12 Patent Articles for the Holidays

Looking for some patent-related reading for the 12 Days of Christmas (or other holidays)? Here are my tweets (or retweets) on 12 papers that caught my eye this fall. (Note that this list looks best if you view it on the blog webpage rather than in an RSS reader.) You can always check my Twitter page for more recommendations (and other IP-related news).

Christopher Beauchamp: Invented By Law

I have just obtained my copy of Christopher Beauchamp's new book, Invented by Law: Alexander Graham Bell and the Patent That Changed America, which recounts the story of Alexander Graham Bell's legal battles over his telephone patent, and in doing so reconstructs the world of nineteenth century patent litigation. The book is published by Harvard University Press and is available on Amazon.com.

Commil v. Cisco and the Tort of Patent Infringement

Guest post by Saurabh Vishnubhakat, Postdoctoral Associate at Duke Law School. Vishnubhakat is also an expert legal advisor in the USPTO's Office of Chief Economist. His scholarship is available on SSRN, and you can follow him at @emptydoors. The arguments in this writing are the author’s and should not be imputed to the USPTO or to any other organization.

Final CELS Recap: Trolls, Anticommons, M&A

I have already posted on the papers from the Intellectual Property I session at the Conference on Empirical Legal Studies (CELS) by Aghion et al., Abrams et al., and Frakes & Wasserman. There were three more papers selected for the Intellectual Property II session on the second day of CELS, which I'll briefly describe here:

Commil v. Cisco Cert Grant on Knowledge for Induced Patent Infringement

The Supreme Court granted cert today in its second patent case of the 2014 Term, Commil v. Cisco, on whether a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b). (The Court did not take the petition's second question, and Justice Breyer is recused.) For those who haven't been paying attention, here's a quick rundown:

Tun-Jen Chiang on Patentable Subject Matter

Patent law is usually justified on utilitarian grounds. To be sure, significant contrary views have appeared in recent scholarship. For example, Professor Robert Merges’ work provides a partly Lockean account of intellectual property. The dominant view, nonetheless, is that the rules of patent law serve consequentialist goals of inducing invention, commercialization, and disclosure. In support of this view, scholars often cite the moribund state of the “moral utility” doctrine and the Constitution itself, which empowers Congress to enact laws that would “promote the Progress of Science and Useful Arts.” Professor Tun-Jen Chiang’s forthcoming article, “Competing Visions of Patentable Subject Matter,” challenges this account as a descriptive matter insofar as it relates to the judicially recognized exclusions from patentability.

Frakes & Wasserman on Time-Crunched Patent Examiners

Next in my CELS IP recap: Melissa Wasserman (Illinois) presented Is the Time Allocated to Review Patent Applications Inducing Examiners to Grant Invalid Patents?: Evidence from Micro-Level Application Data (coauthored with Michael Frakes at Northwestern). I was delighted to serve as the discussant for this paper, which is the latest in a series of outstanding empirical projects by Frakes & Wasserman on patent examination.

Abrams et al. on Patent Value and Citations

Next up in my CELS IP recap: David Abrams (Penn) presented Patent Value and Citations: Creative Destruction or Strategic Disruption? (with Ufuk Akcigit & Jillian Popadak), for which Browyn Hall served as the discussant. This paper addresses one of the key quandaries of innovation policy: how do you measure innovation?

CELS Recap Part 1: Laboratory Experiment on the Effect of Competition on Innovation

This past weekend I was a discussant at the 9th Annual Conference on Empirical Legal Studies (CELS) at Berkeley. There were two IP sessions with three papers selected for each, and over the coming days, I'll provide short recaps. First up: Stefan Bechtold (ETH Zurich) presented The Causal Effects of Competition on Innovation: Experimental Economics (co-authored with Philippe Aghion, Lea Cassar & Holger Herz). They designed laboratory games between pairs of student subjects who could "invest" in R&D to test competing theories of the effect of competition on innovation. In the competitive environment, a subject had to be ahead to earn a payoff; in the non-competitive environment, tied subjects could also earn a payoff.

