Intellectual Property Law

Intellectual Property Law

Innovation has made information, science and technology in their many varied forms dominant influences on society and the economy, and advances in biotechnology, computer science, nanotechnology, and digital art forms have accelerated the pace of change worldwide. Increasingly, creators, compilers, publishers, interpreters, remixers, commentators, users, consumers, appropriators and regulators of innovation must rely on the law of intellectual property to settle disputes.

The burgeoning field of intellectual property law encompasses patent, copyright, trademark, trade secrets and many other fascinating legal theories for protecting and regulating an expanding list of innovations and creations, including writings, music, art, dance, performances, architectural works, scientific and technical inventions, compilations of data, business models, brands, names used in trade, know how, business secrets, confidential information and even celebrity publicity. Knowledge of intellectual property law is now a fundamental part of a good legal education.

KU Law alumni include patent examiners at the United States Patent & Trademark Office and intellectual property attorneys at leading firms across the United States, such as Fish & Richardson PC; Finnegan, Henderson, Farabow, Garrett & Dunner LLP; Goodwin Procter; Christensen O’Connor Johnson Kindness PLLC; Hovey Williams LLP; and Shook, Hardy & Bacon LLP.

Curriculum

KU Law offers a rich and expanding program in intellectual property law. Professor Andrew Torrance teaches a comprehensive survey course covering all forms of intellectual property protection. Professors Mike Hoeflich, David Simon and Andrew Torrance offer specialty classes in patent, copyright, digital copyright, and biotechnology law.

In addition, Professors Raj Bhala and Andrew Torrance offer classes in international trade and biodiversity law, respectively, that include coverage of intellectual property issues. Any of these professors are available to supervise research papers on intellectual property topics sufficient to fulfill the school's writing requirement, and several previous student papers have been published in law reviews or garnered competitive awards.

Some of the courses offered in the area of intellectual property law include:

  • Intellectual Property
  • Patent Law
  • Introduction to Copyright in Literary and Artistic
  • Copyright Law and Digital Works
  • International Trade Law
  • Patent Practice

Course descriptions

The Patent Conference

The Patent Conference is the largest annual conference for patent scholars in the world. The conference is a cooperative effort among the University of Kansas School of Law, Northwestern Pritzker School of Law, University of San Diego School of Law, and Boston College Law School to hold an annual conference where patent scholars in law, economics, management science, and other disciplines can share their research.

In 2010, the founders of PatCon — law professors David Olson, David Schwartz, Ted Sichelman and Andrew Torrance — realized that the growth and importance of research in the area of patents required an exclusive forum that would enable participants to share their research with other experts and explore links across the legal and business side of patents.

KU Law hosted the inaugural Patent Conference in April 2011. The conferences rotates among KU, Boston College, Northwestern and San Diego.

Written Description named PatCon among the top three intellectual property conferences in the United States.


PatCon9 | April 5 - 6, 2019 | University of Kansas School of Law

1535 W. 15th Street, Lawrence, Kansas 66045

The conference will be held in 104 Green Hall.

Speakers include:

