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!