Bechtold & Tucker on Trademarks & Google AdWords

How does using a third party's trademark as a keyword to trigger Google ads affect consumer behavior? In Trademarks, Triggers, and Online Search (forthcoming in the Journal of Empirical Legal Studies), Stefan Bechtold (ETH Zurich) and Catherine Tucker (MIT Sloan), present an amazing dataset that can shed light on this question due to a fortuitous natural experiment in European trademark law. For anyone who is interested in trademark policy but who hasn't seen this, it is worth a download. In short, they find that after Google changed its policy to allow companies to select third-party trademarks as advertising keywords, it had no measurable average effect on how likely searchers were to visit the trademark owner's website, but it had a noticeable effect on the behavior of different kinds of online searchers. The authors attempt to distinguish "navigational" searchers who are likely looking for the trademark owner's website, with searches like [ iPhone ] or [ Barbie ], from "non-navigational" searchers who are using the trademark in some other way, with searches like [ iPhone battery repair Paris ] or [ Barbie working conditions workers China ] (where non-navigational searches make up about 80% of all searches). Bechtold and Tucker find that after the policy change, navigational searchers are less likely to visit the trademark owner's website, while non-navigational searchers are more likely to visit.

Teva v. Sandoz Argument Recap

This morning I attended the Supreme Court argument in Teva v. Sandoz, the case on the standard of review for patent claim construction, which I previewed on this blog. Based on the questions today (transcript here), I think that Chief Justice Roberts, Justice Alito, Justice Sotomayor, and perhaps Justice Ginsburg were inclined to affirm the current de novo approach, and that Justices Scalia, Kennedy, Breyer, and Kagan thought that claim construction involves subsidiary factual issues that must be reviewed under the clearly erroneous standard of rule 52(a). Justice Thomas, as usual, was silent. If I had to guess, I still suspect that the Court will ultimately reject the de novo approach, but I don't think the answer is at all obvious from argument. So we'll have to wait for the opinion to get a definitive (and hopefully clear!) answer. Below are my thoughts about the leaning of each Justice.

Kenney & Mowery: Public Universities and Regional Growth

I've received my new copy of Public Universities and Regional Growth: Insights from the University of California, edited by Martin Kenney and David Mowery. It is an excellent book, demonstrating the complex interactions between university, industry, and government that underlie the unmatched growth in certain sectors of the California region. The book contains numerous case studies of University of California campuses' involvement in major technological developments, including semiconductors and chip and software design at UC Berkeley, UCLA, and UC Santa Barbara, wireless at UC San Diego, and biotechnology at UCSD and UC San Francisco, and more. Each of these campuses became anchors for regional clusters that stimulated economic growth in their respective regions along with advancing science.

Teva v. Sandoz Argument Preview

On October 15, the Supreme Court will hear arguments in Teva v. Sandoz, which focuses on a seemingly simple question: What should be the standard of review for patent claim construction? (For those unfamiliar with claim construction, see Polk Wagner's introductory lecture.) The Federal Circuit reviews claim construction de novo, following its en banc decisions in Cybor (1998) and Lighting Ballast (2014). The Teva petitioners argue that claim construction involves questions of fact, and that Fed. R. Civ. P. 52(a) requires that these findings "must not be set aside unless clearly erroneous." And the de novo standard has received plenty of scholarly criticism, including in a recent article by Jonas Anderson and Peter Menell that was featured on this blog (see also their thoughtful amicus brief in Teva, with Arti Rai). Is this yet another case in which the Federal Circuit has made inappropriate patent-specific rules, or will the Supreme Court finally conclude that the specialized patent court is doing something right? And will the Court pay attention to the possibility that tinkering with deference regimes can lead to more (or fewer) deference mistakes?

Most Cited IP Law Articles over the Last 10 Years

Guest Post by Ted Sichelman, University of San Diego School of Law

Recently, I undertook a project at my law school to assess the impact of our faculty’s publications. Building off of this work, I put together lists of the most cited IP law articles over the last decade (using HeinOnline).

