Patents Absent Adversaries

The adversarial system is lauded for determining the truth of claims, safeguarding procedural rights, and supporting the efficient direction of resources toward the most relevant and contested issues in a dispute. If a case proceeded to judgment with participation from only one party, it would raise concerns of justice, efficiency, accuracy, and the public interest. And yet, in a tribunal of steadily growing importance for intellectual property disputes—the International Trade Commission (ITC or Commission)—certain cases proceed without the benefit of participation from adverse parties. Following the default of named parties, administrative law judges determine the scope and validity of patent claims without the benefit of arguments from interested parties. The effects of these determinations are not limited to the defaulting parties, but applied widely through the in rem relief of general exclusion orders, enforced at the border to keep infringing goods out of the country. A separate form of exclusion follows in infringement determinations made by U.S. Customs and Border Protection and appeals therefrom. Those determinations proceed without participation from interested patent holders. This article identifies and turns scholarly attention to the phenomenon of adjudicating patents absent adversaries, arguing that it is both inefficient and ineffective to construe patent claims without the guiding context of a controversy. Absent adversaries, the public interests that are reliant on robust adversarial participation in patent disputes go unrepresented. This article explores possible solutions and suggests delaying time-intensive adjudication until interested adversaries are present. It further recommends placing continuing jurisdiction with the ITC to adjudicate disputes currently decided by Customs

Advances in Patent Rights Acquisition in International Patent Law

At this centennial event, we have been asked to reflect on the most consequential developments in international intellectual property law of the last 100 years, with an eye towards important future developments as well. This is no small task, given the proliferation of intellectual property-related treaties and the profound changes in business structures, manufacturing, and trade that the last century has seen. The rise of the multinational corporation has been fueled in part by changes to trade laws, and the inclusion of intellectual property in trade-related treaties has facilitated cross-border research and development, manufacturing, and distribution of goods subject to intellectual property rights. I think the most consequential development in the last century both reflected and facilitated these changes, and that is the broad adoption of the Agreement on Trade-Related Aspects of Intellectual Property Law (TRIPS Agreement)--an agreement made as part of the World Trade Organization Agreement in 1994. The TRIPS Agreement has arguably led to the biggest substantive changes in intellectual property law in countries throughout the world in the last 100 years. As such, it merits discussion. But I am not the first speaker, and there have been other developments that were hugely consequential for intellectual property rights globally. So, instead of focusing on the substantive changes required by the TRIPS Agreement, I want to discuss changes that are ostensibly about the process of intellectual property rights-acquisition, and patent acquisition specifically, that have affected both the practice and substance of intellectual property rights protection. In particular, the centralization of patent filing that was facilitated by the Patent Cooperation Treaty (PCT) also made it nearly inevitable that the United States and Canada would switch from their first-to-invent to first-to-file patent systems. The PCT has changed global patent prosecution and made it more efficient, but this sort of procedural streamlining can often make substantive changes seem inevitable. This abstract has been taken from the author\u27s introduction

Free Trade in Patented Goods: International Exhaustion for Patents

Modern international trade law seeks to increase global welfare by lowering barriers to trade and encouraging international competition. This “free trade” approach, while originally applied to reduce tariffs on trade, has been extended to challenge non-tariff barriers, with modern trade agreements targeting telecommunication regulations, industrial and product safety standards, and intellectual property rules. Patent law, however, remains inconsistent with free-trade principles by allowing patent holders to subdivide the world market along national borders and to forbid trade in patented goods from one nation to another. This Article demonstrates that the doctrines thwarting free trade in patented goods are protectionist remnants of long-abandoned pre-Industrial Age economic theories, and the modern arguments for restricting international trade in patented goods—most notably, the possible desirability of permitting price discrimination—provide an insufficient justification for restricting trade across national frontiers. The Article concludes that modern patent law doctrine should be modified to permit free international trade in patented goods and that, if price discrimination or other goals are thought desirable, better alternatives are available to achieve those goals

