers in generating innovation, in theory, state and local innovation incentives that result in self-sustaining "clusters" of innovation could have significant effects on patenting activity and other measures of innovation.

Wednesday, August 21, 2013

Introducing New Blogger: Camilla Hrdy

I am delighted to welcome Camilla Hrdy as a new Written Description blogger for the coming year. Camilla is a Postdoctoral Fellow with the Yale Law School Information Society Project, and her research has focused on the role of state and local governments as generators of innovation policy—including the provocative argument that U.S. states can and should offer state patents as a way of incentivizing local innovation and promoting experimentation and bottom-up patent reform. I look forward to hearing her thoughts on recent (or classic) IP and innovation scholarship!

Tuesday, August 20, 2013

Gugliuzza: How far will the Federal Circuit go?

Does the Federal Circuit really ignore patent policy, as many of the court's judges have claimed?  In The Federal Circuit as a Federal Court, 54 Wm. & Mary L. Rev. 1791 (2013), Paul R. Gugliuzza describes the Federal Circuit's tendency for self-aggrandizement in its relationships with state courts, the PTO, district courts, and regional circuits.  In each of these relationships, Gugliuzza argues, the Federal Circuit has consolidated power by the citing objectives of uniformity and expert adjudication in patent law.

Thursday, August 15, 2013

Merges: Classic Patent Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Robert Merges at Berkeley Law, another giant in intellectual property law. Merges has authored a number of articles that have already made the "classics" list, as well as others that deserve to be there; for example, Contracting into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 Calif. L. Rev. 1293 (1996), provides an early discussion of transaction costs in IP thickets that is highly relevant to contemporary problems such as "royalty stacking" in the mobile phone wars. Merges also has recently written Justifying Intellectual Property (which was subject to a terrific book club over at PrawfsBlawg), and he is well known to law students as the author of popular intellectual property and internet law casebooks. Here is his list of classics, "some well known and others that may have been lost in the mists of time." There are many suggestions here that have not been mentioned by any of the prior contributors, which I will add to the compiled list.

Monday, August 12, 2013

New IP Scholarship on SSRN

There are far more interesting IP papers posted than I have time to read carefully and blog about, so I thought I'd just highlight some recently posted papers that caught my eye (which I have also tweeted):

Wednesday, August 7, 2013

Ford on Invalidity vs. Noninfringement

I'm in NYC for the IP Scholars Conference (IPSC) at Cardozo Law, and one of the (many) article presentations I'm really looking forward to is Patent Invalidity Versus Noninfringement (forthcoming in the Cornell Law Review), by Roger Ford (Bigelow Fellow at Chicago, @rford). Ford argues that patent defendants are more likely to argue noninfringement than invalidity, and that this imbalance exacerbates the problem of bad patents. This article is well worth a look, both because it is a fun read (peppered with examples from actual patents) and, more importantly, because the basic insight seems right.

Wednesday, July 24, 2013

Patent Experimentalism

I haven't had much time for blogging recently because I've been writing and revising a new article, Patent Experimentalism, which I'll be presenting at IPSC on August 8. This is still a work in progress, so please send me your feedback and suggestions! Here is the current abstract:

Tuesday, July 2, 2013

Patent Costs & Benefits

Do the costs of U.S. patents exceed their benefits for publicly traded firms? This is the claim of John Turner, James Bessen, Peter Neuhäusler, and Jonathan Williams in their newly posted working paper, The Costs and Benefits of United States Patents. Bessen's prior work has very strong supporters and detractors, and I suspect the response to this paper will be similarly polarized. But I think it is worth understanding precisely what this paper is attempting to measure—and why, even if Turner et al. are correct that the costs they measure exceed the benefits they measure, this does not imply that we should scrap the patent system (though it may be cause for concern).

Monday, July 1, 2013

Call for Papers: Innovation Law Beyond IP

Next spring (on 3/30/14), the Yale Law School Information Society Project will host a one-day conference, Innovation Law Beyond IP:
Intellectual property law is only one of many legal institutions that can help promote, stifle, or govern knowledge production. For example, government also transfers rewards to innovators through tax incentives, grants, and prizes; regulates innovation through the administrative state (the EPA, FTC, SEC, CPFB etc.); creates legal rules and infrastructures that can help sustain or undermine commons-based production; and influences innovation through law and institutions related to immigration, tort law, education, and more. How do forms of law and governance beyond IP promote innovation, as well as values such as equity, privacy, and democracy? How should these systems be combined, both with one another and with IP law?
As described in the conference announcement, short paper proposals are due by 8/1.

