The Need for Speed (and Grace): Issues in a First-Inventor-to-File World

“One is the loneliest number that you’ll ever do.” This lyric applies to the United States which, since 1998, stands alone among the world’s patent systems in awarding patents to the first person to invent a claimed invention (first to invent, or “FTI”) as opposed to the first inventor to file an application claiming the invention (“FITF”). But its lonely days may soon be over: a provision in pending patent reform legislation will (if passed) move the United States from FTI to FITF and end its solitary stance. Some argue that the U.S. already has a de facto FITF system, since the first filer usually wins disputes regarding the priority of an invention. Additionally, many U.S. inventors who file for patent protection in other countries with FITF systems have already conformed their practices accordingly. If a de facto FITF regime is already in place, and if many inventors are already adapting their practices to comply with such a system, the U.S. may have little to lose and much to gain from making the switch to FITF. But then again, maybe not. Much has been written about a U.S. move from FTI to FITF and its potential costs and benefits. However, since this Essay accompanies a symposium on intellectual property and entrepreneurship, it considers how a FITF regime change may impact small-entity inventors, particularly those from academic enterprises. The patent system holds both promise and peril for this group of inventors, and their inventive efforts are becoming increasingly important to this country. Part II of this Essay surveys certain costs and benefits associated with both FTI and FITF systems, and the impact each may have on small entity inventors. Part III focuses on the one-year grace period for filing patent applications in the U.S. after public disclosure of an invention. This grace period, a device useful to both large and small entities, is especially important to independent and academic inventors but, unfortunately, is unavailable in most other countries. Additionally, Part III discusses why a move to FITF by the U.S. significantly challenges the usefulness of a grace period for small entity inventors. Part IV of the Essay concludes that in light of these challenges, U.S. adoption of FITF should only proceed in conjunction with the adoption of a one-year grace period by the other major patent-granting countries

Academic Discourse and Proprietary Rights: Putting Patents in Their Proper Place

This Article provides a fresh perspective on the Bayh-Dole debate by focusing on the impact of patent novelty rules on academic discourse. The Article proposes that to begin to reverse an observed deterioration in disclosure norms, flexibilities must be built into the patent system so that patents can be facilitators of the academic knowledge dissemination enterprise. In particular, the Article advocates creation of an opt-in extended grace period that would provide more time for academic researchers to publish and present early-stage research before having to file a patent application. Such an extension, coupled with early application publication, would both address third-party needs for notice of proprietary claims and allow researchers lo engage in traditional academic discourse while they retain the ability to obtain proprietary rights useful for commercialization of their inventions

Legal Movements in Intellectual Property: TRIPs, Unilateral Action, Bilateral Agreements, and HIV/AIDS

This Article begins with an overview of the relationship between the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement ) and the HIV/AIDS pandemic which created the need for the Doha Declaration. It then discusses two trade-related movements, unilateral action and TRIPS-plus bilateral agreements, that call into question the long-term effectiveness of the TRIPS Agreement process, generally, and the benefits of the Doha Declaration, in particular, in addressing multiple facets of the access to essential medicines problem. This Article concludes that a consideration of these issues should be included in the development of any further TRIPS-related solutions to the HIV/AIDS pandemic

Innovator Ecosystem Diversity As A Global Competitiveness Imperative

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Internet Business Model Patents: Obvious by Analogy

This Article contends that part of the problem of Internet business model patents is the narrow view of analogous art employed by judges and USPTO examiners which largely excludes relevant real-world prior art in the determination of non-obviousness under § 103 of the Patent Act. Consequently, part of the solution lies in helping courts and the USPTO properly to define analogous art for a particular invention. To do so, judges and examiners must recognize the interchangeability of computer programming (i.e. e-world activities) to perform a function, with human or mechanical performance of the same function (i.e. real world activities). Such recognition is consistent with binding United States Supreme Court precedent and requires a reversal of the trend towards narrow analogous art definitions in the obviousness inquiry. This Article also identifies an increased potential for abuse of the doctrine of equivalents in the Internet business model context due to a combination of factors that impact the usefulness of traditional controls on the application of the doctrine of equivalents. Such factors include a dearth of properly trained business method USPTO examiners, and a lack of business method and software prior art readily available to examiners to consult in assessing the patentability of such methods. To the extent such factors result in Internet business model patents with the scope, by default, of pioneer patents, limitations on application of the doctrine of equivalents are necessary. To lay the groundwork for this dual analysis, Part I of this Article provides a look at Internet business model patents in light of key patentability requirements mandated by the Patent Act. Part II traces the evolution of the analogous art component of the non-obviousness determination and illustrates how the malleability of the doctrine, as exemplified in several Court of Appeals for the Federal Circuit decisions, has particular relevance to prior art definitions for Internet business model patents. Part III of this Article then examines the doctrine of equivalents and explores how the likelihood of improper application of this doctrine in the Internet business model context is increased. Recognizing that feasible solutions are not limited to doctrinal remedies, this Article also mentions other, more drastic ways of addressing the Internet business model conundrum. It concludes, however, that rational exercise of the elasticity present in both the doctrine of analogous art and the doctrine of equivalents provides a better approach to defining proper Internet business model claim scope