Patent Term Tailoring

Patent rights are designed to encourage innovation with both the promise of a patent and with its expiration. Currently, patent term lasts from issuance until twenty years from the application date, with minor exceptions. The patent term is limited so that rewards for past invention do not overly hinder future progress. Although the goal is laudable, a uniform patent term is a blunt instrument to achieve such a nuanced balance. Historically, the patent system was not averse to tailoring terms through, for example, individually granted extensions to undercompensated inventors or term curtailment when a foreign patent holder failed to “work” a patented invention in the country. Currently, patent extensions are primarily granted to counteract time spent on administrative processes, and patent terms may be curtailed only by a patent holder through failure to pay maintenance fees or terminal disclaimer. This Article examines current and historical law and doctrine affecting patent duration and suggests changes to better pursue patent policies, making two contributions to the literature. First, this Article groups together all the various term-tailoring mechanisms for analysis, bringing theoretical consistency to analysis of rules that are often considered and analyzed separately. This grouping suggests potential avenues for reform, which is the second contribution. This Article argues that patent maintenance fees are an underused policy lever that allow patent holders rather than administrative agencies to evaluate the worth of inventions, ex post, and choose among simple term curtailment options, lowering third party costs. At the same time, patent term extension and adjustment result in variable extensions and potential term variations globally, while expedited examination remains an underused policy tool. These extensions, too, are ripe for modifications

Patents Absent Adversaries

The adversarial system is lauded for determining the truth of claims, safeguarding procedural rights, and supporting the efficient direction of resources toward the most relevant and contested issues in a dispute. If a case proceeded to judgment with participation from only one party, it would raise concerns of justice, efficiency, accuracy, and the public interest. And yet, in a tribunal of steadily growing importance for intellectual property disputes—the International Trade Commission (ITC or Commission)—certain cases proceed without the benefit of participation from adverse parties. Following the default of named parties, administrative law judges determine the scope and validity of patent claims without the benefit of arguments from interested parties. The effects of these determinations are not limited to the defaulting parties, but applied widely through the in rem relief of general exclusion orders, enforced at the border to keep infringing goods out of the country. A separate form of exclusion follows in infringement determinations made by U.S. Customs and Border Protection and appeals therefrom. Those determinations proceed without participation from interested patent holders. This article identifies and turns scholarly attention to the phenomenon of adjudicating patents absent adversaries, arguing that it is both inefficient and ineffective to construe patent claims without the guiding context of a controversy. Absent adversaries, the public interests that are reliant on robust adversarial participation in patent disputes go unrepresented. This article explores possible solutions and suggests delaying time-intensive adjudication until interested adversaries are present. It further recommends placing continuing jurisdiction with the ITC to adjudicate disputes currently decided by Customs

The Harmonization Myth in International Intellectual Property Law

There is a dominant narrative in international intellectual property ( IP ) law of ever-increasing harmonization. This narrative has been deployed in ways descriptive, prescriptive, and instrumental: approximating the historical trend, providing justification, and establishing the path forward. Appeals to harmonization are attractive. They evoke a worldwide partnership and shared sacrifice to meet the goals of innovation and access to technology through certainty, efficiency, and increased competition through lowered trade barriers. Countries with strong IP protections consistently and successfully tout the importance of certainty and lower trade barriers when seeking new and stronger protections from countries with lower levels of protection. Yet the harmonization narrative is a myth. Harmonization can account for only some attributes of international IP law development, and even those are often better explained by a maximalist account of IP protection. Maximization of IP rights better explains much of the substance of international IP law development, including the Agreement on Trade-Related Aspects of Intellectual Property Rights ( TRIPS ), which sets floors but not ceilings for IP protections. Maximization is particularly evident in the forum-shifting behavior that has resulted in a proliferation of IP commitments in investment, bilateral, and regional trade treaties in the years since the TRIPS Agreement went into effect. These commitments often increase IP protection in signatory countries in ways that bring them out of harmony with the majority of the world. As a result, prior commitments to harmonization are discarded for maximization. Through the lens of duration, this Article describes the harmonization narrative and its strength leading up to the TRIPS Agreement before showing the explanatory superiority of a maximization narrative, even in the provisions of TRIPS. Next, the Article shows how maximization of IP has driven many of the post-TRIPS treaties and agreements at the expense of harmonization. Recognizing maximization instead of harmonization as the chief explanatory story has a number of implications for the future of international IP law. It challenges the normative presumption that all countries should have the same level of IP protection and weakens arguments that countries ought to sacrifice their own national agendas in order to bring their IP protection into harmony with other countries. Ultimately, correctly identifying the trajectory of international IP law allows scholars and stakeholders to address complicated problems with realistic expectations, rather than attractive but flawed rhetoric