US Patent Law Research Articles

Good appellate practice means explaining decisions: how the overuse of one-word affirmances harms US patent law

Abstract The US Court of Appeals for the Federal Circuit issues one-word decisions under Local Rule 36 in roughly one-third of the patent appeals it hears. Although US law allows for one-word decisions, they should be rare because parties, reviewing courts and the public need transparency in decisions; explaining decisions promotes accuracy and quality in decision-making and helps prevent inconsistent legal outcomes. The Federal Circuit issues many more one-word affirmances than other US Courts of Appeals, which disparately affects patent law, and needs to be addressed to avoid increasing unclarity in the law.

Artificial Intelligence and evolving issues under US copyright and patent law

The proliferation of AI tools in the arts, commercial design industries, and other endeavours has raised core questions regarding who or what actually supplied the alleged creative or inventive elements, if any, to the AI system’s output. In both US copyright and patent law the question focuses on a case-by-case analysis as to how much of the final product evidences human ‘authorship’ or invention. Also, creativity as well as infringement, can be located in various phases of the AI system’s creation, ingestion of training materials, management, and operation – including its output, whether affected prior to the output or after it. Issues such as liability for selecting ingestion materials or target data, as well as the potential inadvertent triggering of patent law’s bar date through use of specific AI systems, have also come to the forefront of AI’s potential to secure, forfeit, or impact claimed proprietary rights in AI-assisted creative and inventive activities. Several alternative intellectual property and unfair competition approaches that can supplement or supplant copyright and patent law principles also come into play as users of AI seek to protect the products of their efforts.

Reverse-Payment Settlements Under EU and US Patent Law: Convergence in Remedies

Abstract This paper investigates the existing case law on reverse-payment settlements from a comparative perspective, focusing on the US and EU panoramas. In this respect, we will illustrate the emergence of patent-related proxies in the anticompetitive assessment, which contaminate the antitrust benchmarks in a problematic way, with the effect of hampering patent law and policy. Primarily we will delve into seminal decisions in the EU framework. In this regard we will observe how the Court of Justice of the European Union (CJEU) shifted from a quick-look approach towards a case-by-case antitrust analysis of patent settlements, progressively neglecting, but not eliminating, patent-related presumptions. Then we will look at the fragmented US case law scenario. We will explore the various benchmarks deployed to challenge these agreements, highlighting the differences and similarities with the EU approaches. It will be concluded that a strong IP-law-based perspective about these agreements has arisen in both legal systems. This perspective orientates the anticompetitive assessment through quasi-absolute presumptions, hindering the consistency of competition law remedies and misrecognising the cruciality of patent law and policy. Therefore, we will try to outline that the intermingling of criteria adopted to scrutinise reverse-payment settlements and similar over-exclusionary strategies is pernicious under both antitrust and patent law.

Patenting Bias: Algorithmic Race and Ethnicity Classifications, Proprietary Rights, and Public Data

By focusing on patents for recent algorithms that incorporate publicly available data to yield automated racial and ethnic classification schemes, I provide a glimpse into how engineers and programmers understand and define racial and ethnic categories. Patents provide insights into how engineers and programmers encode assumptions about identity and behavior, due to disclosure provisions required by US patent law; similar requirements are present in patent laws throughout the world. Such disclosures provide insights that are otherwise unavailable for most proprietary assets. I further discuss how such classification tools, especially when combined with advertisement-based platforms such as social media, can amplify systemic racism present in the underlying data sets.

The Broad Institute Scores Another Victory in Its Battle with the University of California over the Patenting of CRIPSR

The Broad Institute Scores Another Victory in Its Battle with the University of California over the Patenting of CRIPSR

The public availability of online journal articles in United States patent litigation

Establishing the authenticity of published documents cited as prior art and determining their date of public availability are key factors in patent litigation.1 Litigants have long depended on library date stamps to provide evidence of the public availability of print journals. However, libraries subscribing to journals published online have nothing that can be date stamped. The increasing dependence of libraries on online journals creates a significant problem of evidence in challenging and defending patents and drives attention to indexing service citations as evidence of the public availability of documents. In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) is a touchstone decision in US patent law. The decision turned in considerable measure on the question of when indexing service citations for a document were available to ‘persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence’.2 In delivering its decision, the court delineated...

