Dream and Representation

The article analyses the relationship between dreams and stories and the underlying existential significance of both. Man is not the only animal who dreams, but he is the only living being who can communicate to his fellow creatures what he dreams and invents, through words and images

A Free Bite at the Apple: How Flawed Statutory Drafting Has Undermined the Purpose of the Patent Trial and Appeal Board

In the years before Congress passed the America Invents Act, patent litigation became exorbitantly expensive. Congress created three types of proceedings before the Patent Trial and Appeal Board (PTAB), which were intended to provide a cheaper and more cost-effective alternative to district court litigation over patent validity. A major factor in ensuring that the PTAB proceedings effectively substituted for district court litigation was a harsh estoppel provision that prevented any petitioner from relitigating any issue which was raised or reasonably could have been raised during the PTAB proceeding. The Federal Circuit, however, recently applied a narrow interpretation to the estoppel provision which jeopardizes the ability of PTAB proceedings to replace district court litigation. While it would be easy to place all the blame on the Federal Circuit for defanging the estoppel provision, this Note argues that the failure of PTAB proceedings to substitute for district court litigation ultimately stems from poor drafting within the America Invents Act. The combination of broad Patent and Trademark Office (PTO) substantive rulemaking power, unreviewable PTAB decisions to institute, and a sweeping estoppel provision doomed PTAB proceedings to failure. This Note offers that Congress must update the language of the statute itself in order to effectively address the issues presented by this combination

Patent Reform and Best Mode: A Signal to the Patent Office or a Step Toward Elimination?

On September 16, 2011, President Obama signed the America Invents Act (AIA), the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law\u27s best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. The AIA still requires patent applicants to disclose the best mode, but has removed the traditional enforcement mechanisms – declarations of invalidity and unenforceability – as defenses to patent infringement. In this article, I propose and explore a couple innovative techniques that could be used to add teeth to the seemingly toothless best mode requirement. Ultimately, I reject these proposals as not being workable solutions and suggest that Congress\u27s resolution of the best mode problem is nonsensical and that it should completely eliminate the requirement rather than sending mixed signals to the Patent Office and patent practitioners

Taboo, the Game: Patent Office Edition—The New Preissuance Submissions Under the America Invents Act

Thorough patent examination ensures that issued patents confer constitutionally granted incentives to innovate but do not create inappropriately broad monopolies. Examiners at the United States Patent and Trademark Office are alone tasked with striking this proper balance, in part by searching the universe of existing published knowledge to determine the originality of the applied-for invention. In 2011, Congress enacted the Leahy-Smith America Invents Act, which included a provision allowing the public to present examiners with relevant publications that the examiners’ own searches might not otherwise uncover. However, this “preissuance submissions” provision and its related administrative rule are tempered by 35 U.S.C. § 122(c) (2006), which prohibits any third-party, pre-grant “protest or other form of [preissuance] opposition” to an application. Thus, although a party may describe to an examiner how its submission is relevant to an application, that party is prohibited from arguing how the submission renders that application unpatentable. This Note argues that Congress should amend § 122(c) to permit preissuance third-party argumentation for two reasons. First, the current scheme arguably violates that law already. Second, a rule allowing submitter argumentation would better incentivize participation by competitive parties who fear that examiners might not recognize their submitted publications\u27 full invalidating potential

Taboo, the Game: Patent Office Edition—The New Preissuance Submissions Under the America Invents Act

Thorough patent examination ensures that issued patents confer constitutionally granted incentives to innovate but do not create inappropriately broad monopolies. Examiners at the United States Patent and Trademark Office are alone tasked with striking this proper balance, in part by searching the universe of existing published knowledge to determine the originality of the applied-for invention. In 2011, Congress enacted the Leahy-Smith America Invents Act, which included a provision allowing the public to present examiners with relevant publications that the examiners’ own searches might not otherwise uncover. However, this “preissuance submissions” provision and its related administrative rule are tempered by 35 U.S.C. § 122(c) (2006), which prohibits any third-party, pre-grant “protest or other form of [preissuance] opposition” to an application. Thus, although a party may describe to an examiner how its submission is relevant to an application, that party is prohibited from arguing how the submission renders that application unpatentable. This Note argues that Congress should amend § 122(c) to permit preissuance third-party argumentation for two reasons. First, the current scheme arguably violates that law already. Second, a rule allowing submitter argumentation would better incentivize participation by competitive parties who fear that examiners might not recognize their submitted publications\u27 full invalidating potential

What Patent Attorney Fee Awards Really Look Like

This Essay provides an empirical account of attorney fee awards over the last decade of patent litigation. Given the current attention in legislative proposals and on the Supreme Court’s docket to more liberal fee shifting as a check on abusive patent litigation, a fuller descriptive understanding of the current regime is of utmost importance to forming sound patent-litigation policy. Following a brief overview of judicial experience in patent cases and trends in patent-case filing, this study presents analysis of over 200 attorney fee award orders from 2003–2013

Loser Pays in Patent Examination

Many scholars and practitioners believe there are too many “weak” patents—those that should not have issued but somehow get approved by the U.S. Patent and Trademark Office (PTO). To the extent they exist, such patents unnecessarily tax real innovation and generate welfare losses for society. Some commentators have focused on the PTO’s failure to exclude weak patents, or the damage caused by these patents in litigation, often by patent trolls. But this scholarly discussion misses the point. The present Article argues that weak patents largely stem from a pricing problem: namely, a patent applicant pays higher patent fees when she succeeds (i.e., receives PTO approval) than when she fails (i.e., is rejected by the PTO). The Article explains why such pricing is precisely backwards, penalizing good patent applications instead of bad ones. It then proposes a novel remedy: import “loser pays” concepts from litigation into patent examination. By forcing unsuccessful patent applicants to pay more, a loser-pays system disincentivizes weak applications and improves application quality. The Article also describes how a loser-pays system could lower patent examiners’ burden and discourage continuation applications, both of which slow down patent examination. In doing so, the Article sketches out a new patent system that is at once more efficient and more effective in weeding out weak patents

Checking the Staats: How Long Is Too Long to Give Adequate Public Notice in Broadening Reissue Patent Applications?

A classic property rights question looms large in the field of patent law: where do the rights of inventors end and the rights of the public begin? The right of inventors to modify the scope of their claimed inventions, even after the patent issues, is in direct tension with the concepts of public notice and the public domain. The Patent Act currently permits broadening of claims so long as a reissue application demonstrating intent to broaden is filed within two years of the original patent issue. Over the years, however, this relatively straightforward statutory provision has sparked numerous disputes over its meaning and application. On September 8, 2011, the Court of Appeals for the Federal Circuit heard oral arguments or In re Staats. In this case, Apple Computer, Inc. appeals the rejection of a continuation reissue patent application. The U.S. Patent & Trademark Office and the Board of Patent Appeals and Interferences rejected the application on the grounds that Apple attempted to broaden the scope of its patent claims in a manner not “foreseeable” more than eight years after the patent first issued. Apple contends that the language of the statute and prior case law permit its interpretation, and the application should be allowed in the interest of innovation. This issue is hardly a new one—this submission highlights nearly 140 years of case law, legislative history, and statutory shaping pertaining to broadening reissues. We analyze the issues raised in the briefs from Staats, as well as the oral arguments. Finally, we discuss from a practitioner’s perspective what the Federal Circuit could do—and should do—in the field of broadening reissues