Patent Jurisprudence Research Articles

Wynalazczość wspomagana sztuczną inteligencją a ochrona patentowa w prawie polskim i europejskim. Perspektywa porównawcza

The article scrutinises the intricate interplay between artificial intelligence (AI) and patent jurisprudence. According to the authors, while inventions conventionally qualify for patent protection, those predominantly or entirely conceived by AI fall outside the purview of extant Polish and European legislative frameworks. The article delineates the parameters of AI and explicates the criteria for patentability, accentuating that inventions engendered by AI present a conundrum for the prevailing legal paradigms.

An Apocalyptic Patent

It was originally suggested that the Anthropocene began in 1784, the date of James Watt’s patent for the rotative steam engine. Patent dates are interesting artefacts. They owe their existence to the chronopoietic technique of patent jurisprudence, which generates temporal sequences out of synchronous states of knowledge. This may not be geological time, but it informs the experience of time that is proper to the culture whose deposits of Pu-239 now mark the onset of the Anthropocene. Patent jurisprudence makes a crucial contribution to what might be called the ethos of the Anthropocene: the sense of society as having an inexhaustible capacity for innovation, for endless self-renewal. And, as it turns out, the steam engine yields some interesting insights into this mode of enchantment.

Analysis of overseas patent registration of the classical prescription of traditional Chinese medicine

Through the analysis of patent jurisprudence, it is proved that the Classical Prescription of Traditional Chinese Medicine (CPTCM) belongs to the scope of existing technology in the Law of Patent, and has lost the foundation of obtaining patent rights. Taking Japan's CPTCM as an example, based on the analysis of the administration of CPTCM and patent applications related to CPTCM in Japan, it is proved that CPTCM can not obtain patent authorization in Japan. Through the comparison of patent in China, the United States, Europe and worldwide region, it is proved that China is still the main source of patent applications for Traditional Chinese Medicine. At the end of the article, the author puts forward the suggestion of active protection. It is believed that we should abandon the concept of patent-only protection and improve the influence of Traditional Chinese Medicine in worldwide from the aspects of industrial development, promotion ofits application, and intellectual property protection. Key words: Traditional Chinese medicine and pharmacy; Classical prescription; Medicine, kampo; Patent analysis; Intellectual property protection

Exceptional, After All and After Oil States: Judicial Review and the Patent System

The U.S. Supreme Court’s seminal 2018 decision in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC appears to mark the end of “patent exceptionalism”—that is, the notion that patent law and administration (should) remain at variance with the precepts of general administrative law. The petitioners contended that invention patents are “private rights” that, under the Constitution, can be canceled only by Article III courts, not administratively. The Court’s unequivocal rejection of that position removed a lingering constitutional cloud over the Patent and Trademark Office’s administrative patent review and reexamination procedures under the 2011 America Invents Act. However, the statutory judicial review regime of the Patent Act still departs from general administrative law. Parallel to an APA-conforming provision for appellate judicial review, the Patent Act permits disappointed patent applicants to contest adverse administrative decisions by way of an original, de novo action in U.S. district court. The relevant provision, Section 145 of the Patent Act, is wholly incompatible with administrative-law precepts of appellate (deferential, on-the-record) judicial review. Dating all the way back to the 1836 Patent Act, it is a statutory remnant of Marbury’s near-forgotten world of private rights and separated powers. This Article chronicles the strange survival of Section 145 and explores its present-day, post-Oil States implications. As a practical matter, the rarely used Section 145 may offer a means of “gold-plating” patents: an administrative revocation of a “Section 145” patent would amount to a constitutionally prohibited executive revision of a final judicial decision. As a doctrinal matter, the Supreme Court has clearly recognized the “exceptional” nature of Section 145. The Oil States decision, read on its own but especially in the context of the Supreme Court’s broader administrative and patent law jurisprudence, affirms that position. Patent law will remain exceptional after all—just not for reasons grounded in property law and theory, but in a statutory and administrative-law sense.