Wednesday, June 26, 2013

Janis and Holbrook: Who reads patent laws?

What group of people forms patent law's audience?  In the late eighteenth century, patent law's audience reflected the pre-industrialized nature of the country and was composed of a small group of lawyers and inventors.  Today, the audience matches the modern trend of patent law towards increasing complexity.  The contemporary patent audience includes not only a larger group of lawyers and inventors but also information synthesizers like bloggers, journalists, and academics, as well as innovators' corporate management and the ever-expanding USPTO.  The result of patent law's growing complexity, however, is not only a larger audience, but also a larger audience mostly in the dark about the rules governing their activities.  In Patent Law's Audience, Mark D. Janis and Timothy R. Holbrook discuss the problem of patent law's inaccessibility and offer guides for courts to bridge the gap between patent law and its audience.

Wednesday, June 19, 2013

Fromer: Expressive Incentives in Intellectual Property

Are the current incentive structures in American patent and copyright law reaching their maximum utilitarian potential? In her recent article Expressive Incentives in Intellectual Property, 98 Virginia Law Review 1745 (2012), Professor Jeanne Fromer (New York University School of Law) suggests that traditional reliance on pecuniary interests leaves untapped potential in maximizing the effectiveness of intellectual property law in terms of spurring creativity and invention. She proposes using expressive incentives—incentives reflecting the moral-rights interests of creators—perhaps instead of traditional pecuniary incentives, to optimize intellectual property laws in a utilitarian framework.

Tuesday, June 18, 2013

Chief Judge Markey and Doctrinal Development

As I wrote in What Are the Sources of Patent Inflation? An Analysis of Federal Circuit Patentability Rulings, I think some of the expansion in the bounds of patentability that has occurred since the creation of the Federal Circuit could be explained by systematic effects such as the presumption of patentability (e.g., if the Federal Circuit holds that the challenger to a granted patent has not overcome the presumption of patentability, and then the PTO erroneously relies on that precedent in granting a new patent, which then itself becomes subject to the presumption). But I am skeptical of any account of doctrinal development that considers only these kinds of systematic effects and not the more idiosyncratic influences of individual judges.

Wednesday, June 12, 2013

Why Stop at Fees? The Case for Making All Patent Losers Pay, and Pay Heavily

Guest post by Professor Jonathan Masur, University of Chicago School of Law

The excellent op-ed published last week by Chief Judge Rader, Colleen Chien, and David Hricik has re-ignited the debate surrounding attorneys’ fee awards in patent cases. This conversation has dovetailed with the renewed focus on patent trolls, spurred by congressional and presidential attention to the issue. Taken together, these issues present the possibility of a productive approach to the problem of patent trolls—and to firms that assert weak patents more generally.

Monday, June 3, 2013

Carrier: Classic Antitrust/IP Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Michael Carrier (Rutgers Camden), a leading expert on the intersection of IP and antitrust. His impressive scholarly portfolio includes the influential Unraveling the Patent-Antitrust Paradox, which was cited by the Supreme Court in Bilski and (perhaps less notably) summarized on this blog two years ago. For a thoughtful overview of how patents, copyright, and antitrust can work together to foster innovation, I also highly recommend his 2009 book, Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law (download the introduction or check out this excellent symposium).

Wednesday, May 29, 2013

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days (with notes about the ones that were not on last month's list):

Tuesday, May 21, 2013

Abbott: Incentivizing Production of Drug Safety Information

Information about drug safety and efficacy is a public good, and it will thus be undersupplied absent government incentives to close the gap between the cost of producing this information and the private benefit that can be appropriated. Many pages have been written on the best way to incentivize drug development; alternatives to the current patent-centric regime include direct government financing, various prize schemes, and R&D tax incentives. But far less attention has been paid to incentivizing information production after drugs have received FDA approval and are on the market, and as examples such as the withdrawal of Vioxx illustrate, delays in producing information about the safety of new drugs can have important public health consequences. This important issue is tackled in Big Data and Pharmacovigilance: Using Health Information Exchanges to Revolutionize Drug Safety (forthcoming in the Iowa Law Review), by Ryan Abbott (who has an M.D. in addition to being a prof at Southwestern Law School).

