Patent Prior Art and Possession

Prior art in patent law defines the set of materials that the United States Patent and Trademark Office (USPTO) and courts use to determine whether the invention claimed in a patent is new and nonobvious. One would think that, as a central, crucial component of patent law, prior art would be thoroughly theorized and doctrinally coherent. Nothing could be further from the truth. The prior art provisions represent an ad hoc codification of various policies and doctrines that arose in the courts. This Article provides coherency to this morass. It posits a prior art system that draws upon property law’s conception of possession. Possession operates when an actor asserts dominion over a resource or object in a way that communicates that assertion to third parties. In this way, public availability becomes the key lodestar to prior art. In the prior art context, the possession framework would divide prior art into two categories: prior art generated by third parties and prior art generated by the patent applicant herself. The former would require clear demonstration of publicly available information, suggesting that current law is wrong. As for the latter, a possession approach could treat inventor-generated material in the same way as third-party prior art. Alternatively we could take a strict statute of limitations approach to inventor-created uses and commercialization efforts, barring a patent if the inventor simply delays too long in filing her application, regardless of the public accessibility. Sadly, the status quo is an inconsistent blend of both. Finally, some forms of “secret prior art” should be addressed through administrative procedures. The Article then assesses the advantages and disadvantages of such a prior art system, concluding that the benefits outweigh any disadvantages. It then also explores how patent law has done heavy lifting in the context of possession and public accessibility that property law has not. Patent law has more rigorously explored the appropriate audience for receiving the communications of possession. Property law stands to learn from patent law in this regard

Is There a New Extraterritoriality in Intellectual Property?

This Article proceeds as follows. Part I discusses the state of the law of extraterritoriality in copyright, trademark, and patent, as it stood before the Supreme Court’s recent intervention. This review demonstrates that all three disciplines were treating extraterritoriality very differently, and none were paying much attention to the presumption against extraterritoriality. Part II reviews a tetralogy of recent Supreme Court cases, describing the Court’s attempt to formalize its approach to extraterritoriality across all fields of law. Part III analyzes the state of IP law in the aftermath of this tetralogy of extraterritoriality cases. It concludes that there has been some impact on patent law, but virtually none on copyright or trademark. The Article assesses whether there is a new extraterritoriality for intellectual property and concludes that there is not: The Supreme Court’s efforts, at least in IP, have not led to greater coherence. While there may be reasons for the lower courts’ failure to follow the framework, it does represent a missed opportunity for cross-fertilization, at least among intellectual property regimes, if not across all fields of law. It also offers a call for the consideration of comity—looking to foreign law and potential conflicts—in deciding whether to apply U.S. law extraterritorially

The Expressive Impact of Patents

Patents represent a quid pro quo between the public and the inventor: in exchange for disclosing the invention, the inventor receives the right to exclude others from practicing her invention. They therefore serve as a source of technical information. Patents also communicate information to markets and companies that serve to reduce various transaction costs, allowing more efficient transactions and investment. Patents consequently communicate various types of information beyond the technical. There is no reason, however, that such messages must be limited to the technical or the pecuniary. This Article explores whether patents, like other governmental acts such as legislation, can create expressive harms. The grant of a patent could communicate a message of inferiority to groups whose identity is tied to their biology. The article analyzes this potential through the paradigm of granting patents on a “gay gene” or other biological process that predisposes a person toward a homosexual orientation. Other conditions implicated by my thesis are the deaf, dwarfs, and high-functioning autistics. These groups do not regard themselves as pathological or in need of “curing,” yet genetic discoveries offer the potential for their elimination through what is effectively privatized eugenics. The grant of a patent on such technologies affords the government’s imprimatur of such controversial technologies. The Article first reviews the scientific status of homosexuality. It then explores whether patents regarding sexual orientation could be a moral signal of inferiority by the government by suggesting that gays and lesbians are pathological. Finally, the Article offers various prescriptions to address this problem

The Return of the Supreme Court to Patent Law

The diverse set of patent-related cases decided by the Supreme Court has demonstrated that the Court is not only concerned with narrow issues that generally fall within the penumbra of constitutional issues. Instead, the recent set of cases selected for certiorari primarily related to the core aspects of patent law. During this unsettled period in patent law, with calls for reform coming from commentators and Congress itself, the Court is beginning to articulate its viewpoints on the appropriate scope of protection afforded by patents. The following section discusses the most recent cases before the Court that either are patent cases or that have potential consequences for patent law. Moreover, I also discuss one case that the Supreme Court dismissed as having granted certiorari improvidently, given the lively and insightful dissents to that dismissal