Government Use of Patents: Understanding of Limits & Evolving Indian Jurisprudence in Comparative Light

Patents form part of a statutory right of an inventor to commercially exploit the sale and licensing of his/her patent exclusively. This is of the nature of a right granted by the Government. Section 47 and 100 of the Patents Act however are powers reserved with the Central Government which permits it to use any patent of the patentee for government use. While a few cases have determined and laid down limitations to the use of such a patent by the government and circumstances under which they may not be used by the Central Government, there is still growing ideas and room for misuse and colorable exercise of power by the Government. While it is generally accepted that Section 47 is narrow in scope of power granted to government, Section 100 affords a wider range of powers calling for an analysis in order to understand how these two provisions are fundamentally different in approach and why analysis of these provisions is essential in order to arrive at a conclusion as to how powers are reserved with the Central Government over the same. Furthermore, a comparative analysis is sought to be conducted to analyze how Patent jurisprudence is evolving in India in a skewed socialist manner with Compulsory Licensing and increasing use of power by the Central Government in exercise and depriving the Patent owners a right to commercially exploit their product. The authors inter alia seek to make an analysis of the recent judgment of the Hyderabad’s court on the same. The authors seek to make a research in light of emerging jurisprudence in comparative jurisdictions and also in light of the Privacy Judgment, how the courts have reemphasized the need to protect Intellectual Property Rights by way of understanding the importance of disclosure in a regime that protects Privacy.

Through the Anti-Monopoly Lens: What Constitutes 'Unfairly High Patent Pricing' in China?

Through the Anti-Monopoly Lens: What Constitutes 'Unfairly High Patent Pricing' in China?

Patenting an Invention as a Free Black Man in the Nineteenth Century

With recent patent law decisions today still citing from Justice Taney’s patent opinions from the nineteenth century, it is imperative that the historical context with which these opinions were written is understood. This Comment will address each aspect to patent inventorship laid out above. First, this Comment will discuss the evolution of property and patent rights as it was later used against the abolition movement of the nineteenth century. Second, this Comment will describe: the importance of the inventions of free black men, and the knowledge and strength that Henry E. Baker’s significant record keeping provided for the black community. Finally, this article will highlight the importance of understanding the complex historical context with which the patent laws of the United States developed because the Supreme Court continues to cite patent jurisprudence from the antebellum period without context of the intimate oppression to inventors’ property and patent rights.

The Antitrusting of Patentability

Deciding a patent’s validity is costly, and so is deciding it incorrectly. Judges and juries must expend significant resources in order to reach a patent validity determination that is properly informed by the relevant facts. At the same time, patent validity determinations reached quickly and cheaply may conserve resources today while creating future costs. Wrongly preserving an invalid patent can distort the competitive market and enable abuses, such as nuisance litigation. Meanwhile, wrongly striking down a valid patent can undermine incentives for continued investment and commercialization in knowledge assets. Courts facing patent validity issues have begun to strike this balance in favor of conserving resources today—in a manner that is strikingly similar to per se analysis in antitrust law. A per se rule disposes of supposedly easy cases without engaging in the more fact-intensive “rule of reason” analysis. However, although antitrust jurisprudence cautions against per se rules because of the risk of error and imposes important requirements for the use of per se rules, recent patent jurisprudence has borrowed incautiously from antitrust. This Article explains how the requirements for patentability enable the use of per se analysis, describes how the proper conditions for antitrust per se analysis would translate into patent law, and argues that current use of antitrust-style judicial shortcuts do not satisfy these conditions in patent law. The Article concludes with a set of proposals for recalibrating the present costs of reaching informed patent validity decisions against the future costs that arise from generating decisions incorrectly.

Beyond abstraction: applying the brakes to runaway patent ineligibility.

