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):