Reconsidering Experimental Use

In the years since the Supreme Court began to narrow the scope of patentable subject matter, uncertainties in the law have had a deleterious impact on several important innovation sectors, including, in particular, the life sciences industry. There are now initiatives to expand patentable subject matter legislatively. In this article, I suggest that the Supreme Court’s jurisprudence is an outgrowth of the concern that patents on fundamental discoveries impede scientific research. To deal with that issue, any measure to expand the subject matter of patenting should be coupled with a parallel expansion of defenses to infringement liability, including the restoration of a robust research defense. Most developed countries recognize strong defenses in favor of researchers and as OECD studies show, several are developing creative environments that lure scientists to relocate. It is therefore essential that the United States move quickly to enact laws that both encourage and facilitate research and that will preserve its technological dominance

Giving the Federal Circuit a Run for Its Money: Challenging Patents in the PTAB

My main objective is directed at institutional questions, to help the PTO and Congress as each considers changes to the system and to gauge how well the PTAB could function to ameliorate the effect of Federal Circuit isolation and provide a basis for the court to consider new perspectives, write more persuasively, and provide better guidance. A second goal is to draw greater academic attention to the potential these procedures have for changing the patent system and to provoke discussion—outside the emerging PTAB bar—on how they ought to operate. In particular, the statute layers inter partes review in a specialized agency under appellate review in a specialized court. I offer some thoughts on how authority over patent jurisprudence should be allocated between these two centers of expertise. The Article proceeds as follows. Part I describes the three procedures. Part II evaluates use of the new system. Part III discusses the interaction between the PTAB and the Federal Circuit. Part IV looks at the problems these procedures raise for the parties, the adjudicators, and the sound administration of patent law

Coming of Age with TRIPS: A Comment on J.H. Reichman, the TRIPS Agreement Comes of Age: Conflict or Cooperation with the Developing Countries

comment on the Reichman articl

Economic Espionage as Reality or Rhetoric: Equating Trade Secrecy with National Security

In the last few years, the Economic Espionage Act (EEA), a 1996 statute that criminalizes trade secrecy misappropriation, was amended twice, once to increase the penalties and once to expand the definition of trade secrets and the types of behaviors that are illegal. Recent developments also reveal a pattern of expansion in investigation, indictments, and convictions under the EEA as well as the devotion of large resources by the FBI and other agencies to warn private industry against the global threats of trade secret theft. At the international level, the United States government has been advocating enhanced levels of trade secrecy protection in new regional trade agreements This article asks about the effects these developments on innovation. The article examines the rhetoric the government is using to promote its trade secrecy agenda, uncovering that the argument for greater protection appears to derive at least some of its power from xenophobia, and most importantly, from a conflation of private economic interests with national security concerns, interjecting a new dimension to the moral component of innovation policy debates. Analyzing recent empirical research about innovation policy, we ask about the effects of these recent trends on university research and on private market innovation, including entrepreneurship, information flows and job mobility. We argue that, paradoxically, the effort to protect valuable information and retain the United States’ leadership position could disrupt information flows, interfere with collaborative efforts, and ultimately undermine the inventive capacity of American innovators. The article offers suggestions for reconciling legitimate concerns about national security with the balance intellectual property law traditionally seeks to strike between incentivizing innovation and ensuring the vibrancy of the creative environment. We conclude that a legal regime aimed at protecting incumbency is not one that can also optimally foster innovation

Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual Property Matters

This proposal is meant to spur the intellectual property bar to consider whether it would be desirable to create a regime for international enforcement of intellectual property law judgments. Such a convention could be adopted under the auspices of the World Intellectual Property Organization ( WIPO ) or through the World Trade Organization ( WTO ). There are several reasons to believe that an instrument drafted specifically for intellectual property disputes would be particularly advantageous. First, for intellectual property disputes, efficiency should be a principal target. Modern distribution methods, particularly satellite and Internet transmissions, make it increasing likely that intellectual property rights will be exploited simultaneously in more than one territory. The ability to consolidate claims arising from these usages in one court, with the expectation that the judgment of that court will be recognized in all convention States, could reduce costs for all sides, conserve judicial resources on an international basis, and promote consistent outcomes. Second, a convention drafted for intellectual property disputes can take account of issues uniquely raised by the intangibility of the rights in issue. For example, an intellectual property agreement can consider the ability of a potential defendant to gain litigation advantages through the choice of the location of the activities that give rise to infringement. In certain situations, the propriety of expanding jurisdiction depends on the possibility of inconsistent outcomes; a convention tailored to intellectual property can specify what that term means in the context of public goods. An instrument for intellectual property litigation can also deal specifically with matters of unique concern to the creative community. The strong link between culture on the one hand, and intellectual production and utilization on the other, means that the territoriality of these rights is of crucial importance: individual nations must be able to retain some control over the local conditions under which these products are created, exploited, and accessed. At the same time, an approach that creates new avenues for cross-cultural enrichment needs to be considered. For example, the circumstances where trans-border injunctions are permissible can be specified to include consideration of cultural, health, and safety issues. Other issues of prime interest to the information industries can also be considered: provisions on contract disputes can be tailored to deal with mass-market contracts, which are becoming prevalent in certain intellectual property transactions; provisions on infringement can be made sensitive to the interests of the new media , such as Internet Service Providers. Most important, the convention can be confined to rights covered by the intellectual property part of the General Agreement on Tariffs and Trade ( TRIPs Agreement ) and open to signature only to countries that have joined the WTO and fully implemented the TRIPs Agreement. Since these are countries that have agreed to enforce intellectual property law and are subject to dispute resolution proceedings if they fail to do so, these limitations would reduce concerns that forum shopping will undermine the delicate balance that each nation has struck between the rights of intellectual property users and owners. And although dispute resolution under the WTO cannot provide litigants with a substitute for a centralized and authoritative appellate body (such as the US Supreme Court or the European Court of Justice), it can provide assurance of transparent and efficient judicial process, along with institutional mechanisms (such as dispute resolution panels, the Dispute Settlement Board, and the Council for TRIPs) for examining intellectual property law as it develops through consolidated adjudication of multinational disputes. This is a mixed convention. It describes bases of jurisdiction that are predicates to enforcement in all member States and it describes bases of jurisdiction that are prohibited in cases involving foreign habitual residents of member States. It leaves member States free to decide for themselves the conditions under which judgments predicated on other bases of jurisdiction are enforceable. Its principal innovations include: 1. Scope. The Convention would be open only to TRIPs implementers and, with the additions of performance rights in sound recordings, and domain names, it would cover the same rights covered by the TRIPs Agreement. 2. Jurisdiction. This Convention identifies a set of fora with adjudicatory authority over the parties. In part, this is a consequence of the commitment to consolidation and cooperation. The parties\u27 choices need not be narrowed if all courts seized with parallel litigation will, ultimately, consult with one another and with the parties to find the best place to adjudicate the entire dispute. Conversely, the courts and parties can select a better forum (in terms of convenience for the parties and witnesses, expertise of the decision maker, and relationship to the dispute) if there are several courts that enjoy adjudicatory authority. In part, this decision also emanates from the view that forum shopping in intellectual property disputes cannot, in any event, be controlled through personal jurisdiction rules: intangible rights and infringements can be reified in too many locations to make personal jurisdiction an effective limit on potential fora. 3. Contract disputes. Mass-market contracts (sometimes called shrinkwrap or click through agreements) are becoming increasingly common in intellectual property transactions. The enforceability of these agreements has been quite controversial and the Convention takes the position that the inability to negotiate does raise special concerns. Accordingly, the enforceability of any contract provision affecting the place of dispute resolution is subject to a requirement of negotiation or, in nonnegotiated contracts, reasonableness in the choice of forum. Factors taken into account in assessing the reasonableness of the chosen forum include whether, in the absence of a forum-selection clause, the chosen forum would have had jurisdiction over the nondrafting party. 4. Infringement actions. This instrument adapts jurisdictional doctrines regarding tort actions to tailor them to the context of intellectual property infringement and to the issues raised by the distribution of works in a digital environment. In addition, this proposal deals with new media defendants, such as Internet Service Providers. US law does not require special procedural protection for media defendants because substantive law has many explicit safeguards on the use of litigation to chill expression. In the absence of such safeguards in the domestic laws of every member State, it was thought necessary to create procedural protections in the form of immunity from suit in locations where contacts are purely passive. 5. Consolidation. A central insight animating this proposal is that efficient adjudication of intellectual property disputes is a benefit-to the parties, to the nations whose judicial resources would otherwise be redundantly utilized, and to the development of sound intellectual property law. Both US and European laws have mechanisms to promote consolidation, and the techniques of both systems are invoked here