  • J. Jonas Anderson, Professor of Law; Associate Dean for Scholarship, American University Washington College of Law 
  • Bernard Chao, Professor of Law, University of Denver Sturm College of Law
  • Chris Cotropia, Professor of Law; Director, Intellectual Property Institute; University of Richmond School of Law
  • Charles DeGrazia, Economist, Office of the Chief Economist at the United States Patent and Trademark Office
  • Tabrez Ebrahim, Associate Professor of Law, California Western School of Law
  • Michael Frakes, Professor of Law and Economics, Duke University School of Law
  • Dr. Lital Helman, Former Intellectual Property Fellow, Columbia Law School; Co-Founder and COO of GradTrain
  • Camilla Hrdy, Assistant Professor of Law, University of Akron School of Law
  • Dmitry Karshtedt, Associate Professor of Law, George Washington University Law School
  • Lakshmi Mudigonda, Ph.D. candidate, University of Buffalo
  • Kevin Noonan, Partner, MBHB; author of Patent Docs blog
  • David Olson, Associate Professor of Law, Boston College Law School; Co-founder of Patent Conference
  • Lisa Larrimore Ouellette, Associate Professor at Stanford Law School; author of Written Description blog
  • Nicholas Pairolero, Economist, Office of the Chief Economist at the United States Patent and Trademark Office
  • Jason Rantanen, Professor and Ferguson-Carslon Fellow in Law,University of Iowa College of Law; author of Patently-O blog
  • Greg Reilly, Assistant Professor of Law, Chicago-Kent College of Law
  • William Rich, Professor of Law, Washburn University School of Law
  • David Schwartz, Professor of Law, Northwestern University Pritzker School of Law; Co-founder of Patent Conference
  • Jeremy Sheff, Professor of Law; Director, Intellectual Property Law Center, St. John’s University School of Law
  • Ted Sichelman, Professor of Law; Director, Center for Intellectual Property Law & Markets; University of San Diego School of Law; Co-founder of Patent Conference
  • A. Christal Sheppard, Executive Vice President for Strategy & Business Development at IPwe Patents
  • Norman Siebrasse, Professor of Law, University of New Brunswick
  • Matthew Sipe, Visiting Associate Professor of Law, George Washington University Law School
  • Andrew Torrance, Professor of Law, University of Kansas School of Law; Co-founder of Patent Conference
  • Saurabh Vishnubhakat, Associate Professor of Law, Texas A&M University School of Law
  • Melissa Wasserman, Professor of Law, University of Texas at Austin School of Law
  • Ian Wetherbee, Senior Software Engineer/Manager at Google Patents
  • Jay Yonamine, Head of Data Science, Ops, and Quality, Global Patents at Google

View Patent Conference 9 abstracts.

Questions? Contact Professor Andrew Torrance at 785-864-9222 or torrance@ku.edu.


Special thanks to our sponsors

Hovey
Erickson Kernell Shook Hardy Bacon

Schedule

Thursday, April 4, 2019

6:30 Informal dinner at Burger Stand
803 Massachusetts Street, Lawrence, Kansas 66044
Vegetarian options are available.

Friday, April 5, 2019

8:00-9:00 Check-in and breakfast
9:00-9:30 Welcome

Andrew Torrance, Professor of Law, University of Kansas School of Law; Co-founder of Patent Conference
9:30-10:30 Roles and Influence of Patent Blogs

Moderator:
Camilla Hrdy, Assistant Professor of Law, University of Akron School of Law

Panelists:
Lisa Larrimore Ouellette, Associate Professor at Stanford Law School; author of Written Description blog
Kevin Noonan, Partner, MBHB; author of Patent Docs blog
Jason Rantanen, Professor and Ferguson-Carslon Fellow in Law, University of Iowa College of Law; author of Patently-O blog
10:30-11:00 The Rise of Commercial Patent Analytics

Speaker:
A. Christal Sheppard, Executive Vice President, IPwe
11:00-11:30 Coffee break
11:30-1:00 Panel One

Panelists:
Price Discrimination and Patent Exhaustion | David Olson, Associate Professor of Law, Boston College Law School
Patent Law's Latent Philosophical Schism | Matthew Sipe, Visiting Associate Professor of Law, George Washington University Law School
Global Patterns of Technical Knowledge Flow | Andrew Torrance, Professor of Law, University of Kansas School of Law; Co-founder of Patent Conference
1:00-2:00 Lunch

Luncheon Speakers:
Ian Wetherbee, Senior Software Engineer/Manager at Google Patents
Jay Yonamine, Head of Data Science, Ops, and Quality, Global Patents at Google
2:00-3:30 Panel Two

Panelists:
Obviousness: Before and After | Dmitry Karshtedt, Associate Professor of Law, George Washington University Law School
Saliency, Anchors & Frames: A Multicomponent Damages Experiment | Bernard Chao, Professor of Law, University of Denver Sturm College of Law
Patent Office Errors | Greg Reilly, Assistant Professor of Law, Chicago-Kent College of Law
3:30-4:00 Coffee break
4:00-5:30