Below are the most cited IP articles published from 2004-2008 and 2009-2013 (with embedded HeinOnline links to the articles). I report the top 25 most-cited IP articles published in each time period as well as the top 20 most-cited articles (with a minimum of 20 citations) in copyright, patent, trademark, and trade secret law.

Patentable Subject Matter and Non-Patent Innovation Incentives

I just posted my symposium essay from U.C. Irvine's Meaning of Myriad Conference: Patentable Subject Matter and Non-Patent Innovation Incentives. Here is the abstract—comments welcome!

In four patentable subject matter cases in the past five Terms, the Supreme Court has reaffirmed the judicially created prohibitions on patenting “abstract ideas” and “nature,” but the boundaries of these exceptions remain highly contested. The dominant justification for these limitations is utilitarian: courts create exemptions in areas where patents are more likely to thwart innovation than to promote it. The resulting debates thus focus on whether patents are needed to provide adequate innovation incentives in disputed fields such as software or genetic research, or whether private incentives such as reputational gains, first-mover advantages, or competitive pressures are sufficient. These debates frequently overlook a significant fact: the absence of patents does not imply that there would be only private incentives. Rather, federal and state governments facilitate financial transfers to researchers through a host of mechanisms—including tax incentives, direct grants and contracts, prizes, and regulatory exclusivity—which already provide substantial research support in the fields where patents are the most controversial.

Paying attention to non-patent incentives could prevent courts from being misled by the concern that a lack of patents for a certain type of invention would remove all incentives for nonobvious and valuable research in that field. Non-patent innovation incentives could also help ease the tension between utilitarian and moral considerations in the current patentable subject matter debates: if many people find patents on certain inventions (such as “human genes”) morally objectionable, utilitarian goals can still be served by using other transfer mechanisms to substitute for the incentive provided by patents. Indeed, non-patent incentives may be more effective than patents in contested areas, where inventors who share moral objections find little incentive in patents, and those who do not still find the patent incentive to be dulled by the persistent uncertainty that has plagued patentable subject matter doctrine in recent years. Wider appreciation of the range of innovation incentives would help bring patentable subject matter discussions in line with the realities of scientific research, and might even make this doctrinal morass more tractable.

Sean Seymore on Utility

In patent cases, the term “hindsight bias” refers to fact-finders’ tendency to use their knowledge of the invention at issue in their analysis of whether that invention would have been obvious. This error occurs when fact-finders ignore the rule that obviousness of a claimed invention must be evaluated at the time of patent filing rather that at the time of litigation. Professor Sean Seymore’s latest article, Foresight Bias in Patent Law, deals with an error that implicates the future rather than the past. Seymore is concerned with the utility requirement, which denies patents on chemical compounds that lack a demonstrated consumer end use, such as a therapeutic use, and on methods of making such compounds. Foresight Bias builds on Seymore’s earlier article, Making Patents Useful, which criticizes the utility requirement for being too subjective and calls for its elimination. Seymore’s work may be contrasted to that of Professor Michael Risch, who sees a greater role for the utility requirement (see also here).

Introducing New Blogger: Dmitry Karshtedt

I am delighted to welcome Stanford Law & Biosciences Fellow Dmitry Karshtedt as a new Written Description blogger. Before going into law, Dmitry completed a Ph.D. in chemistry from UC Berkeley and worked as a staff scientist for a semiconductor materials startup. After he received his J.D. from Stanford Law School, Dmitry practiced at Wilson Sonsini and clerked for Judge Moore on the Court of Appeals for the Federal Circuit. Given his extensive background in both science and patent law, I look forward to hearing Dmitry's thoughts on new IP scholarship, and to seeing his own new publications!