Wednesday, May 15, 2013

Are R&D tax credits the software patent solution?

The Federal Circuit's fractured en banc decision in CLS Bank v. Alice probably pleased only those patent litigators who might benefit from the resulting uncertainty. The case could have provided clear guidance on the "abstract ideas" exception to patent eligibility (and thus the patentability of software), but the court instead issued 7 opinions in 135 pages, with nothing beyond the judgment having the weight of precedent. While there is much to be disappointed in here, I want to highlight a statement on page 12 of Judge Newman's opinion: "No substitute has been devised for the incentive of profit opportunity through market exclusivity."

Thursday, May 9, 2013

Crews: The Overreaching of Museums Art Image Copyright Policies

Do copyright and contract licensing policies adopted by art museums to restrict access to reproduced images of original artwork constitute overreaching? In his article, Museum Policies and Art Images: Conflicting Objectives and Copyright Over-Reaching, Dr. Kenneth D. Crews (Adjunct Professor of Law and Director of Columbia University's Copyright Advisory Office), explores the idea that while art museums have legitimate reasons for imposing restrictive policies, the broad and varied requirements often exceed their legal rights under copyright law.

Saturday, May 4, 2013

Hrdy: State Patents

Yale ISP fellow Camilla Hrdy has just posted Dissenting State Patent Regimes (IP Theory). Here is the abstract:
Inventors who believe in open innovation should start applying for state patents instead of U.S. patents. Patenting at the state level prevents rivals from obtaining U.S. patents and generates valuable innovation spillovers in other states where the patent has no legal effect. It also creates a unique opportunity to force patent law reform from the bottom up. In exchange for filing fees, inventors can demand patents based on rules that support open innovation, like shorter terms in fast-moving industries, stricter disclosure requirements, or new restrictions on patenting by non-practicing entities. The lobbyists who stymie reform at the national level will have a much harder time blocking reform in all fifty states. Meanwhile, patent law’s dissenters need only one state to start granting patents in order to get courts, the media, and eventually Congress to pay attention.

Thursday, April 25, 2013

Galasso & Schankerman: Do Patents Impede Cumulative Innovation?

In their new working paper, Patents and Cumulative Innovation: Causal Evidence from the Courts, economists Alberto Galasso (Toronto School of Management) and Mark Schankerman (London School of Economics) present new evidence on whether patents promote or impede follow-on innovation based on subsequent citations to patents invalidated by the Federal Circuit.

Sunday, April 21, 2013

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days:

Friday, April 12, 2013

Liveblogging Posner vs. Epstein at PatCon 3

I'm at PatCon 3 at Chicago-Kent (follow live tweets at #PatCon3), where so far we have heard Judge Linn expressing skepticism about the Supreme Court's role in patent law, a panel of in-house counsel describing their views on the patent system's biggest problems, and a plenary session with Mark Lemley (arguing against jury trials for patent validity), James Malackowski (on IP markets), and David Abrams (on patent value and citations). Below are (very) rough notes on one of the highlights of the day, a debate between Judge Posner and Professor Epstein:

Monday, April 8, 2013

Beyond the Patents-Prizes Debate

Daniel Hemel and I just posted a new draft paper, Beyond the Patents-Prizes Debate, which I'll be presenting on Saturday at PatCon 3 at Chicago-Kent. The article develops a new taxonomy of innovation policies that highlights the overlooked benefits of tax incentives for research activities. We would love feedback and suggestions; feel free to email us at the addresses listed at the top of the PDF. Here is the current abstract:

Friday, April 5, 2013

Classic Design Patent Scholarship

Just in time for Stanford's Design Patents in the Modern World Conference (on Twitter at #designpatents2013), we have a new addition to the Classic Patent Scholarship Project on design patents written by Professor Sarah Burstein (Oklahoma Law). Her scholarship is available here, and she frequently Tweets about design law as @design_law.

It might seem strange to have a list of classic design patent scholarship that consists largely of articles that do not really focus on design patents. But the literature is sparse. And even if it wasn’t, these articles would still be important because they each address issues that we are still debating today—including the fundamental question of how (or if) we should protect designs using intellectual property law.