Journal of Law and the Biosciences, 697–703 doi:10.1093/jlb/lsw055 Advance Access Publication 22 November 2016 Response Beyond abstraction: applying the brakes to runaway patent ineligibility Dan L. Burk School of Law, University of California-Irvine, 401 East Peltason Drive, Irvine, CA 92697, USA Corresponding author: E-mail: dburk@law.uci.edu INTRODUCTION I was pleased to read and am now pleased to respond to the commentaries by Minssen and Schwartz 1 and by Thambisetty 2 on my article Dolly and Alice. 3 Each of these com- mentaries offers a welcome comparative perspective to the doctrinal quandaries that I initially pointed out, indicating some prescription for the American patent eligibility problem based upon the parallel European experience. But it seems already clear that the American courts, responding to an avalanche of lower court patent invalidations based on the Alice patent eligibility test, have already begun fashioning their own idiosyncratic response to the common global difficulty of distinguishing patentable subject matter. A set of recent opinions makes clear the de- termination of the United States Court of Appeals for the Federal Circuit to apply the brakes to runaway abstraction analysis under the Alice test. In some respects this re- sponse may indeed parallel that in other jurisdictions, but in major respects it departs from the prescriptions detailed by the commentators. APPLYING THE BR AKES Recent subject matter opinions by the United States Supreme court have thrown patent eligibility into some disarray, so there is a natural tendency to hope that the Supreme Court might intervene to sort out the chaos in the lower courts. Minssen and Schwartz look particularly to the Federal Circuit’s opinion in Ariosa Diagnostics v Sequenom, Inc., 4 hoping that it might be taken up by the Supreme Court as an additional opportunity to Timo Minssen & Robert M. Schwartz, Separating Sheep from Goats: A European View on the Patent Eligibility of Biomedical Diagnostic Methods, 3 J. L. & B IOSCI . 365 (2016). Siva Thambisetty, Alice and ‘Something More’: The Drift Towards European Patent Jurisprudence, 3 J. L. & B IOSCI . Dan L. Burk, Dolly and Alice, 3 J. L. & B IOSCI . 606 (2015). 788 F.3d 1371 (Fed. Cir. 2015). C The Author 2016. Published by Oxford University Press on behalf of Duke University School of Law, Harvard Law School, Oxford University Press, and Stanford Law School. This is an Open Access arti- cle distributed under the terms of the Creative Commons Attribution-NonCommercial-NoDerivs licence (http://creativecommons.org/licenses/by-nc-nd/4.0/), which permits non-commercial reproduction and distri- bution of the work, in any medium, provided the original work is not altered or transformed in any way, and that the work is properly cited. For commercial re-use, please contact journals.permissions@oup.com

Alice and 'something more': the drift towards European patent jurisprudence.

On the face of it the doctrinal lines of disagreement around subject matter eligibility in US law and the invention requirement, as it is known in Europe, could not be further apart. The US statute is silent as to what does not constitute patentable subject matter, while the European Patent Convention takes a much more formal approach. Unpatentable subject matter is listed, categorized either as things not to be regarded as inventions under Article 52(2) ; or as exceptions to patentability under a small number of umbrella contexts. Professor Burk’s incisive analysis of the two-pronged test of subject matter eligibility in Alice and its place within recent decisions by the SC is monitory in three particular aspects of direct relevance to the many decisions of the European Patent Office (EPO) on the ‘invention’ requirement. First, the use and development of a common denominator across excluded categories. Second, the seeping of patentability criteria into eligibility. Third, the nascent focus on the language of the claims which so far the US Supreme Court has declaimed. I will address each of these points in turn, comparing the direction of legal ideas around patent eligibility in both systems of law, before drawing conclusions.

Research on patent portfolio design by Using of TRIZ Method

By integrating patent portfolio design ideas and TRIZ innovative approaches, a patent portfolio design model is proposed in this paper, which is based on the enterprise’s core technology. Basing on this model, the TRIZ based portfolio design process is developed via matching the TRIZ innovative methods and the types of patent portfolio and constructing patent portfolios using homologous TRIZ innovative methods. Taking TRIZ as the basic theory and synthesizing innovative methodologies, patent jurisprudence, and management, interdisciplinary research of collaborative innovative design is conducted.