IP Watch Recap of Meaning of Myriad Conference

Last Friday I presented my latest essay, Patentable Subject Matter and Non-Patent Innovation Incentives, at UC Irvine's Meaning of Myriad Conference, which included a terrific line-up of speakers. Brittany Ngo, a 3L at UC Irvine, nicely recapped the conference for IP Watch: Experts Look At The Meaning Of Myriad Case, One Year Later. Her article is paywalled, but it is published under the CC BY-NC-ND license, so I am redistributing the article here (with attribution, for noncommercial use, and without modification).

IP programs ranked by h-index and m-index

Everyone seems to love new rankings! Inspired by Dan Burk's lists of IP scholars by h-index and m-index, Christopher Yoo (Penn Law) calculated cumulative h-index and m-index rankings by school. He thought the results might of interest to Written Description readers. I'm posting them because I think they have some value in identifying schools with a strong commitment to IP scholarship, although I don't recommend relying on these rankings when choosing a school (nor, for that matter, do I recommend relying on US News IP or Law Street or Patently-O or any other numerical ranking).

Founding-Era Translations of the Progress Clause

Before its ratification, the U.S. Constitution was translated for the German- and Dutch-speaking populations of Pennsylvania and New York, but little attention has been paid to these translations until now. In Founding-Era Translations of the United States Constitution, Christina Mulligan, Michael Douma, Hans Lind, and Brian Quinn analyze how these translations might aid interpretation of the Constitution today.

Student Writing Competitions

Guest post by Professor Michael Risch (Villanova University).

I’d like to thank Lisa and Camilla for the opportunity to write a short guest post. Ostensibly, this post is about the importance of writing competitions. If you are a professor, encourage your students to take part! If you are a student, don’t be afraid to submit your work. The advantages can include money, publication, and—at the very least—the satisfaction of working toward a scholarly goal.

Lemley & Miller: Judges Who Sit by Designation Less Likely To Be Reversed by Fed. Cir.

I'm thrilled to be here! Lisa’s list of non-faculty presenters at IPSC prompted me to check out a nifty new paper by Mark Lemley and Shawn Miller, demonstrating that the Federal Circuit reverses claim constructions far less frequently when the district judge below previously sat by designation in a claim construction appeal.

Introducing New Blogger: Maggie Wittlin

I am thrilled to welcome Maggie Wittlin as a new Written Description blogger. After graduating from Yale Law School, Maggie clerked on the District of Connecticut and Second Circuit and worked at Patterson Belknap, where she focused on patent litigation. She just started as an Associate in Law at Columbia Law School. Her research focuses on judge and juror decisionmaking as well as law and psychology/behavioral sciences, including attempts to explain affinity and antipathy toward patents. I look forward to reading her thoughts on new IP scholarship that catches her eye!

Non-Faculty Presenters at IPSC

The annual IP Scholars Conference is this week at Berkeley, and it includes over 150 presenters and up to six parallel tracks of presentations. The conference includes talks by Chief Judge Diane Wood of the 7th Circuit, Chief Judge Alex Kozinski of the 9th Circuit, Shira Perlmutter of the PTO, and Colleen Chien of the OSTP, as well as an impressive array of academics. But one of the goals of this blog is to highlight the work of less "famous" scholars, so here are some of the works by non-faculty presenters that I noticed (check the speaker list for links to their full abstracts or papers):

10 Tweets on Recent IP Scholarship

For blog readers who aren't on Twitter, here are 10 recent Tweets on IP-related scholarship that caught my eye. As I transition from clerking back to full-time academia, I'm debating the extent to which I will go back to writing longer posts about recent articles; feel free to email me (ouellette@law.stanford.edu) with comments.

Top 32 Experienced IP Scholars by (m)-index

After Dan Burk calculated the top IP scholars by h-index using Scholarometer, several scholars suggested to him that it would be interesting to normalize the results by seniority (because the h-index has a known seniority bias). Some bibliometricians have done this by using the m-index: the h-index over the years since the first publication. Because many legal scholars publish an early law review note well before beginning their academic careers in earnest, Burk decided to use a modified m-index: the h-index over the years in full-time law teaching.