Monday, March 25, 2013

FTC v. Actavis Argument Recap

I attended the Supreme Court argument in FTC v. Actavis today (as I noted in my earlier post previewing the case), which involves when a brand name pharmaceutical company may make a "reverse payment" to a generic company as part of a settlement that delays the generic's market entry. The Court expressed skepticism toward both the pharmaceutical companies' desired hands-off approach (which would find such payments to almost always be within the "scope of the patent") and the FTC's "quick look" approach (which would find such payments to presumptively be antitrust violations). The Court might find middle ground by holding that such settlements, like most antitrust issues, are subject to the "rule of reason."

Academics on FTC v. Actavis

This morning the Supreme Court hears argument in FTC v. Actavis (previously FTC v. Watson), in which the Court will decide when a brand-name pharmaceutical company may offer a "reverse payment" settlement to a generic company in exchange for the generic dropping a patent challenge and staying out of the market. Brand-name companies can use this strategy without triggering an endless stream of generic settlements because the first generic to file a "paragraph IV" certification challenging the brand's patents gets 180 days of market exclusivity before the FDA will approve another generic (unless forfeited), which gives a second generic less incentive to challenge the patents and thus less leverage in extracting a settlement.

Thursday, March 14, 2013

Shortcuts for Writing Law Review Articles on a Mac

Mac users, you probably use ⌘ + I for italics all the time, but did you know about ⌘ + K for small caps? I have been focused on finishing some articles lately, which has left little time for blogging, but I thought I'd share some shortcuts and tips that might be useful for other folks writing legal scholarship (patent or otherwise) in Microsoft Word on a Mac.

Tuesday, March 12, 2013

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days:
  1. Money from Music: Survey Evidence on Musicians’ Revenue and Lessons About Copyright Incentives, by Peter C. DiCola (see my last most-downloaded post for links)
  2. The Federal Circuit's New Obviousness Jurisprudence: An Empirical Study, by Jason Rantanen (Jason posted about this on Patently-O)
  3. Orphan Works and the Search for Rightsholders: Who Participates in a 'Diligent Search' under Present and Proposed Regimes?, by David R. Hansen, Gwen Hinze, Jennifer M. Urban (see description by Dave Hasen here)
  4. Leistungsschutzrecht für Presseverlage: Müsste Google wirklich zahlen? – eine kartellrechtliche Analyse (Ancillary Copyright Law for News Publishers: Would Google Really Have to Pay? – An Antitrust Law Analysis), by Christian Kersting, Sebastian Dworschak (still at #4, just like last month)
  5. A Case for the Public Domain, by Clark D. Asay (argues for public domain approach rather than "copyleft" open licenses)
  6. The Invention of an Investment Incentive for Pharmaceutical Innovation, by Shamnad Basheer (advocates an optional "investment protection" regime for drug development, which is similar to prize proposals like the Health Impact Fund except that the government-determined reward is based on a variable-length guaranteed market exclusivity)
  7. The HOB-Vín Judgment: A Failed Attempt to Standardise the Visual Imagery, Packaging and Appeal of Alcohol Products, by Alberto Alemanno
  8. Rush to Judgment? Trial Length and Outcomes in Patent Cases, by Mark A. Lemley, Jamie Kendall, Clint Martin (based on study of all patent trials over past 11 years, finds juries are more favorable to patentees than judges, length of trial does not affect outcome, and EDTex win rates aren't that different)
  9. Ten Years of DG Competition Effort to Provide Guidance on the Application of Competition Rules to the Licensing of Standard-Essential Patents: Where Do We Stand?, by Damien Geradin
  10. Fixing Software Patents, by Eric Goldman (nice essay written in connection with Santa Clara "Solutions to the Software Patent Problem" conference; also see my recap here)

Thursday, February 28, 2013

Feldman on IP Wrongs

Do we need a new doctrine of "inappropriate uses of intellectual property"? This is the proposal Robin Feldman (UC Hastings Law) makes in her working paper Inappropriate Uses of Intellectual Property—Intellectual Property Wrongs. Her broad new doctrine would (1) allow courts to dismiss suits when the plaintiff has behaved inappropriately; (2) allow courts to craft remedies that account for improper behavior; and (3) create an affirmative cause of action that allows for both damages and equitable relief.