Intellectual Property in Vaccine Innovation: Impact of Recent Patent Developments.

This chapter examines the issues on patentability of microorganisms and human genes under the US laws and analyzes their influence on vaccine innovation. The analysis will focus on three aspects, namely, the naturally existing state, unmodified isolated form (i.e., mere extraction from the natural environment), and human-modified/genetically engineered structure. The outcome of the assessment suggests that the impact of the recent US patent jurisprudence on vaccines may differ significantly depending on whether the preparation of a vaccine in question involves natural or man-made DNA material.

The Supreme Assimilation of Patent Law

Although tensions between universality and exceptionalism apply throughout law, they are particularly pronounced in patent law, a field that deals with highly technical subject matter. Focusing on this tension, this Article explores an underappreciated descriptive theory of recent Supreme Court patent jurisprudence. Commentators observe that the Court has reined in expansive Federal Circuit patent doctrine and established holistic standards to replace bright-line rules. This Article augments these prevailing interpretations by exploring another. Building upon and significantly extending previous scholarship, it argues that the Supreme Court’s recent patent jurisprudence reflects a project of eliminating “patent exceptionalism” and assimilating patent doctrine to general legal principles. In a variety of areas including appellate review of lower courts and agencies, jurisdiction, remedies, and the award of attorney’s fees, the Federal Circuit has developed rather exceptional doctrine for patent cases. However, the Supreme Court has consistently eliminated such exceptionalism, bringing patent law in conformity with general legal standards. Among other observations, the Supreme Court’s intervention reveals its holistic outlook as a generalist court concerned with broad legal consistency, concerns which are less pertinent to the quasi-specialized Federal Circuit. The Article concludes by arguing in favor of selective, refined exceptionalism for patent law. Although the Supreme Court should strive for broad consistency, this Article argues that unique features of patent law — particularly the role and expertise of the Federal Circuit — justify some departure from general legal norms. Finally, this Article turns to tensions between legal universality and exceptionalism more broadly, articulating principles to guide the deviation of specialized areas of law from transcendent principles.

Building national initiatives of compulsory licences

Purpose– The purpose of this paper is to examine the extent to which developing countries could build national initiatives of compulsory licences.Design/methodology/approach– The focus of this article is only on developing countries. The author reflects on the Indian patent jurisprudence regarding the operational relationship between the general principles applicable to working of patented inventions locally and the grant of compulsory licences. The discussion that follows is based on a review of the case: Bayer Corporation versus Natco Pharma with a view to presenting a model for developing countries to maintain that the public interest principle of patent law is well-founded in their domestic patent regimes.Findings– The analysis confirms that failure to work locally continues to be abusive of the patent right under the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, and remains a valid condition on which to grant a compulsory licence. Thus, this reverses the often-contrary misconception that has become almost a unanimous assumption that failure to work basis for granting compulsory licensing would violate Article 27(1) of TRIPS and its enforcement provisions on patent.Originality/value– The author argues that as no member state has challenged the legality of Indian’s decision in the World Trade Organisation, under the dispute settlement understanding (DSU) system is more supportive of the contention that failure to work locally continues to be permissible under TRIPS and remains valid conditions on which member states can grant compulsory licences. This further adds weight to the understanding that nothing in the light of TRIPS would, in fact, preclude any possibility of developing countries amending their patent laws accordingly to maintain that the public interest principle underlining patent law is well-founded in their domestic patent regimes.

The Question for Wide Circle: How Long You Should Endure Yet Patent Systems Without the Legal Definitions of Invention and its Derivation - Patentable One?

