Does David Need A New Sling? Small Entities Face a Costly Barrier to Patent Protection, 4 J. Marshall Rev. Intell. Prop. L. 184 (2004)

The cost of enforcing patent rights is discouraging the small-entity inventor from seeking out patent protection. The United States Patent and Trademark Office favors the “small entity” by reducing fees, but the world of infringement litigation offers no such discount. For the small entity, the costs related to asserting or defending its patent rights against a well-funded adversary often exceed the benefits of patent ownership. These inventors, in weighing the high costs of patent protection against the potential profits, may simply choose to not patent their innovations. Such a decision would deprive the public of the invention’s disclosure and ultimately contribute to defeating the purpose of the patent system. This comment proposes several solutions to the financial dilemmas faced by small entities when evaluating whether the benefits of disclosing an innovation are worth paying the often high price of patent protection

The Marriages of Intellectual Property & Insurance

The marriages of Intellectual Property and Insurance may sound a magical word for all those companies which are playing the game of intellectual property in their business. These companies manage their intellectual property under the guidance of IP management and an IP policy in the company. These companies earn a huge amount of money in this game; but there are also chances for the companies to face the risks ahead. These expected risks can be minimized to some extent, if the companies understand the meaning and the importance of this new term “Intellectual Property Insurance”. In order to make the companies appreciate the depth significance of the term, the paper is written and the paper emphasizes the need of IP insurance in the business, the role of IP insurance in mitigating the risks involved in the business and the framework of IP insurance policy etc.Intellectual Property, Insurance, Intellectual Property Insurance

A Budding Theory of Willful Patent Infringement: Orange Books, Colored Pills, and Greener Verdicts

The rules of engagement in the brand-name versus generic-drug war are rapidly changing. Brand-name manufacturers face increasing competition from Canadian manufacturers of generic drugs, online drug companies, and Wal-Mart® Super Centers deciding to cash in by turning a piece of the generic prescription drug business into a huge marketing campaign with offerings of generic drugs for four dollar prescriptions. Other discount drug providers are likely to follow suit in hopes of boosting customer traffic and sales of their generic drugs. Now, more than ever before, attorneys representing owners of pharmaceutical patents need to be creative with their damages theories to maximize recovery and help their clients recoup the investments in research and development necessary to bring new and innovative drugs to the marketplace. This article suggests a novel theory of willful infringement to assist a patent owner in recovering treble damages and attorneys’ fees

Practice and procedure: Federal Court Rules O23 r 11 - offers of compromise - offer for dismissal of claim and to forego recovery of costs

In Uniline Australia Ltd ACN 010752057 v S Briggs Pty Ltd ACN 007415518 (No 2) [2009] FCA 920 Greenwood J considered a number of principles guiding the exercise of discretion in relation to costs, particularly when offers of compromise have been made under the formal process provided by the Federal Court Rules

The Licensing Function of Patent Intermediaries

The contemporary patent marketplace is a complex ecosystem comprised of innovators and manufacturers who are often connected by a varied group of intermediaries. While there are a variety of intermediary business models—such as patent assertion entities and defensive aggregators—each facilitates a variant of a similar licensing transaction, connecting a set of patents held by a patent owner with a product or service offered by a prospective licensee. One explanation for the prevalence of intermediaries is that they engage in practices tantamount to arbitrage, acquiring patents and then licensing them at a profit because they enjoy greater success in patent litigation than patent holders would on their own. This paper advances an additional explanation: some intermediaries may serve a function analogous to a platform trading in non-exclusive licenses, overcoming search and valuation costs to facilitate licensing. This paper focuses on the use of two contract terms in intermediaries’ dealings with technology market participants: revenue sharing in patent acquisition and non-exclusive licensing. The Federal Trade Commission’s Patent Entity Activity Study reported that intermediaries used both of these terms. Building on those findings, this paper argues that intermediaries that use both provisions may, under some conditions, operate in a manner analogous to a two-sided platform. First, this paper examines how participants in a technology market would value non-exclusive licenses granted ex post, after the licensed product is already on the market. The paper argues that—in addition to the avoidance of litigation costs— the reduction of uncertainty can also drive licensee demand. Next, the paper proposes that use of revenue sharing allows patent holders to experience network effects from the number of prospective licensees accessed through the intermediary, which may make the intermediary more attractive than licensing unilaterally. Finally, this paper argues that the conduct of a patent licensing intermediary using these contract features can be analogized to the practices of other licensing intermediaries such as performing rights organizations and patent pools. These observations suggest that one explanation for the success of some intermediary models—as well as one aspect of their conduct that may influence competition in technology markets—is their ability to connect patent holders and prospective licensees with a greater number of potential trading partners than they would otherwise be able to connect with on their own