Tuesday, February 19, 2013

Liebesman & Wilson: The Perils of the Online Secondary Sales Market

Have trademark holders succeeded in obtaining control of product distribution, past the first sale? In their article, The Mark of a Resold Good, authors Yvette Joy Liebesman (Professor at Saint Louis University School of Law), together with Benjamin Wilson (Law Clerk for the Honorable William D. Stiehl of the U.S. District Court for the Southern District of Illinois), warn that this is a real possibility.

Sunday, February 17, 2013

Academic Commentary on Bowman v. Monsanto

On Tuesday, the Supreme Court hears argument in Bowman v. Monsanto. Monsanto sells patented Roundup Ready soybean seeds (genetically engineered to be resistant to Roundup) and authorizes farmers to sell the genetically identical progeny seeds to grain elevators, which typically sell these seeds to the public as a commodity. Bowman purchased commodity seeds from a grain elevator and used these for planting (correctly assuming that most of them would be Roundup Ready). In general, the doctrine of patent exhaustion would prevent Monsanto from asserting rights in the second-generation seeds, but the Federal Circuit held that patent exhaustion does not apply to self-replicating technologies such as seeds.

Friday, February 15, 2013

When should universities patent?

I spoke today about university patenting to the Yale Student Science Diplomats, a group of science graduate students who are interested in science policy issues. It was great to have a chance to engage with scientists about why we allow universities to file patents on federally funded research (which they are permitted to do under the Bayh-Dole Act), and what those justifications tell us about when public-minded universities should be filing patents. As I discuss in my YLJ Comment, patents are not needed to motivate university researchers to innovate or to disclose their inventions—university researchers were innovating and publishing their results long before Bayh-Dole, primarily out of a desire for prestige (and the resulting tenure and prizes). The most compelling justification for Bayh-Dole patents is commercialization theory, the idea that exclusive patent rights are necessary to bring inventions to market. This theory is more convincing for inventions like pharmaceuticals with high regulatory barriers and low imitation costs, but it does not make sense when the exclusive patent right is unnecessary for commercialization—something that is very difficult to determine.

Wednesday, February 13, 2013

The Federal Circuit & International Patent Law

How do informal interactions between judges shape international IP law? Chief Judge Rader of the Federal Circuit is highly influential in international patent law, but aside from one piece by a former intern of his, I am not aware of any scholarship that has attempted to measure or evaluate this influence. In 2001, then-Judge Rader stated (in a lecture published at 5 Marq. Intell. Prop. L. Rev. 1) that he had "travel[ed] to nearly fifty countries" and discussed patent law "with the judiciaries of many of these countries." He argued that the Federal Circuit has brought "uniformity" to patent law and "driv[en] much of the international marketplace and the dynamic success we are seeing around the world." He has also told this story (reprinted at 21 Fed. Circuit B.J. 331): "Several years [before 2011], our government sent me to China on a mission of importance. In Beijing, I met with the U.S. Ambassador, Sandy Rand, who asked me to encourage the Chinese judiciary to enforce non-Chinese [IP] rights as aggressively as Chinese IP rights."

Tuesday, February 12, 2013

Anderson & Menell: Informal Deference

Is it finally time to adopt a deferential standard of review in patent claim construction appeals? Professors Jonas Anderson and Peter Menell respond emphatically in the affirmative in their recent patent law scholarship, From De Novo Review to Informal Deference: An Historical, Empirical, and Normative Analysis of the Standard of Appellate Review for Patent Claim Construction. In the article, Anderson and Menell argue that the time is ripe to abandon the de novo review standard in favor of a deferential standard that comports with the inherent and unavoidable factual aspects of patent claim construction. The article first presents a comprehensive and insightful historical analysis of patent claim construction. It then reveals enlightening results of the authors' empirical study of Federal Circuit jurisprudence from 2000 through 2010, and provides a normative analysis to explain these findings. Finally, it proposes a pragmatic framework for a dual standard for reviewing claim construction rulings, a framework that promotes transparency and uniformity moving forward. The result is a must read for anyone interest in patent litigation, and more specifically in the appellate review of patent claim construction at the Federal Circuit.