Panel Three

Panelists:

Patents Without the Right to Exclude | J. Jonas Anderson, Professor of Law; Associate Dean for Scholarship, American University Washington College of Law 
Assessing the impact of patent litigations on the venture capital financing of young firms | Lakshmi Mudigonda, Ph.D. candidate, University of Buffalo
Comparative Patent Scope | Norman Siebrasse, Professor of Law, University of New Brunswick

5:30 Adjourn
6:30

Conference Dinner
John Allison to be honored with the PatCon Award for Patent Scholarship.

Saturday, April 6, 2019

8:00-9:00 Breakfast
9:00-10:30 Panel Four

Irrational Ignorance at the Patent Office | Melissa Wasserman, Professor of Law, University of Texas at Austin School of Law & Michael Frakes, Professor of Law and Economics, Duke University School of Law
Revisiting the Impact of USPTO Examiner Incentives: Learning and Patent Office Outcomes | Nicholas Pairolero & Charles DeGrazia, Economists, Office of the Chief Economist at the United States Patent and Trademark Office
The Surprising Value of Abandoned Applications to the Patent System | David Schwartz, Professor of Law, Northwestern University Pritzker School of Law
10:30-11:00 Coffee break
11:00-12:30 Panel Five

Panelists:
Crowdfunding and Patents | Chris Cotropia, Professor of Law; Director, Intellectual Property Institute; University of Richmond School of Law
Science Fiction: Fictitious Data in Patents | Lisa Larrimore Ouellette, Associate Professor at Stanford Law School; author of Written Description blog
Jefferson’s Taper | Jeremy Sheff, Professor of Law; Director, Intellectual Property Law Center, St. John’s University School of Law
12:30-1:30 Lunch
1:30-3:30 Panel Six

Panelists:
Artificial Intelligence Patent Examination & Big Data | Tabrez Ebrahim, Associate Professor of Law, California Western School of Law
Decentralized Patent System | Dr. Lital Helman, Former Intellectual Property Fellow, Columbia Law School; Co-Founder and COO of GradTrain
Patent Rights and State Sovereign Immunity | William Rich, Professor of Law, Washburn University School of Law
Inconsistent Intellectual Property Judgments | Saurabh Vishnubhakat, Associate Professor of Law, Texas A&M University School of Law
3:30 Adjourn

Hotels in Lawrence, Kansas

SpringHill Suites Lawrence Downtown

The Eldridge Hotel

TownePlace Suites by Marriott

 

Visit Lawrence.


Parking

Parking is available in the Allen Fieldhouse Parking Garage, 1501 Irving Hill Road, located south of Green Hall. Standard parking rates are $1.75 for the first hour and $1.50 for each subsequent hour. KU Parking has a License Plate Recognition System. License plates will be scanned upon entrance and exit. You must prepay in advance online or pay for parking upon arrival using a pay station or the ParkMobile app. More details from KU Parking.

Three payment options:

  1. Prepay in advance online: For your convenience we have arranged for you to securely prepay parking online. Click on one of the following links to register your car and pay. The parking fee is discounted for the two-day option.
    April 5 and April 6
    April 5 ONLY
    April 6 ONLY
  2. Use the pre-pay stations in the garage: Pre-pay stations can be found in the level 3 lobby in the NE corner of the garage and on level 1 in the south stair tower. Pull slowly into the garage and find a place to park, avoiding ADA/Limited mobility stalls without displaying a valid placard and reserved/service stalls.
    • Take a picture of your license plate or write your plate information down, and proceed to a pay station.
    • Be sure to pay for your parking within 15 minutes upon arrival through the gate, when your license plate is scanned, to avoid getting a ticket.
    • Choose how long you wish to park for and pay. Pre-pay stations accept Visa, MasterCard, American Express, Discover and cash. Pre-pay stations are unable to give change. If you have to add time to your parking, you will need to return to the pay station and repeat the process again.
  3. Use the ParkMobile App: Visit https://parkmobile.io/ or download the ParkMobile app on your smartphone.
    • In advance of the event or, if necessary, immediately upon parking, create a profile using your name, email address and license plate number.
    • When prompted, enter the Allen Fieldhouse Parking Garage Zone = 3929
    • Choose how long you wish you park for and pay. You will be able to add and pay for additional time through ParkMobile without returning to the parking garage.