The patent systems lack logic. These postulates something phenomenon called ‘invention’, but in fact no satisfactory legal definition of ‘invention’ has ever appeared, and the courts, in their search for guiding rules, have produced an almost incredible tangle of conflicting doctrines and the needful decisions are often made by the help of case law. Aaron X. Fellmeth, professor of Law (USA, 2012) has accentuated this situation especially pointedly: “After 220 years of progressively developed patent statutes and jurisprudence, the concept of invention, so central and fundamental to patent law, has become one of the most misunderstood”. Honestly, majority patent systems, including large ones as USA, Germany, United Kingdom, etc. and international agreements and conventions - TRIPS, PCT, EPC have not been able to this day to define the basic concepts of patent law - ‘invention’ and its derivation - ‘patentable one’. It should be also patent practitioners concern who are preparing for Unitary Patent and Unified Patent Court nowadays. In this connection professor of law Lemley, Mark A. (USA, 2012) has mentioned thought-provokingly in his scholarly paper ‘Point of Novelty’: “We award patents to inventors because we hope to encourage new ideas. For this reason, the fundamental requirement for getting a patent is that you have invented something new. It is curious, then, that patent law itself purports to pay no attention to which aspects of a patentee’s invention are in fact new. A patented invention is legally defined by its claims - written definitions of the invention. And those written definitions virtually never call out what it is that is new about the patentee’s invention... As that court (United States Court of Appeals - T.T) has put it, there is no legally recognizable . . . ‘gist,’ or ‘heart’ of the invention”. In this paper I dare to point out and once more verify (in addition to my earlier papers) that there is still exists legally recognizable ‘gist’ or ‘heart’ of the invention, namely the novel inventive idea for solving concrete (old or new) technical problem. Therefore in the future we must in addition to the technical features meet in the claim of a patented invention - written definition of the invention - the explicitly formulated concrete technical problem and for solving it n o v e l inventive idea what the patentee actually created, i.e. all in all in fact a new thing (in the case in question - information or knowledge item as the patentable invention) that did not exist before. And as the result of it the updated claim construction will correspond to the legal definition of patentable invention and the claim of concrete patentable invention would successfully and concurrently replace traditional summary of essence of the invention in the patent application as well in the title page of patent document. In order to comprehend the latter it must be first make clear that Patent Law as property one does not create things. Patent Law only provides a structural framework and a set of rules that specify and control the legal relationships between persons and intangible things. Thus inventive idea exists even in the absence of all law. And it can be considered as axiom, that due to the nature of such idea, it cannot be possessed if others know it. In any case the inventive idea, as legally recognizable ‘gist’ or ‘heart’ of the invention must be novel before the invention can be considered as property. It does not also forget that the most general meaning of the notion ‘invention’ in the present context is ‘the act of inventing’.

THE PROPER ROYALTY BASE FOR PATENT DAMAGES

How should a court determine the proper royalty base when calculating either reasonable-royalty damages for patent infringement or fair, reasonable, and nondiscriminatory (FRAND) royalties for infringement of, or licensing disputes over, standard-essential patents (SEPs)? This determination is particularly challenging in the context of a multi-component device, such as a smartphone. It is established patent jurisprudence that a reasonable royalty should reflect the terms of a hypothetical license resulting from a voluntary negotiation between a willing licensor and a willing licensee at the moment just before first infringement. In real-world patent negotiations, firms often calculate royalties with reference to the retail price of the downstream product. Therefore, using that downstream retail price as the royalty base is the most authentic assumption about the royalty base that a court could use for a hypothetical negotiation between a willing licensor and a willing licensee. Nonetheless, as a result of a recent series of confusing and contradictory opinions, the Federal Circuit in all but exceptional cases now decidedly favors using, for purposes of the hypothetical negotiation, a royalty base equivalent to the price of the infringing product’s “smallest salable patentpracticing component” instead of the “entire market value” of the product. In cases where the downstream product is the “smallest salable patent-practicing component” and unpatented features constitute a substantial proportion of the product, the Federal Circuit favors subtracting the value of these unpatented elements from the royalty base. This development in the law of the entire market value rule (EMVR) has perverse consequences that the Federal Circuit has yet to recognize. Using the price of the smallest salable patent-practicing component as the royalty base risks undercompensating the patent holder, because it ignores (1) the effects that the patented technology has on the value of the downstream product and (2) the value that synergies between complementary technologies create. A more complete economic approach would account for such complementarity effects by permitting the use of the retail price of the downstream product as the royalty base. The Federal Circuit’s choice of royalty base in its EMVR jurisprudence seems based on a theory that juries tend to overcompensate patent holders due to cognitive bias. However, the Federal Circuit fails to explain