Monday, February 11, 2013

Top 10 New IP Paper Downloads

Here's an updated list of the most downloaded IP papers that were posted on SSRN in the past 60 days:
  1. How the JPML Can Benefit from the Federal Circuit and Vice-Versa, by Christopher Paul Nofal (discussed on Written Description)
  2. Money from Music: Survey Evidence on Musicians’ Revenue and Lessons About Copyright Incentives, by Peter C. DiCola (discussed on Techdirt, Duane Morris's blog, World IP Review, RT, Music Business Research, The Trichordist, etc.)
  3. The Google Shortcut to Trademark Law, by Lisa Larrimore Ouellette (discussed on Eric Goldman's Technology & Marketing Law Blog)
  4. Leistungsschutzrecht für Presseverlage: Müsste Google wirklich zahlen? – eine kartellrechtliche Analyse (Ancillary Copyright Law for News Publishers: Would Google Really Have to Pay? – An Antitrust Law Analysis), by Christian Kersting & Sebastian Dworschak (concludes that Google does not have antitrust obligation to index and display publishers' content if new law protected snippets ... but note that the paper is in German)
  5. Patent Assertion Entities, by Colleen V. Chien (presentation slides from the DOJ/FTC workshop on PAEs)
  6. The Law of Friction, by William McGeveran (analyzes benefits and drawbacks of "frictionless sharing," such as the Washington Post Social Reader automatically publishing users' activities on Facebook)
  7. International Jurisdiction over Copyright Infringements in the Cloud, by Toshiyuki Kono & Paulius Jurcys
  8. The HOB-Vín Judgment: A Failed Attempt to Standardise the Visual Imagery, Packaging and Appeal of Alcohol Products, by Alberto Alemanno
  9. The Fashion of TV Show Formats, by Stefan Bechtold (discusses why the TV show format market is thriving despite low IP protection)
  10. Top Tens in 2012: Patent, Trademark, Copyright and Trade Secret Cases, by Stephen M. McJohn

Thursday, February 7, 2013

Who is teaching patent law? (Not Yale)

By "who" I mean both which schools and which professors. This is not a ranking of the best patent law programs—I was just curious about what patent classes were offered at the top USN schools, which might be of interest to students evaluating schools or to schools considering what courses to offer. Below are schools in order of the 2012 USN rankings, and classes with "patent" in the title from the 2012-13 course catalogs. Professors who have tenured or tenure-track positions at the listed school are in bold. If I found a page listing the school's IP faculty, the school name links to it.

Wednesday, February 6, 2013

Follow @PatentScholar for More IP Scholarship

For readers who aren't following on Twitter (and with apologies to those who are), I thought you might be interested to know that I regularly post links to SSRN abstracts that catch my eye. (I see far more interesting-sounding IP scholarship than I can read, and certainly more than I can blog about!) So if you want to see more IP scholarship (as well as a few other patent-related things), check out the Tweets from @PatentScholar once in a while. Here is a sampling of recent Tweets:

Tuesday, February 5, 2013

Dreyfuss: Classic Patent Scholarship

The next contribution to the Classic Patent Scholarship Project is from Professor Rochelle Dreyfuss (NYU), a giant in the field of intellectual property law. You can read her dazzling bio yourself, but more importantly, check out her scholarship. Her early work on the Federal Circuit is surely a classic in the institutional design literature, and she has revisited the court in later works that are also worth reading. She has also written insightful articles on topics ranging from business method patents to IP without IP, and I am currently enjoying her new book, A Neofederalist Vision of TRIPS (with Graeme Dinwoodie). She noted that many of the first classics that came to mind have already been mentioned, but she thinks these five works also belong on the list. Here are her additions, along with my own brief summaries:

Sunday, February 3, 2013

Nofal on the JPML & the Federal Circuit

The Federal Circuit should be given exclusive appellate jurisdiction over suits consolidated by the Judicial Panel on Multidistrict Litigation (JPML), according to Chris Nofal's How the JPML Can Benefit from the Federal Circuit and Vice-Versa (recently published in IDEA). As regular blog readers know, I love featuring the work of new scholars, so I was pleased to see that Nofal just graduated from Northwestern Law last year (so he must have written this article while still a student). He is also a former patent examiner (his background is computer engineering) and current Covington associate. Nofal argues that both the JPML and the Federal Circuit have promoted "macro-level judicial economy" at the expense of "the just, speedy, and inexpensive determination of every action and proceeding," and that giving the Federal Circuit exclusive jurisdiction over JPML suits could help solve these problems. Nofal’s overarching aim is “to remedy procedures with an eye toward correcting outcomes.”

