Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U.S. Patent Law

This paper presents a normative study of patent applicant use of invention-date rights during ex parte prosecution

Forward: Symposium on Evolving the Court of Appeals for the Federal Circuit and Its Patent Law Jurisprudence

As I discuss below, conditions on the ground have changed in the few short months following the Symposium. Congress has now acted, and the Patent Office will soon have additional authority. These changes play directly into the arguments of our Symposium authors and make their results even more important

The Patent Lottery: Exploiting Behavioral Economics for the Common Good

Lotteries are immensely popular. Players are willing to give the organizer a large monetary cut of every ticket purchase in return for a chance at a jackpot. In some ways, our current patent system operates as a lottery as well. Most patents are relatively worthless, while a few are highly valuable. Reaching the major payout of a highly valuable patent takes perseverance in the face of tremendous uncertainty. Like lottery players, small entrepreneurial companies and individuals have shows signs of bounded rationality. In particular, what I call the patent lottery effect is associated with the phenomena of potential innovators overweighting the size of a potential payout on innovation while neglecting to fully consider the actual probability of obtaining that payout. The potential bounded rationality of actors in the patent system challenges our traditional notions of the patent incentive. In many settings, bounded rationality problems are patched-up with education and paternalism such as in the form of consumer protection. In this article, I take a different approach and instead explore ways that the overconfidence of innovators may alter our choice of innovation policy levers in ways that increase innovation but decrease the monopoly cost of patents

Nil: The Value of Patents in a Major Crisis Such as an Influenza Pandemic

This essay focuses on the role of patents in relation to a potential global crisis such as an influenza pandemic or other public health crisis. I argue that patent rights will be largely ignored during an epidemic and that any post-crisis compensation would likely be low when compared to traditional patent rewards or settlements entered under threat of injunctive relief. In some situations, such as use of a patented invention by a state or local government, a patentee may have no recourse. Part III of the essay raises a separate issue that stems from the relatively long time frame for obtaining patent rights as compared with the time frame of an epidemic. Patent rights are only obtained through the typically slow process of patent prosecution. Consequently, innovation triggered by the onset of an epidemic might not be protected by patent rights until well after the crisis has abated. This realization suggests that the role of patents rests with longer-term preparation and follow-up, rather than with protecting innovations triggered by the specific crisis itself. Certain classes of innovations without effective patent protection – such as anti-viral or anti-microbial treatments that are engineered only after isolating the offensive biologic agent. I conclude that patent rights offer little innovation incentive in the face of an impending crisis. Optimistically, under this same formulation, patents may provide an incentive to ensure that the crisis is never realized. Part V of the essay recognizes that innovation still takes place in the absence of enforceable patent rights. A wide variety of incentives play a role in innovation policy, and reduced patent value will not end innovation

Nil: The Value of Patents in a Major Crisis Such as an Influenza Pandemic

This essay focuses on the role of patents in relation to a potential global crisis such as an influenza pandemic or other public health crisis. I argue that patent rights will be largely ignored during an epidemic and that any post-crisis compensation would likely be low when compared to traditional patent rewards or settlements entered under threat of injunctive relief. In some situations, such as use of a patented invention by a state or local government, a patentee may have no recourse. Part III of the essay raises a separate issue that stems from the relatively long time frame for obtaining patent rights as compared with the time frame of an epidemic. Patent rights are only obtained through the typically slow process of patent prosecution. Consequently, innovation triggered by the onset of an epidemic might not be protected by patent rights until well after the crisis has abated. This realization suggests that the role of patents rests with longer-term preparation and follow-up, rather than with protecting innovations triggered by the specific crisis itself. Certain classes of innovations without effective patent protection – such as anti-viral or anti-microbial treatments that are engineered only after isolating the offensive biologic agent. I conclude that patent rights offer little innovation incentive in the face of an impending crisis. Optimistically, under this same formulation, patents may provide an incentive to ensure that the crisis is never realized. Part V of the essay recognizes that innovation still takes place in the absence of enforceable patent rights. A wide variety of incentives play a role in innovation policy, and reduced patent value will not end innovation