Robert Cooter: "Growth Economics" and Intellectual Property Rights

I had the wonderful opportunity to participate in the George Mason University School of Law's Law and Economics Center's (LEC) Economics Institute for Law Professors for two weeks in Steamboat, Colorado, along with fellow IP scholars Sharon Sandeen, Amy Landers, Crystal Sheppard, and Ryan Holte. It was a special treat to hear Berkeley Law's Robert Cooter talk about how law and economics can be applied to intellectual property law. Cooter presented his new book, The Falcon's Gyre: Legal Foundations of Economic Innovation and Growth (2013) (w/ Aaron Edlin), which I'll discuss in this post.

Love Surveys University Researchers on Patenting

While there have been extensive debates about patenting federally funded research under the Bayh-Dole Act, there is little evidence about what the researchers themselves think of this regime. Professor Brian Love (Santa Clara Law) has tackled this problem with a survey of electrical engineering and computer science professors, and he describes the results in Do University Patents Pay Off? Evidence from a Survey of University Inventors in Computer Science and Electrical Engineering (forthcoming Yale J.L. & Tech.). Love sent an email survey to all 2,387 tenure-track faculty in the top 20 ECE and CS departments (as ranked by U.S. News), and his 269 respondents were highly representative based on measurable characteristics. Here are some of his findings:

10 New IP Papers

For blog readers who aren't on Twitter, here are 10 recent IP papers that caught my eye.

John Golden: Is the USPTO Entitled to Chevron Deference?

This is a guest post by Ben Picozzi, a J.D. Candidate at Yale Law School.

Is the U.S. Patent and Trademark Office (PTO) entitled to Chevron deference? Does this matter? Many commentators believe that courts’ failure to grant Chevron deference to the PTO’s interpretations of substantive patent law renders it powerless as a policymaking institution. As previously discussed on this blog, Arti Rai and Melissa Wasserman have argued that the America Invents Act (AIA) changes this by granting adjudicatory or rulemaking authority to the PTO over substantive questions of patent law, including the standards of patentability, and consequently interpretive authority.

Top 31 IP scholars by h-index

Scholarometer is a citation-analysis tool developed by researchers at Indiana University Bloomington. It mines Google Scholar data to generate a scholar's h-index: the maximum number of articles h such that each has received at least h citations. (It also computes the h_s-index, which normalizes an h-index by the discipline average, which is 14.8 for law.)

Seaman: The case against federalizing trade secrecy

In his new article, The Case Against Federalizing Trade Secrecy, forthcoming in the Virginia Law Review, Chris Seaman does what the title suggests: he makes the case against federalizing trade secrecy protections and challenges the wisdom of current proposals in this direction. I'll quickly summarize the article and then make a few points. In general, I found the article highly educational and think Seaman makes a compelling case that federalization would be an unnecessary legal innovation.

Merges: An Essay on the Legacy of Chisum on Patents

Robert Merges originally wrote this essay, previously unpublished, on the thirtieth anniversary of Chisum on Patents: A Treatise on the Law of Patentability, Validity and Infringement (1978-present). Merges has generously provided Written Description with a copy. In the essay, Merges discusses the world of patent law scholarship in the 1970s and the significant effect Chisum's treatise had within the patent community.

Amy Kapczynski on the Future of "Beyond IP" Scholarship

I was thrilled to participate this past Sunday in the Innovation Law Beyond IP Conference at Yale Law School hosted by the Information Society Project (ISP). The list of attendees included Mark Lemley, Amy Kapczynski, Yochai Benkler, Lisa Larrimore Ouellette, John Golden, Hannah Wiseman, Rebecca Eisenberg, Michael Abramowicz, Sean Pager, Jessica Silbey, Pam Samuelson, Barton Beebe, Ian Ayres, Brett Frischmann, Mark McKenna, Bryan Choi, Frank Pasquale, Tal Zarsky, Julie Cohen, Margot Kaminski, Michael Burstein, Bhaven Sampat, Brian Wright, Jonathan Masur, Dan Burk, Liza Vertinsky, Roger Ford, Sean O’Connor, Jim Bessen, Talha Syed, Arti Rai, Orly Lobel, Mario Biagioli, Rochelle Dreyfuss, Ann Bartow, Kiel Brennan-Marquez, Nicholson Price, David Grewal, and the ISP's own Jack Balkin.