Wednesday, January 30, 2013

Lemley: Classic Patent Scholarship

Professor Mark Lemley (Stanford Law) needs no introduction; as noted by Ted Sichelman in his contribution to the Classic Patent Scholarship Project, Lemley's own classics "will surely number in the league of Beatles' hit singles." When I asked Lemley what classic works he thinks young patent scholars should be familiar with, he said that the earlier contributors have already mentioned several pieces he would include, such as Kitch's Nature and Function of the Patent System, Merges and Nelson's On the Complex Economics of Patent Scope, and Eisenberg's Patents and the Progress of Science: Exclusive Rights and Experimental Use. But he also suggested some pieces that are not yet on the list, which are listed here with my own brief summaries.

Wednesday, January 23, 2013

WestlawNext vs. LexisAdvance vs. Google Scholar

What's the best search tool for finding the most relevant case law on some legal topic? WestlawNext and LexisAdvance both claim to allow searchers to quickly locate the most relevant content with simplified Google-like search boxes, and Google Scholar also searches cases. So I decided to compare the relevance sorting for the three products using some basic searches for patent law topics (i.e., without using tools such as SY,DI() or ATLEAST). In general, I found that WestlawNext did the best job pulling up the most relevant cases—but if you really know nothing about a topic, you are still probably better off starting with treatises and other secondary sources (e.g., for patents, start with Lexis's Chisum treatise). (For more on doing patent research, see my page on patent references.)

Tuesday, January 22, 2013

Roin on Unpatentable Drugs

Unpatentable Drugs and the Standards of Patentability, by Ben Roin (Harvard Law), is older than most articles I blog about (published in 2009), though too young to be a classic. But in rereading it for an article I'm working on, I decided it is worth a quick post, especially for those who missed it when it first came out. Roin's basic claim is simple but important: "the standards by which drugs are deemed unpatentable under the novelty and nonobviousness requirements bear little relationship to the social value of those drugs or the need for a patent to motivate their development."

Sunday, January 13, 2013

Gunn v. Minton Argument Preview

The Supreme Court hears argument Wednesday in Gunn v. Minton, concerning whether federal courts have exclusive jurisdiction over state law malpractice claims where the underlying question involves patent law. This case has attracted far less attention than the other patent cases this Term, but it raises an important federal jurisdiction question, and the Court's opinion could have implications far outside patent malpractice cases—especially because the Court has held that the patent-related statute at issue, 28 U.S.C. § 1338(a) (giving the federal courts exclusive jurisdiction over "any civil action arising under any Act of Congress relating to patents"), should be interpreted in the same way as § 1331 (the source of federal question jurisdiction for actions "arising under" federal laws).

Thursday, January 10, 2013

Kapczynski, Park & Sampat on Secondary Pharma Patents

What kinds of patents does the pharmaceutical industry seek besides patents on the active molecule itself, and how common are these "secondary patents"? Amy Kapczynski (Yale Law), Chan Park (Medicines Patent Pool), and Bhaven Sampat (Columbia Public Health) address these questions in their new PLOS ONE article, Polymorphs and Prodrugs and Salts (Oh My!): An Empirical Analysis of "Secondary" Pharmaceutical Patents. It's a quick read (11 pages), so it is worth downloading for anyone interested in these issues.

Tuesday, January 8, 2013

Masur: Classic Patent Scholarship

The next addition to the Classic Scholarship Project is by Professor Jonathan Masur of the University of Chicago Law School, whose extensive portfolio of scholarship is available here. He has written broadly about regulation and institutional design and has a fascinating series of papers involving hedonic psychology, but Written Description readers will probably be most interested in his patent-specific scholarship. For example, Masur has argued that the high costs of obtaining a patent are beneficial, that the asymmetry in appeals from the PTO has expanded patentability boundaries, that the PTO should have substantive rulemaking authority, and that patent liability rules may be inefficiently allocating search responsibilities between parties. All commentary below is his. —Lisa

Thursday, January 3, 2013

The Google Shortcut to Trademark Law

I just posted The Google Shortcut to Trademark Law on SSRN, which I presented last month at a workshop on empirical trademark studies at Oxford (summary from IPKat here), and which I will present next month at WIPIP. In short, I argue that Google and other online search results are highly probative in offline trademark disputes, particularly for evaluating the strength of a trademark. Comments are very welcome!