Protecting IP Licenses and Jointly Owned IP in the Age of COVID-19: Insolvency and Force Majeure Events under Japanese Law

This article provides an overview and discussion of a multitude of issues that are relevant for IP licensing under Japanese law. The authors recap the results of the legislative process that predominantly addressed the IP licensee’s position in the case of a licensor's insolvency, including the 2020 amendment to the Japanese Copyright Act, and examine whether a comprehensive reform of IP licensing regulations in Japan would be preferable to also offering better protection to trademarks, trade secrets and data licensees. Given that Japanese companies often agree on jointly owning IP generated in the process of software development and other co-development projects, we analyze the risks of joint ownership compared to non-exclusive licenses. To further illustrate such risks that may be even more significant in cross-border constellations, we conduct a comparative study on the actions that a party commissioning the development of new software can take without obtaining the software developer’s consent under Japanese, US and German patent and copyright law. Furthermore, we examine certain unresolved issues that may arise in the case of a party’s insolvency or the impact of force majeure events, and provide suggestions on how to address these when drafting and negotiating IP license agreements.

‘Enforcement of Patent Law in Civil Proceedings’ – A Conference Report on the Fifth Bi-national Seminar of TU Dresden and Charles University in Prague, 26 November 2019

Abstract What is the law good for if it cannot be enforced? This question is currently virulent in patent law, especially when it comes to the enforcement of injunctive relief claims. From the German perspective, a question arises: does a patent infringement have to automatically result in an injunction (as is the situation currently according to Sec. 139 of the Patent Law Act) or should exceptions be made in special cases? In particular, the automotive industry and also the IT sector demand a modernisation of this provision by introducing a proportionality test, as even the smallest patentable components in networked products can lead to the entire production being blocked in the event of a successful injunction action. Similar problems exist in US patent law. The enforceability of Czech patent law also faces challenges that need to be solved. For this reason, the fifth seminar on the topic ‘Enforcement of Patent Law in Civil Proceedings’ took place on 26 November 2019 at Charles University Prague.

Is Gene Editing Patentable?

Gene editing technologies offer enormous potential for scientific advancement in fields such as medicine and agriculture, but their use also raises serious ethical and public policy concerns. Although advisory groups like the World Health Organization question whether certain forms of gene editing should be permitted, the US Patent Office routinely issues patents protecting this technology. This article considers what the term patented means, provides an overview of the US patent system, and discusses the scope of patentable subject matter under US patent law and the role of ethical, safety, and legal considerations in the patent examination process.

The Executive Mechanism of Rastin Profit and Loss Sharing (PLS) Banking

Despite the interest of bankers for using Profit and Loss Sharing (PLS)[1] banking for the last decades, it has not prevailed yet executively. The existence of different definitions of Riba, absence of appropriate operational, supervisory, and managing mechanism on PLS are some reasons that haven't allowed this kind of banking to be practiced yet. Here, we are going to introduce a practical method for Profit and Loss Sharing (PLS) banking to overcome these problems. In this bank, the basis for determination of interest rate of loans is real economy return rate. The bank operates as an intermediary, who gets commission fee, collects saving resources and as an attorney or legal representative of the depositor, allocates them to investment projects, and supervises the detailed operation of the contractor. The yields of the investment will transfer to resources owners who are depositors whatever profit or losses.The PLS banking is a banking system with newly defined instruments of Mosharaka and Pazireh that not only stabilizes the financial and economic markets by preventing the banks, loanees /entrepreneurs and design, construction and contractor sectors in the economy from bankruptcy during crisis periods and volatile markets, but also makes the banks as an international firm which perform similar jobs as stock exchange markets for transactions of PLS products certificates through a secondary certificate market on virtual internet space. Depositors will earn more stabilized benefits too.In this designed method, a trustee (Amin) is a unit who supervise the contractor/entrepreneur operations on behalf of the bank for being honesty in carrying out the project, controlling on executive operations along with announced programs, resources allocation manner, and auditing financial statements.PLS banking will use new financial instruments and innovations such as Mosharaka (partnership) Certificates for projects with specific ends and Pazireh (Subscripted) Certificates for endless (productive) projects. Establishing of secondary exchange market for the transaction of certificates, and various insurance services will play important roles for activating and increasing the efficiency of newly established virtual markets.All of the activities in this method will be done on the basis of compiled instructions. The framework and the organization of the PLS banking have been analyzed in forms of required committees, units, and departments tailored for this type of Non-Usury Bank (NubankCo.) definition.
 JEL:L86 ,L87 ,G21 ,G24
 [1] - This invention has been protected by US patent law under the application number: US 12/588,188

Patenting nature-a comparative perspective.