Willful Infringement and the Evidentiary Value of Opinion Letters After Knorr–Bremse v. Dana

Recently, the Federal Circuit in Knorr-Bremse v. Dana overruled almost twenty years of precedent by striking down the adverse inference doctrine, which had created a negative presumption against any alleged patent infringer for failing to obtain and disclose a patent opinion letter at trial. The decision, while strongly supported by numerous intellectual property and business associations, has created uncertainty for patent attorneys regarding the use of opinion letters in litigation and the acceptable methods for proving willful infringement. This iBrief addresses two specific questions left unanswered by the decision. It concludes that (1) Federal Circuit precedent strongly suggests that the plaintiff may inform the fact-finder that the alleged infringer failed to consult legal counsel, and (2) willful infringement findings can probably be avoided even absent an opinion from counsel, as long as the alleged infringer makes a showing of good faith intent to avoid infringement

International patent protection: Time for a fully EU functioning supra-national patent mechanism

Larger industrial companies have become increasingly global in their functions and aspirations. With regard to patents, it is increasingly common for a multinational company to face alleged infringing acts committed by the same competitor in several countries. Securing international patent protection both at the acquisition and the enforcement stage is the corollary to the cross border exploitation of patents. The regulation of transnational trade and the international exploitation of patent rights have brought about international agreements concerning these closely related issues, such as international patent granting power, international harmonization of patent laws and uniform systems of jurisdiction and choice of law rules applicable to patent enforcement as well as other areas. However, there is an increasingly strained relationship between international patent acquisition and enforcement1 which is the dominant focus of this paper. Whilst a network of international agreements facilitates the grant of increasingly similar patent rights in many countries, cross border patent enforcement through the application of the relevant private international rules has been very weak. From a private international law perspective, the legal independence and territorial limitations of patent rights has severe implications for the application of the relevant jurisdictional and choice of law rules. Therefore, cross-border adjudication has indeed been challenged in the patent area. This paper seeks to focus on the problems associated with acquiring and enforcing patent rights at a multijurisdictional level, particularly within the EU

A Fair Use to Remember: Restoring Application of the Fair Use Doctrine to Strengthen Copyright Law and Disarm Abusive Copyright Litigation

The primary goal of copyright law is to benefit the public. By rewarding authors with exclusive rights, such as the power to enforce copyright infringement, copyright protection is the means through which copyright law accomplishes this goal. Another way that copyright law pursues its goal is through the fair use doctrine—an invaluable utilitarian limit on copyright protection. However, fair use is, among other things, vague. The current application of fair use as an affirmative defense magnifies the doctrine’s problems and makes copyright law hospitable to abusive copyright litigation. Current proposals in this area of reform target either fair use or abusive copyright litigation. This Note targets both problems with a single solution: applying fair use as a right. Applying fair use as a right alleviates some of the doctrine’s inherent problems and is the best long-term solution for eliminating abusive litigation from copyright law. As a right, fair use protects copyright’s core values and goals, alleviates the burden on courts, and cultivates creation. A review of the motivation behind fair use reveals that as a right, fair use is best able to serve the purpose for which it was designed