Past Conferences

Abstracts for PatCon9

Patents Without the Right to Exclude 

J. Jonas Anderson (American University Washington College of Law) 

A patent contains one, and only one, right: the right to exclude. However, one class of patents statutorily lacks the right to exclude. Surgical method patents are not enforceable against medical practitioners or health care facilities, which are often the only potential infringers of such patents. Despite this, inventors regularly file for (and receive) these unenforceable patents. This Article is the first to provide evidence of this phenomenon. However, this revelation simply begs the question: Why would anyone go to the expense (more than $20,000, on average) of patenting a surgical method that lacks the right to exclude?

Some other theory—other than the utilitarian patent quid pro quo—is required to explain the continued appeal of unenforceable surgical method patents. This Article answers that question by challenging the widely held view that the right to exclude is the sole concern of patent law. To explain the existence and appeal of unenforceable patents, this Article looks to patent signaling theory and personhood theory of real property. Essentially, some inventors patent because they want to send a signal to someone else about the invention or because the patent makes up part of their “public persona.” At times, those signaling or personhood values are the exclusive values of patenting.

There are doctrinal payoffs to this theoretical insight, as well. For instance, inventors who approach the patent system from a personhood angle bring with them a completely different set of costs and benefits than those traditionally assumed. To these inventors, the primary benefit of the patent system is the public disclosure that patenting provides. This contradicts almost all extant patent theories, which consider disclosure to be the primary cost that inventors seek to avoid. As such, this Article provides a novel understanding about the motivation to patent, an understanding that is much more concerned with knowledge dissemination and recognition for creation of than with exclusive rights.

 

Saliency, Anchors & Frames: A Multicomponent Damages Experiment (with Roderick O’Dorisio)

Bernard Chao (University of Denver Sturm College of Law)

Modern technology products contain thousands, sometimes hundreds of thousands, of different features. Nonetheless, when electronic manufacturers are sued for patent infringement, these suits typically accuse only one feature, or in more complex suits, a handful of features. But damages verdicts often do not reflect the relatively small contribution an individual patent makes to an infringing product. One study observed that verdicts in these types of cases average 9.98% of the price of the entire product. While both the courts and commentators have blamed the law of patent damages, no one has considered whether cognitive biases may cause these outsized damages awards. Relying on decision-making concepts from other contexts, the authors hypothesize that two biases, namely, a saliency bias and anchoring, may be at work in a patent trial. Since the infringing feature is the most salient feature in a patent trial (i.e. the focus of the trial), jurors may tend to overvalue that feature. Moreover, a patentee’s irrationally high damages demand, may “anchor” the juries in that number.

We conducted an online 3x3x2 between-subjects experiment to test whether these biases exist and if so, whether particular debiasing techniques may reduce these biases. In eighteen different scenarios, mock jurors were asked to assess damages for different smartphone features. The three manipulations involved: 1) rotating three features so that they were either the feature-in-suit or one of the other features defendant identified as contributing to the smartphone’s overall value; 2) changing the jury verdict form so that mock jurors had to evaluate both the feature-in-suit and other features together; and 3) having the defendant explicitly call out the plaintiff for anchoring the jury in an irrationally high number.

The results suggest that the two cognitive biases were at play when juries assessed damages for two tested features (camera resolution and enhanced security), but not a third (amount of storage). That may be because the value of increased storage was familiar to mock jurors while the values of the other two features were not. Modifying the jury verdict form reduced, but did not eliminate the primary effect of the saliency bias, while the defendant’s tactic of de-biasing the jury did not significantly reduce damages. In addition, qualitative comments suggested that some mock jurors resisted the jury instructions designed to compensate plaintiffs for the missing feature and instead assessed damages to punish the defendant.