ABSTRACTThe landscape for patenting products and processes tied to the natural world has changed dramatically in recent times as a result of a series of decisions of the US Supreme Court, particularly Mayo Collaborative Services v Prometheus Laboratories 566 U.S. 66 (2012) and Association for Molecular Pathology v Myriad Genetics, Inc. 569 U.S. 576 (2013) (Myriad). This article critically analyses these decisions and the multitude of lower court decisions that have followed them. This analysis provides support for the growing concern in the United States that it will be increasingly difficult to use the patent system to encourage the development of therapies and research intermediates useful in developing new therapeutic interventions. One option being posited in the industry to deal with this problem is to lobby Congress to reform the threshold patent eligibility standard in US patent law. It is argued in this paper that a more nuanced approach is preferable. Using the experience in Australia as a case study, this paper argues that such an approach is feasible. Australia has been chosen for analysis because the threshold patent eligibility standard is similar in both countries, much more so that with the European Union, and because the highest court in Australia has ruled on essentially the same patent as in Myriad, in D’Arcy v Myriad Genetics, Inc [2015] HCA 35. In addition to the nuanced approach to eligibility currently exercised by the Australian courts and patent office, Australia also has a number of post-grant options for addressing the dynamics of patent monopolies. These include experimental use, compulsory licensing, and government use. It is concluded that, while it would be impractical to attempt to replicate the Australian environment in the United States, there is no reason why some lessons can’t be learned from the Australian experience with patenting nature.

Inventions and Patents: A Practical Tutorial.

Patents are designed to protect and encourage creativity and innovation. Patenting a biomedical discovery can be a requirement before a pharmaceutical company or biotech entity will invest in the lengthy and capital-intensive drug development and clinical trials necessary to achieve patient benefit. Although scientists and clinicians are well versed in research publication requirements, patent descriptions and claims are formatted in a manner quite different from a research paper. Patents require (a) a series of logical statements clearly delineating the boundaries of the novel aspects of the invention and (b) sufficient disclosure of the invention so that it can be reproduced by others. Patents are granted only for inventions that meet three conditions: novelty, non-obviousness, and usefulness. Recent changes to US patent law limit the scope of patentable material. Products of nature such as nucleic acids and proteins, or steps used to observe natural events, are no longer patent eligible. This chapter provides basic guidelines and definitions for inventions, inventorship, and patent filing which are summarized using a question and answer format.

Acquiring patent search reports with no fear of wilful infringement under US patent law

To make a business decision, a company may conduct a patent search to make sure that it will not infringe patents or that the technology under development will be patentable. Because a patent search may relate to technology development, a company must be aware of wilful infringement caused by acquiring a patent search report. Wilful infringement occurs when ‘the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.’ If wilful infringement is established, courts may award treble damages to the patentee. By producing a patent search report, a company may be proved to learn an objectively high risk of patent infringement. Therefore it is necessary to analyse the risk of acquiring a patent search report and to figure out how to prepare a riskless report. This article discusses five types of patent search report and identifies how each type may lead to wilful infringement. Further, drawing from the case law, this article provides five points which help prepare a riskless report: (i) retaining a competent counsel; (ii) being honest to your opinion counsel; (iii) framing reasonable claim construction; (iv) providing a comprehensive analysis rather than conclusory statements; (v) focusing on prosecution history estoppels.

Having a patent department alone cannot constitute a specific intent to cause direct infringement under US patent law Apeldyn Corp. v AU Optronics Corp., 522 F. App'x 912, 912 (Fed. Cir. 2013)

Having a patent department alone cannot constitute a specific intent to cause direct infringement under US patent law Apeldyn Corp. v AU Optronics Corp., 522 F. App'x 912, 912 (Fed. Cir. 2013)

Proposed amendments to US patent law: will this affect the reality of patent litigation practice?

Proposed amendments to US patent law: will this affect the reality of patent litigation practice?

