Road Map to Revolution? Patent-Based Open Science

The contemporary approach to innovation in the life sciences relies on a patent-based proprietary model. Limitations on patent rights and business concerns often focus innovation to markets where the near-term monetary rewards are highest. This is “efficient” under an austere understanding of the term, but the proprietary model can be problematic from a practical perspective because it may not focus innovation to certain deserving markets. This Article contends that the property rights conferred by patent law may still serve as a positive base for innovation directed to underserved markets. The comparatively strong rights conferred by patent law provide upstream or pioneering innovators the power to establish some of the environmental conditions in which subsequent innovation takes place. This includes a power to create an environment of relatively open access to rights, which in appropriate cases may foster efficiency gains, reduce innovation suppressive costs, and achieve production for ultimate consumers at closer to marginal cost. In several parts, this paper discusses the topography of law and innovation in the life sciences, the characteristics of innovation in the life sciences that may support the use of patents to impose an “open science” framework, a legal means of imposing such a framework using servitudes, and some of the legal and economic implications of using patents in this manner. This Article concludes that there are reasons why universities and research-oriented medical schools should sometimes favor this approach and that limited testing should be performed to determine the efficacy of the approach

The Claim Construction Effect

Claim construction refers to the task of construing, or interpreting, the words of patents\u27 claims to establish the metes and bounds of a patent. Theoretically, the task of claim construction serves to operationalize the concept of invention, which lies at the heart of the U.S. patent system.[...] Rather than focusing on the set of cases in which the Federal Circuit addresses claim construction, this study focuses on a set of cases defined by a different patent doctrine. The basic idea is to explore the impact of claim construction on other areas of patent law.[...] The hypothesis of the claim construction effect can be empirically tested, and this Article\u27s first and most significant contribution is to test the hypothesis using empirical techniques. Ultimately, it argues that the hypothesis finds support in four central pieces of evidence. First, the Article shows that the average rate at which the Federal Circuit uses claim construction in the dataset has increased over the last fifteen years. Second, the Article shows that the average rate at which the court modifies lower court claim construction determinations has increased over the last fifteen years. Third, the Article shows that as the Federal Circuit increased the rate at which it modified lower court claim construction determinations, there was a complementary decrease in the power of the court to affirm. The fourth piece of evidence, while supporting the hypothesis, also suggests an explanation. It argues that the claim construction effect is largely the product of an intracircuit dispute over the development of claim construction doctrine. The appearance of the claim construction effect associates well with the strengthening of distinctly different judicial approaches to the task of construing claims. The second general contribution made by this article is an empirical analysis of whether the Federal Circuit corrected the claim construction effect with its opinion in Phillips v. AWH Corp., which, by attempting to clarify how claim construction should be analyzed, seeks to resolve relevant differences in judicial approaches to claim construction. Here, the results paint a decidedly mixed picture. Some predictability appears to have returned after Phillips, with some judges significantly changing their authorship patterns. There is evidence, though, that the fundamentals of the claim construction effect remain strongly entrenched in Federal Circuit jurisprudence. The Article proceeds in four additional parts. Part II describes the study design and methodology, and includes a description of the doctrine that defines the data set--the doctrine of equivalents. Part III presents the results and provides an analysis of their meaning. Part IV offers some concluding remarks

The Claim Construction Effect

Claim construction refers to the task of construing, or interpreting, the words of patents\u27 claims to establish the metes and bounds of a patent. Theoretically, the task of claim construction serves to operationalize the concept of invention, which lies at the heart of the U.S. patent system.[...] Rather than focusing on the set of cases in which the Federal Circuit addresses claim construction, this study focuses on a set of cases defined by a different patent doctrine. The basic idea is to explore the impact of claim construction on other areas of patent law.[...] The hypothesis of the claim construction effect can be empirically tested, and this Article\u27s first and most significant contribution is to test the hypothesis using empirical techniques. Ultimately, it argues that the hypothesis finds support in four central pieces of evidence. First, the Article shows that the average rate at which the Federal Circuit uses claim construction in the dataset has increased over the last fifteen years. Second, the Article shows that the average rate at which the court modifies lower court claim construction determinations has increased over the last fifteen years. Third, the Article shows that as the Federal Circuit increased the rate at which it modified lower court claim construction determinations, there was a complementary decrease in the power of the court to affirm. The fourth piece of evidence, while supporting the hypothesis, also suggests an explanation. It argues that the claim construction effect is largely the product of an intracircuit dispute over the development of claim construction doctrine. The appearance of the claim construction effect associates well with the strengthening of distinctly different judicial approaches to the task of construing claims. The second general contribution made by this article is an empirical analysis of whether the Federal Circuit corrected the claim construction effect with its opinion in Phillips v. AWH Corp., which, by attempting to clarify how claim construction should be analyzed, seeks to resolve relevant differences in judicial approaches to claim construction. Here, the results paint a decidedly mixed picture. Some predictability appears to have returned after Phillips, with some judges significantly changing their authorship patterns. There is evidence, though, that the fundamentals of the claim construction effect remain strongly entrenched in Federal Circuit jurisprudence. The Article proceeds in four additional parts. Part II describes the study design and methodology, and includes a description of the doctrine that defines the data set--the doctrine of equivalents. Part III presents the results and provides an analysis of their meaning. Part IV offers some concluding remarks

Toward a System of Invention Registration: The Leahy-Smith America Invents Act

The recently enacted Leahy-Smith America Invents Act (“AIA”) represents the most significant legislative event affecting patent law and practice in more than half a century. In addressing the AIA, scholars and policymakers have focused with an almost laser-like exclusivity on the AIA’s imposition of a first-to-file-or-first-to-publicly-disclose system, which replaces an over 200-year-old first-to-invent tradition. This myopia, we suggest, overlooks a part of the AIA that could hold a substantially greater potential to jeopardize American innovation, job creation, and economic competitiveness: the imposition of a mechanism for supplemental examination

Toward a System of Invention Registration: The Leahy-Smith America Invents Act

The recently enacted Leahy-Smith America Invents Act (“AIA”) represents the most significant legislative event affecting patent law and practice in more than half a century. In addressing the AIA, scholars and policymakers have focused with an almost laser-like exclusivity on the AIA’s imposition of a first-to-file-or-first-to-publicly-disclose system, which replaces an over 200-year-old first-to-invent tradition. This myopia, we suggest, overlooks a part of the AIA that could hold a substantially greater potential to jeopardize American innovation, job creation, and economic competitiveness: the imposition of a mechanism for supplemental examination