#BeyondIP Blog Symposium

On Sunday the Yale Law School Information Society Project is hosting our Innovation Law Beyond IP conference, at which I'll be moderating the plenary session and presenting Beyond the Patents-Prizes Debate (coauthored with Daniel Hemel). Participants have been blogging about the conference papers at Balkinization, and you can see my summaries of some of these posts here, here, and here. Here is a list of all the blog posts, organized by conference panel. (I will update this list as more posts are added, including after the conference.)

#BeyondIP Blog Symposium: Burstein & Murray, Masur, Lobel, Pasquale, and Zarsky

Since my prior two updates, we have five new posts in the Innovation Law Beyond IP blog symposium. First, Michael Burstein and Fiona Murray described their new paper on Governing Innovation Prizes. They note that real-world prizes are different from those modeled in the economic literature, and they begin to remedy this empirical gap through a case study of the Progressive Insurance Automotive X Prize.

New Article: Deference Mistakes

Professor Jonathan Masur and I have posted a draft of our new article, Deference Mistakes, on SSRN. This article is more trans-substantive than my prior work, but it still has a significant IP angle. Here is the abstract:

This Article begins with what should seem a relatively straightforward proposition: it is impossible to fully understand the holding of a case without understanding its “deference regime”—the standard of review or burden of proof that governs the case. If a court holds in the context of a habeas petition that a constitutional right was not “clearly established,” that does not mean that the court would hold that the right does not exist were it writing on a blank slate. If a court refuses to invalidate a granted patent, which is presumed valid and can only be held invalid upon a showing of clear and convincing evidence, that does not mean that the court believes the patent should have been granted in the first place. And if an appellate court holds that a trial court’s ruling was not “plain error,” that does not mean that the appellate court believes the trial court necessarily reached the correct result or would have affirmed the ruling if the review were more searching.

Yet in case after case, we find that judges (and their clerks) confuse one deference regime for another or ignore deference entirely. In so doing, they make what we term deference mistakes. Courts in standard criminal cases regularly rely upon habeas precedents holding that a federal right was not “clearly established” to conclude that the right does not exist. The Federal Circuit and the Patent and Trademark Office regularly rely on precedents involving granted patents (which are presumed valid) to justify granting new patents (which are not entitled to that presumption). And courts of appeals regularly rely upon “plain error” precedents to justify holdings in cases where the standard of review is less deferential.

Although the problem of deference mistakes cuts across legal doctrines, it has been neither identified nor described in prior scholarship. Our article presents a multitude of examples of deference mistakes in practice and explains why they are likely to occur. Deference mistakes may seem relatively innocuous, particularly if they are confined to individual cases. But that appearance is misleading. We develop a theoretical model of how deference mistakes, coupled with particular asymmetries in adjudication, can generate systematic shifts in legal doctrine. Deference mistakes may have contributed to the current patent crisis by adding to the proliferation of bad patents. They may also be partly responsible for retrenchment in the law of constitutional criminal procedure rights or the pro-employer shift in employment discrimination law. After analyzing the potential for deference mistakes to affect the long-term evolution of the law, we discuss potential solutions.

We welcome your comments and suggestions!