The Proper Royalty Base for Patent Damages

How should a court determine the proper royalty base when calculating either reasonable-royalty damages for patent infringement or fair, reasonable, and nondiscriminatory (FRAND) royalties for infringement of, or licensing disputes over, standard-essential patents (SEPs)? This determination is particularly challenging in the context of a multi-component device, such as a smartphone. It is established patent jurisprudence that a reasonable royalty should reflect the terms of a hypothetical license resulting from a voluntary negotiation between a willing licensor and a willing licensee at the moment just before first infringement. In real-world patent negotiations, firms often calculate royalties with reference to the retail price of the downstream product. Therefore, using that downstream retail price as the royalty base is the most authentic assumption about the royalty base that a court could use for a hypothetical negotiation between a willing licensor and a willing licensee. Nonetheless, as a result of a recent series of confusing and contradictory opinions, the Federal Circuit in all but exceptional cases now decidedly favors using, for purposes of the hypothetical negotiation, a royalty base equivalent to the price of the infringing product’s “smallest salable patent practicing component” instead of the “entire market value” of the product. In cases where the downstream product is the “smallest salable patent-practicing component” and unpatented features constitute a substantial proportion of the product, the Federal Circuit favors subtracting the value of these unpatented elements from the royalty base. This development in the law of the entire market value rule (EMVR) has perverse consequences that the Federal Circuit has yet to recognize. Using the price of the smallest salable patent-practicing component as the royalty base risks undercompensating the patent holder, because it ignores (1) the effects that the patented technology has on the value of the downstream product and (2) the value that synergies between complementary technologies create. A more complete economic approach would account for such complementarity effects by permitting the use of the retail price of the downstream product as the royalty base. The Federal Circuit’s choice of royalty base in its EMVR jurisprudence seems based on a theory that juries tend to overcompensate patent holders due to cognitive bias. However, the Federal Circuit fails to explain the logic and limits of its concern over cognitive bias. It therefore fails to justify its preference for the smallest salable patent-practicing component and risks undercompensating patent holders. Finally, I show that risk-averse firms should prefer structuring damages awards in a manner that reduces errors. This analysis of risk bearing indicates that, if a royalty with a low rate and high base is more accurate than one with a high rate and low base, courts should use the EMVR when awarding damages. The Federal Circuit’s jurisprudence on patent damages currently ignores this concern.

Are Human Genes Patentable?

This commentary reviews the events leading to the Supreme Court decision regarding Myriad Genetics patents on the BRCA1 and BRCA2 genes. Those developing molecular diagnostics will have to comport ...

What is the standard of review for patent litigation in Canada?

In Canada patents are administratively granted by the Commissioner of Patents. Yet administrative law principles have never been applied when determining the validity of a patent during litigation. Courts have always proceeded on the basis of a trial de novo to determine whether (on a balance of probabilities) the patent was indeed valid and properly granted. This paper examines the apparent tension between the Patent Act, patent jurisprudence and administrative law principles in litigating the validity of a patent.

Open Source Innovation, Patent Injunctions, and the Public Interest

This Article explores the difficulties that high technology markets pose for patent law and, in particular, for patent injunctions. It then outlines the ways in which “open source innovation” is unusually vulnerable to patent injunctions. It argues that courts can recognize this vulnerability, and respond to the particular competitive and innovative benefits of open source innovation, by flexibly applying the Supreme Court’s ruling in eBay v. MercExchange. Having dealt with the lamentable failure of the International Trade Commission to exercise a similar flexibility in its own patent jurisprudence, despite statutory and constitutional provisions that counsel otherwise, the Article concludes with some recommendations for reform.