The Future of Prenatal Molecular Diagnostics: Impact of the Changing Patent Landscape

*Fox Rothschild LLP, 2000 Market Street 20th Floor, Philadelphia, PA 19103-3222, USA E-mail: TRachinsky@foxrothschild.com Recent developments in US patent law will provide both challenges and opportunities for creating effective intellectual property and commercialization strategies for prenatal molecular diagnostic methods and may ultimately influence provider and patient access to certain tests. In Mayo v. Prometheus [1], the US Supreme Court addressed the legal standards for patent-eligible subject matter under 35 USC §101, with important implications for patents directed to diagnostic methods. In general terms, the patents-in-suit [101,102] claimed methods of optimizing the therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder by: administering a drug to a subject; and determining levels of drug metabolite(s), wherein the assayed metabolite levels are compared with predetermined levels to determine whether there is a need to increase or decrease the amount of drug administered. Under US patent law, certain subject matter is not eligible for patenting. Such patent-ineligible subject matter includes laws of nature, natural phenomena and abstract ideas. According to the Court, the relationship between the concentration of metabolites in the blood and the likelihood that a drug dosage would be effective constitutes a patent-ineligible ‘law of nature’. The Court then looked to see whether the claims additionally included an “inventive concept”, particularly one that is not a “well-understood, routine, conventional activity”, which would transform “unpatentable natural laws into patent-eligible applications of those laws”. Finding none, the Court held that the claims of the patents ‘effectively claim the underlying laws of nature themselves’ and are thus invalid. In its decision in AMP v. Myriad [2], the Supreme Court addressed the issue of patent-eligible subject matter for composition of matter claims directed to isolated nucleic acid molecules. Reversing years of US patent policy, the Court held that isolated (genomic) DNA segments are not patent-eligible, finding them to be products of nature. In contrast, cDNA were held to be patent-eligible subject matter, since such molecules are not naturally occurring. While the Myriad Supreme Court did not address diagnostic method claims, its decision impacts the validity of claims directed to isolated DNA molecules used in diagnosis. What may be of even greater concern is that, in view of the Court’s efforts to delineate what constitutes a ‘product of nature’ in the biotechnology context, its decision in Myriad may call into question the patentability of other isolated

Ms P Sita: nothing ordinary about her

In 2013 the Intellectual Property Appellate Board (IPAB) issued several decisions, including the one discussed in this note, whereby it sought to raise the standard of non-obviousness of an invention in India by ruling that the legal fictitious person who serves as a reference for determining or evaluating whether an invention involves an inventive step and thus is non-obvious is Ms P Sita (a person skilled in the art, who has more than average knowledge of the state of the art and who also has some common sense). Such person is not at all ordinary and is not the same as Mr PHOSITA (the person having ordinary skill in the art) as referenced by US patent law and who is ordinary by definition.

Does Management of Intellectual Property Matter?

A change in US patent law in the early 1980’s increased the value of patents, particularly for firms in the electronics and semiconductors industry, yet many of the industry’s leading firms did not embrace patenting after the change. We show through an in-depth study of International Business Machines (IBM), the world’s largest patentee, that the company’s practices during much of the 80’s discouraged patenting. IBM adopted pro-patent management practices in 1989 after the installation of a new R&D head and in the face of faltering financial performance. IBM’s increased patenting and licensing activities improved its financial bottom-lines but curtailed its industry-wide knowledge spillovers. These causes and consequences of pro-patent practices are visible in several other large US corporations. Thus, in the context of the “patent explosion” of the 1980’s, we show that intraorganizational forces such as inertia, financial pressures, and new leadership shaped established firms’ uptake of pro-patent management practices and their success. Our findings also suggest that pro-patent practices associated with “open-innovation” may stem the free flow of knowledge across organizational boundaries.

Inside the new US patent law

Inside the new US patent law

Patent Office Practice after the America Invents Act

Currently, the Patent and Trademark Office (PTO) requires all lawyers practicing before it in patent matters to possess a hard science or engineering undergraduate degree. The relative obscurity of PTO practice has allowed this requirement to remain, mostly unnoticed, even though it bars most lawyers from practicing before the PTO. Like all administrative agencies, however, the PTO is subject to the requirements of the Administrative Procedures Act (APA). Although the PTO’s technical degree requirement may have once passed muster under the APA, this may no longer be the case. Congress recently made major changes to US patent law by passing the America Invents Act (AIA). The AIA at once makes PTO practice far more important and brings into question whether the PTO can continue to exclude the vast majority of lawyers from practicing before it. This article suggests that the increased importance of PTO practice after the AIA creates a strong incentive for attorneys to challenge the PTO’s admissions requirements under the APA and argues that such a challenge, when brought, will likely succeed.