#BeyondIP Blog Symposium: Golden & Wiseman, Vertinsky, Pager, and Silbey

Following up on my opening post and our first four contributions, we have another four posts in the Innovation Law Beyond IP blog symposium at Balkinization. First, John Golden and Hannah Wiseman describe their paper, The Fracking Revolution: A Case Study in Policy Levers to Promote Innovation, which will be presented in our "Comparing Innovation Policy Levers" along with my paper with Daniel Hemel. Golden and Wiseman's study of public policies behind the fracking boom reveals a "complex backstory [that] features multiple significant roles for government action" including "government-funded R&D, tax and regulatory relief, and a FERC-sanctioned surcharge on interstate gas that financed the private Gas Research Institute." While a case study does not provide "universal truths," it does reaffirm the government's capacity to use a diverse policy mix. "The relatively modest role of patents in the story behind the shale gas boom suggests that, under appropriate circumstances, a mix of alternative policy levers can substitute for the benefits often thought to be supplied by patents."

#BeyondIP Blog Symposium: Hrdy, Bessen, Frischmann & McKenna, and Cohen

Four new posts in the Innovation Law Beyond IP blog symposium at Balkinization! First, Camilla Hrdy describes her paper Local Commercialization Incentives, which she has also blogged about here. In this paper, Hrdy questions whether proposals for "commercialization patents" would actually be preferable to the many "commercialization awards" that national and local governments already provide through direct financing, and she also contributes to the federalism literature by arguing that such awards may be better administered at the local level.

Innovation Law Beyond IP Pre-Conference Blog Symposium at Balkinization

Today I launched our blog symposium for the upcoming Innovation Law Beyond IP conference at Balkinization:

On Sunday, March 30, the Yale Law School Information Society Project is hosting a conference on Innovation Law Beyond IP. To expand the discussion beyond our one day in New Haven, participants will be blogging here over the coming weeks with some initial thoughts on the conference papers, and more broadly on how we should define our field as scholars as innovation. To kick off this symposium, I’ll say a bit about the article I’m presenting, Beyond the Patents–Prizes Debate (coauthored with Daniel Hemel and recently published in the Texas Law Review), and how it fits with the broader conference agenda.

Continuing reading at Balkinization. I'll be posting links to new posts over the coming weeks.

In Memoriam: Sarah Tran

I was deeply saddened to hear that my co-blogger, SMU Law Professor Sarah Tran, has lost her battle with leukemia at age 34. This post from SMU describes some highlights of her incredible life, and this story describes her amazing resolve to continue teaching despite her illness, but neither can fully capture her warmth, generosity, courage, or boundless optimism and enthusiasm. Her legal scholarship (including important work on the PTO's administrative powers) is available here, and her many contributions to Written Description are available here. Sarah will be sorely missed by many, including the patent law community. I hope Written Description readers who have enjoyed her work will consider making a contribution to the fund that has been created to support her two young children, the Tran Children Development Fund.

Do We Need More IP To Promote Commercialization?

The patent system already protects inventors' exclusive rights in their "novel" and "nonobvious" inventions. But do we also need intellectual property rights to promote commercialization? In their influential article Intellectual Property for Market Experimentation, Michael Abramowicz and John Duffy concluded that we might. Just as technical information is subject to free riding by competitors, so is information generated from marketing a new product to the public or a game-changing business model. And "[j]ust as patents encourage risky but ultimately beneficial technological experimentation," they conclude, "some form of intellectual property protection" for "economically nonobvious" products "could result in a socially beneficial increase in market experimentation and entrepreneurial activity."

Shubha Ghosh: IP Federalism

In his new piece, Short-Circuiting Contract Law: The Federal Circuit's Contract Law Jurisprudence and IP Federalism, Shubha Ghosh discusses what he sees as the Federal Circuit's inappropriate encroachment on state contract laws respecting intellectual property rights, especially patent rights.  In doing so, Ghosh joins many other scholars in addressing the fascinating topic of IP and federalism, including Mark Lemley, Paul Goldstein, Paul Heald, John Shepard Wiley, Douglas Lichtman, Xuan-Thao Nguyen, Jeanne Fromer, Paul Gugliuzza, and myself.  (Notably, Gugliuzza recently made a similar argument to Ghosh that the Federal Circuit has inappropriately impeded state courts from influencing the patent system with their own laws, blogged on here.)