A Trademark Justification for Design Patent Rights

This article presents a new set of empirical results to support the theoretical construct that design patents fill a gap in trade dress law protection. Based on the data, I tentatively reject the oft-stated conventional wisdom that design patents are worthless for many because procurement is too slow, expensive, and difficult. Rather, based on a first-of-its-kind analysis of the prosecution history files of a large sample of recently issued design patents, I conclude that the current design patent examination system operates as a de facto registration system. Notably, more than ninety-eight percent (98%) of the patents in my study were issued without the Patent Office challenging their inventiveness. The dramatic rise in the number of design patents being issued indicates that designers find value in design patent protection, and a study of parallel design patent and trade dress litigation suggests that design patents are serving as a back-up or replacement for trade dress rights

The Social Welfare of Advertising to Children

The aim of this Comment is to approach the issue of advertising to children through an examination of economic incentives and efficiency. The Comment ultimately makes the claim that televised advertisement of products, such as junk food, directed toward children may be inefficient and tend to decrease social welfare. Although they may be compelling, this paper does not rely on the secondary negative externalities often associated with television, such as the cost of treating diabetes and heart disease. Rather, the inefficiency discussed in the Comment involves the informational qualities of advertising. Advertising directed towards young children can be thought of as providing false or misleading information because these children are unable to understand the purpose or underlying context of the advertisement. Although this type of misleading advertisement usually happens unintentionally, the trusting naivety of children gives advertisers an incentive to attempt such misinformation

Seed Patents, Patent Exhaustion, and Third Parties - Bowman v. Monsanto Co.

Monsanto patents cover genetically modified glyphosate-resistant soybeans. A farmer purchased soybeans from a commodity market and argues that the “first sale doctrine” exhausts the patent rights as to those soybeans and their progeny. If successful, the farmer can save and replant the soybeans without paying licensing fees. Monsanto argues that exhaustion does not apply to new soybeans grown through replanting; even rights in the parent seeds are exhausted. In addition, Monsanto argues that the purchased soybeans are bound by a use-restriction servitude that bars farmers from planting seeds purchased from the commodity market

An Empirical Study of the Role of the Written Description Requirement in Patent Prosecution

An en banc Federal Circuit is now considering whether Section 112 of the Patent Act as properly interpreted includes a written description requirement that is separate and distinct from the enablement requirement. Although the USPTO has no direct role in the infringement dispute, the government submitted an amicus curie brief arguing that a separate written description requirement is “necessary to permit the USPTO to perform its basic examination function.” However, when pressed during oral arguments the government could not point to any direct evidence supporting its contention. This essay presents the results of a retrospective empirical study of the role of the written description requirement in patent office practice. It is narrowly focused on rebutting the USPTO’s claim that the separate written description requirement serves an important role in the patent examination process. To the contrary, my results support the conclusion suggested by Chief Judge Michel that it is indeed “exceedingly rare that the patent office hangs its case on written description.”For the study, I analyzed 2858 Board of Patent Appeals and Interference (BPAI) patent opinions decided January-June 2009. Written description issues were decided in 123 (4.3%) of the decisions in my sample. Perhaps surprisingly, I found that none of the outcomes of those decisions would have been impacted by a legal change that entirely eliminated the written description requirement of Section 112 so long as the USPTO would still be allowed to reject claims based on the addition of “new matter” (perhaps under 35 U.S.C. Section 132). New-matter style written description requirement rejections were outcome determinative in 20 of the 2858 cases – about 1.0% of the cases in my sample. Although there may be valid reasons for retaining a separate written description requirement, this study safely leads to the conclusion that the government’s conclusory statements regarding the doctrine\u27s critical importance for patent examination lack a factual basis