Patently Unconstitutional: The Geographical Limitation on Prior Art in a Small World

Part I of this Article provides an overview of § 102 of the Patent Act, the role of prior art in the patentability analysis, and the origin of the limitation on relevant non-patent, nonpublished art to that existing in this country. Part II then analyzes the constitutional deficiency of the limitation in light of the express and implied purposes of the Intellectual Property Clause as informed by judicial decisions, technological changes, global contraction, and expanded notions of inventive research sources. Policy concerns are the focus of Part III, which discusses how § 102\u27s geographical limitation facilitates forms of biopiracy, conflicts with the policies underlying § 102(b), and is at odds with global patent harmonization efforts. Part III also explores the likely impact of elimination of the § 102 geographical limitation on U.S. patents. This Article ultimately concludes that eliminating the geographical limitation on prior art is a necessary step for the United States to take in this small, small world

The Fallacy of Defensive Protection for Traditional Knowledge

Proponents of databases as defensive protection posit that having sources of traditional knowledge easily accessible to, and searchable by, examiners during the prosecution process should minimize the grant of patents covering traditional knowledge, and avoid the problems such erroneously granted patents may produce. Some countries, such as India, which support an international sui generis positive protection instrument, also support the use of traditional knowledge databases, as the two approaches are not mutually exclusive. India\u27s CSIR, which created and maintains the TKDL, asserts that the database has thwarted the grant of scores of patents in IP offices across the globe, although commentators have cast considerable doubt on the veracity of several of the ICSIR\u27s claims. Such defensive protection sounds like a win-win scenario for both patent offices, which do not wish to grant bad patents, and traditional knowledge-holding communities, who do not want to have to challenge bad patents once they have issued. As noted by an EPO official: We take this seriously. Countries with rich traditional and holistic knowledge often have to spend lots of money on opposition procedures. The database could prevent that by helping the EPO to grant properly scoped patents. But is the protection real or illusory? What protection is a defensive traditional knowledge database actually providing to the knowledge it contains? At least eight countries have begun employing such databases (and others are considering such a move), which promise possible benefits, but also latent dangers and unintended consequences for the indigenous peoples and local communities who hold traditional knowledge within their borders. This Essay aims to address these questions and illuminate subtle, yet important concerns involved with initiatives that embrace defensive protection for traditional knowledge without concomitant positive protection. Part II of the Essay briefly describes and deconstructs the mechanisms of defensive protection as exemplified by the Indian TKDL. It then explores the risks of relying on such databases in isolation as protection mechanisms for traditional knowledge in Part III. Part IV describes a superior approach of integrating positive legal protection with databases, illustrated in South Africa\u27s planned indigenous knowledge protection framework. The Essay concludes that databases can be helpful in bringing traditional knowledge to light, but that providing true protection for that knowledge is a different matter

Using Section 337 of the Tariff Act of 1930 to Block Materially Different Gray Market Goods in the Common Control Context: Are Reports of Its Death Greatly Exaggerated?

This Comment examines the primary reasons for trademark owners within the common control exception to revisit section 337 when faced with materially different gray market goods. Part One discusses the issues in and history of the gray market goods controversy, and the common control exception. Part Two focuses on section 337: how it works, its use in gray market goods cases, and how it has changed as a result of amendments in the Omnibus Trade and Competitiveness Act of 1988 and in the Uruguay Round Agreements Act of 1994. Part Three traces the changes in the gray market landscape favorable to a return of action by trademark owners under section 337, particularly in light of the Lever III decision, and outlines the benefits of section 337 over other statutory provisions used to combat materially different gray market goods. This Comment concludes with the argument that, on balance, the benefits associated with successfully reviving the use of section 337 for materially different gray market goods sufficiently outweigh the potential risks, so as to make this statute a viable alternative for embattled U.S. trademark owners

Internet Business Model Patents: Obvious by Analogy

Part I of this Article provides a look at Internet business model patents in light of key patentability requirements mandated by the Patent Act. Part II traces the evolution of the analogous art component of the non-obviousness determination and illustrates how the malleability of the doctrine, as exemplified in several Court of Appeals for the Federal Circuit decisions, has particular relevance to prior art definitions for Internet business model patents. Part III of this Article then examines the doctrine of equivalents and explores how the likelihood of improper application of this doctrine in the Internet business model context is increased. Recognizing that feasible solutions are not limited to doctrinal remedies, this Article also mentions other, more drastic ways of addressing the Internet business model conundrum. It concludes, however, that rational exercise of the elasticity present in both the doctrine of analogous art and the doctrine of equivalents provides a better approach to defining proper Internet business model claim scope