Patents, Presumptions, and Public Notice

Patents are peculiar legal instruments in that they contain both technical and legal information. This Janus-like nature of the documents is important because they serve the legal purpose of affording the owner the right to exclude others from practicing the invention, and third parties need to be able to assess the scope of that right. At the same time, through the patent’s disclosure, the document is intended to contribute to the storehouse of technical knowledge. Superficially, patents are generally viewed through the eyes of the hypothetical person having ordinary skill in the art (PHOSITA), patent law’s “reasonable person.” Unfortunately, the U.S. Court of Appeals for the Federal Circuit has marginalized the PHOSITA by treating the document, particularly in claim construction and in assessing the sufficiency of the patent’s disclosure, as a purely legal document. While this shift is understandable, it is also unfortunate. Possible justifications for the court’s move are unpersuasive. For instance, from the ex ante perspective, the court may hope to encourage future applicants to provide better disclosures. As this Article explains, that argument fails because the court’s legal standards are too vague and the lapse of time between the application and a competitor’s review of the patent causes informational asymmetries for which the applicant cannot account. From an ex post perspective, this shift may assist lay judges and juries in evaluating patents, but such a result is the problem—this treatment reduces the technical value of the patent and incentivizes future applicants to treat the disclosure in a legal fashion, not as a technical resource. To balance the interest in public notice with the technical nature of the patent, this Article posits the use of presumptions. Courts should use the intrinsic evidence—the patent and the prosecution history—to generate a presumptive conclusion as to the construction of the patent or the sufficiency of the patent’s disclosure. Then, the court should resort to the extrinsic evidence to determine whether the legalistic conclusion reached should be rejected in light of the understanding of technologists in the relevant field. In this way, the default position for courts is interpretation afforded by the intrinsic record, enhancing public notice. This default, however, can be rebutted when facts regarding the technical import of the document are brought to bear, bringing the viewpoint of the PHOSITA into the calculus

The Expressive Impact of Patents

Patents represent a quid pro quo between the public and the inventor: in exchange for disclosing the invention, the inventor receives the right to exclude others from practicing her invention. They therefore serve as a source of technical information. Patents also communicate information to markets and companies that serve to reduce various transaction costs, allowing more efficient transactions and investment. Patents consequently communicate various types of information beyond the technical. There is no reason, however, that such messages must be limited to the technical or the pecuniary. This Article explores whether patents, like other governmental acts such as legislation, can create expressive harms. The grant of a patent could communicate a message of inferiority to groups whose identity is tied to their biology. The article analyzes this potential through the paradigm of granting patents on a “gay gene” or other biological process that predisposes a person toward a homosexual orientation. Other conditions implicated by my thesis are the deaf, dwarfs, and high-functioning autistics. These groups do not regard themselves as pathological or in need of “curing,” yet genetic discoveries offer the potential for their elimination through what is effectively privatized eugenics. The grant of a patent on such technologies affords the government’s imprimatur of such controversial technologies. The Article first reviews the scientific status of homosexuality. It then explores whether patents regarding sexual orientation could be a moral signal of inferiority by the government by suggesting that gays and lesbians are pathological. Finally, the Article offers various prescriptions to address this problem

The Supreme Court\u27s Quiet Revolution in Induced Patent Infringement

The Supreme Court over the last decade or so has reengaged with patent law. While much attention has been paid to the Court’s reworking of what constitutes patent-eligible subject matter and enhancing tools to combat “patent trolls,” what many have missed is the Court’s reworking of the contours of active inducement of patent infringement under 35 U.S.C. § 271(b). The Court has taken the same number of § 271(b) cases as subject matter eligibility cases—four. Yet this reworking has not garnered much attention in the literature. This Article offers the first comprehensive assessment of the Court’s efforts to define active inducement. In so doing, it identifies the surprising significance of the Court’s most recent case, Commil USA, LLC v. Cisco Systems, Inc., where the Court held that a good faith belief on the part of the accused inducer that the relevant patent is invalid cannot negate the mental state required for inducement—the intent to induce acts of infringement. In so doing, the Court moved away from its policy of encouraging challenges to patent validity as articulated in Lear, Inc. v. Adkins and its progeny. This step away from Lear is significant and surprising, particularly where critiques of the patent system suggest there are too many invalid patents creating issues for competition. This Article critiques these aspects of Commil and then addresses lingering, unanswered questions. In particular, this Article suggests that a good faith belief that the induced acts are not infringing, which remains as a defense, should only act as a shield against past damages and not against prospective relief such as injunctions or ongoing royalties. The courts so far have failed to appreciate this important temporal dynamic