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:

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.”

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.

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.)

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."

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).

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.

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

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!

2012 at Written Description

2012 was a fun year at Written Description; there were fantastic posts by Sarah Tran and her RAs, Chris Suarez, and Tan Mau Wu while I finished clerking, and it was great to return to blogging in September. I've gotten to read papers such as Melissa Wasserman's argument that PTO patentability decisions deserve Chevron deference under the AIA, Mark Lemley's software patent solution, and Buccafusco & Heald's study of the impact of a novel's copyright status on audiobook recordings. We learned that Judge O'Malley writes the longest Federal Circuit opinions, and I also added a new page of Supreme Court patent cases (showing that every current Justice has authored at least one patent-related majority opinion), and a page of patent law references (including tips on searching legislative history). I am also excited about extending Mike Madison's list of classic patent scholarship with additions by TJ Chiang, Michael Risch, and Ted Sichelman (and more to come!).

Spring IP Conferences

As reported by the newly redesigned madisonian.net, the annual Works in Progress Intellectual Property (WIPIP) conference will be held at Seton Hall University School of Law on February 22-23, 2013, and the third annual Patent Conference (PatCon 3) will be held at at the IIT Chicago-Kent College of Law on April 12-13, 2013. The deadline to present at WIPIP was December 17; the deadline for PatCon is February 4.

Sichelman: "Recent" (1980-1999) Classic Patent Scholarship

The next addition to the Classic Scholarship Project is by Ted Sichelman, Professor of Law at the University of San Diego School of Law, whose scholarship is available here. He recently presented his work on purging patent law of "private law" remedies at the SCU software patent conference. I also highly recommend his work on commercialization and on the nuances of patenting by startups. All commentary below is his. —Lisa

My list of “classic” works adds to the outstanding efforts of Professors Michael Madison, Michael Risch, and TJ Chiang. As they’ve identified most of the older classics (and post-1999 works are “off limits”), I’ve focused on works between 1980 and 1999—making this a “recent” (but not “instant”) classics list.

Wasserman on Chevron Deference for the PTO

The America Invents Act (AIA) shifts interpretive authority over patentability standards from the courts to the PTO, argues Melissa Wasserman in her forthcoming article, The Changing Guard of Patent Law: Chevron Deference for the PTO. My co-blogger Sarah Tran has argued that the AIA gives the PTO some substantive rulemaking authority, though not over core patentability standards. Arti Rai has stated that post-grant review proceedings "bear the hallmarks of formal adjudication" and that the PTO could ask for Chevron deference under the AIA. But Wasserman’s article is the first detailed examination I've seen of this issue, and it illustrates how a compelling legal challenge seeking greater deference to the PTO on patentability issues might proceed.

Rai & Sampat on Bayh-Dole Underreporting

I’m very interested in university patenting and licensing under the Bayh-Dole Act, so I enjoyed the new Nature Biotechnology piece by Arti Rai (Duke Law) and Bhaven Sampat (Columbia Public Health), in which they report that universities don’t meet reporting requirements when they patent the results of federally funded research.

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: