Herbert Hovenkamp: Patent Exclusions and Antitrust After Therasense

While Therasense has received a significant amount of coverage due to its implications on the inequitable conduct defense, few have discussed its implications in other areas. In Patent Exclusions and Antitrust After Therasense, Professor Herbert Hovenkamp of the University of Iowa takes the opportunity to analyze the potential implications of Therasense on patent exclusion suits.

Jonathan Masur: The Ever Expanding Patent System

Could the commonly cited flaws of the patent system be caused by the underlying relationship of its two main players, the PTO and the Federal Circuit? The patent system has come under attack in recent years in light of the growing number of invalid or weak patents and an ever-expanding definition of what can be patented. Critics have blamed this expansion (or “patent inflation”) on a number of factors including lack of funding, capture by private interests, and lack of expertise. In Patent Inflation, Jonathan Masur, a professor at the University of Chicago Law School, suggests this phenomenon may have a more fundamental source—the institutional relationship between the PTO and the Federal Circuit.

In his thought-provoking article, Masur suggests that the administrative nature of patent law creates institutional pressure to expand the boundaries of patentability. He arrives at this novel theory by combining a few simple, yet profound, observations into a model that predicts patent expansion.

John M. Golden: Patentable Subject Matter and Institutional Choice

Is the patentable subject matter requirement obsolete or just underdeveloped? Many criticize the Patent Office for its mounting backlog and the rising number of “bad” patents that issue. In Patentable Subject Matter and Institutional Choice, John M. Golden, a Law Professor at the University of Texas, offers a well-analyzed approach to preventing patent grants in undesirable classes of innovation with a rejuvenated patentable subject matter requirement. He advocates for clarification of limits on patentable subject matter in order to better use this threshold inquiry into patentability as a categorical filter. Although Golden suggests ways in which Congress and the courts can act to clarify the patentable subject matter requirement themselves, his primary proposal is for the Patent Office to have substantive rulemaking authority on this issue.

Top 10 New IP Paper Downloads

It's time to revisit the list of most downloaded IP papers posted on SSRN in the past 60 days. Wagner and Petherbridge on Phillips and Horowitz on copyright remain popular, but the rest are new. Unsurprisingly, articles related to the Leahy-Smith America Invents Act signed into law on Sept. 16 are starting to show up:

Colleen Chien: Predicting Patent Litigation

Patent litigation is an expensive headache, especially if the asserted patents seemingly come out of the blue. Patent clearance searches, used to identify patents that may potentially be asserted or infringed, can be daunting, due to the sheer number of patents that must be reviewed. A recent paper by Colleen Chien, Assistant Professor at the Santa Clara University School of Law (also covered at Patently-O), provides a way to narrow the field of potentially-litigated patents by analyzing the “acquired” characteristics of patents.

Blogging Hiatus

This is a sad time to be leaving the blogosphere, with the Leahy-Smith America Invents Act just signed into law on Friday. Even if the changes are less dramatic than many wished, it is still the most significant patent reform bill since at least the 1980s, and I'm sure patent scholars will have a lot to say about the new act over the next year. (There has already been some interesting commentary at Patently-O.)

But I start clerking tomorrow, so I am leaving Written Description in other capable hands while I take a one-year blogging break. You will still be able to follow WD on Facebook and Twitter (as well as by email or with RSS readers), and feel free to email any of the blog authors with your suggestions, questions, or comments. Since I started this blog almost eight months ago, I have gotten to know so many interesting people in the patent community—both scholars and practitioners—and I really appreciate all of your feedback. Looking forward to jumping back into the conversation in a year!

Steven Horowitz: Copyright's Asymmetric Uncertainty

If you are trying to catch the attention of student law review editors, write an abstract like Steven Horowitz did for Copyright's Asymmetric Uncertainty. Horowitz, a Sidley Austin associate coming off Posner/Kennedy clerkships, uses one paragraph to convey a clear and simple idea that still seems novel and nonobvious. Let's see how he does this:

Sarah R.W. Rajec: Tailoring Remedies To Spur Innovation

Will we ever find a perfect remedial scheme in patent law? Ever since the dawn of the patent system, our law has sought to tailor the patent system so that it optimally balances its grants of exclusive monopoly power with the incentives it provides to prospective inventors. In Tailoring Remedies To Spur Innovation, Sarah R. Wasserman Rajec, a Visiting Associate Professor at GW, has written a thought-provoking draft paper in which she seeks to move us one step closer to that ideal balance. Incorporating useful insights from the economics and antitrust literatures, she argues that the law surrounding permanent injunctions in patent suits can be better adapted to promote innovative ends.

Washington Declaration on Intellectual Property and the Public Interest

What do over 180 experts from 35 countries agree is the most pressing global issue for intellectual property policy? The Washington Declaration on Intellectual Property and the Public Interest, which was formulated at the Global Congress on Intellectual Property and the Public Interest from August 25-27, 2011, reveals that changing the direction of negotiations on intellectual property rights in U.S. trade agreements is that issue. The Declaration criticizes an "unprecedented expansion of the concentrated legal authority exercised by intellectual property rights holders" through recent trade agreements. It calls for new efforts to "re-articulate the public interest dimension in intellectual property law and policy." The Declaration is now open to endorsement and comment.

Introducing New Written Description Bloggers

I am delighted to welcome three new bloggers on Written Description, who will share their thoughts on recent IP scholarship while I take a one-year blogging break. You can look forward to hearing from them in the coming weeks! We are open to adding one or two more blog authors, so if you are interested in blogging about twice a month, please send me an email.

Brian Love on Patent Litigation Timing

How do practicing and non-practicing entities differ in when they initiate patent litigation? Brian Love, a fellow at Stanford Law School, empirically addresses this question in his draft paper, An Empirical Study of Patent Litigation Timing: Could a Patent Term Reduction Decimate Trolls Without Harming Innovators? Based on a random sample of recently expired patents, Love reports that "the average product-company patent has been shelved by its owner before the average NPE patent has even been asserted."

Open Video at NYLS and Smart Phones at Whittier

Two more conference announcements: on Sept. 10-12, New York Law School is hosting the Open Video Conference, and on Nov. 4, Whittier Law School is hosting a symposium on the Law of the Smart Phone. Whittier's symposium is related to a student writing competition with a $1000 prize; the deadline is Sept. 9.

Sean Seymore on "Null Patents"

In The Null Patent, Sean Seymore (Vanderbilt Law and Chemistry) makes the creative proposal that the patent system could help solve the problem of unpublished negative scientific results. Negative results are very important: they can save other scientists from wasting time on dead-ends, and they can help identify false positives in studies based on statistical significance. (There is generally a 5% chance that a "significant" result is just based on random error, which is a problem if only significant results are published, as xkcd aptly illustrates.) So it would certainly be good for science if more negative results were published. But what do patents have to do with this?

More Upcoming IP Conferences

Some IP conferences and seminars in the 2011-12 academic year, as reported by Madisonian:

Jacob Rooksby on University Patent Litigation

Although one might expect universities to seldom initiate patent litigation, Jacob Rooksby reports that they filed over 50 patent cases in 2009 and 2010. In University Initiation of Patent Infringement Litigation, after reviewing the history and criticisms of the Bayh-Dole Act (which allows recipients of federal research funds to patent and license their inventions), Rooksby notes that "[o]ne largely overlooked cost of university involvement in technology transfer is university involvement in patent-related litigation." His article, which was recently published in the John Marshall Review of Intellectual Property Law, seeks to fill that empirical void. Rooksby was an IP litigator for 3 years, and is now pursing a Ph.D. in higher education at UVA.