 

Crowdfunding and Patents

Chris Cotropia (University of Richmond School of Law)

Patents and crowdfunding both attempt to foster early stage innovations. In theory, patents incentivize the creation of inventions and, in turn, attract investment and remove coordination barriers to facilitate commercialization. Crowdfunding allows multiple individuals to make small contributions to finance start-up ventures. This study explores the interaction between these two innovation tools by examining 9,184 Kickstarter campaigns in patent-eligible categories to determine whether patented, or patent-pending, projects are more likely to reach their funding goal and in turn achieve actual, on-time delivery when compared to non-patented projects. The study finds, perhaps surprisingly, that patented projects are not more likely to obtain funding compared to non-patented ones. However, patent-pending projects are more successful in getting funded. This preference, for patent-pending projects but not patented ones, was confirmed through a series of laboratory experiments on Amazon Mechanical Turk (MTurk). Delivery for those funded patented projects is less likely and delayed substantially longer than their non-patented counterparts. Patent-pending projects exhibited a higher delivery rate, with their delays falling in between patented and no patent projects. The results suggest timing is important. That is, patents are an important signal to crowdfunding contributors, but only when the patent, and thus project, is fresh and truly in its early stages of development, evidenced by the success of patent-pending, but not yet issued, projects. These results provide insights for both what makes a successful crowdfunding campaign and whether patents help attract funding and assist in commercialization in the crowdfunding context.

 

Artificial Intelligence Patent Examination & Big Data

Tabrez Ebrahim (California Western School of Law)

Artificial intelligence (A.I.) technological advancements are transforming the inventor-patent examiner relationship from a human-human interaction to an interaction involving machine-human interaction or a machine-assisted element in a number of ways. This Article adds to the early discussion of A.I. in patent examination with two proposals for the USPTO, the technical underpinning and challenges of those proposals, and associated policy considerations. First, this Article proposes that the USPTO develop and initiate A.I-screening capabilities to identify A.I.-generated patents, termed the “Artificial Intelligence Identification System” (AIIS), as part of the Office of Initial Patent Examination. This first proposal would serve as a threshold search tool to detect and identify patent applications utilizing A.I. and would identify the potential flood of A.I.-generated patent applications with minute changes amongst them. The technological foundation of this proposal is to provide A.I. itself to label and tag A.I.-generated patent applications. Second, this Article proposes that the USPTO develop and make accessible an A.I. tool that provides big data capabilities for the USPTO itself and to the public. This second proposal would serve as an added capability in the Public Patent Application Information Retrieval (Public PAIR) system, and it would balance the A.I.-capabilities among the private sector and also between private sector and USPTO. The technological foundation of this proposal is to continue to provide patent prosecution history data, but also provide machine learning training capabilities. These proposals require the USPTO to carefully reevaluate its infrastructure and organization and balance A.I.-technological access. This Article closes by assessing the two proposals based on access, fairness, and transparency policy considerations.octrines.

 

Irrational Ignorance at the Patent Office

Michael Frakes (Duke Law) & Melissa Wasserman (UT School of Law)

There is widespread belief that the Patent Office issues too many bad patents that impose significant harms on society. At first glance, the solution to the patent quality crisis seems straightforward: give patent examiners more time to review applications so they grant patents only to those inventions that deserve them. Yet the answer to the harms of invalid patents may not be that easy. It is possible that the Patent Office is, as Mark Lemley famously wrote, “rationally ignorant.” In Rational Ignorance at the Patent Office, Lemley argued that because so few patents are economically significant, it makes sense to rely upon litigation to make detailed validity determinations in those rare cases rather than increase the expenses associated with conducting a more thorough review of all patent applications. He supported his thesis with a cost-benefit calculation in which he concluded that the costs of giving examiners more time outweighs the benefits of doing so.                                             

Given the import of the rational ignorance concept to the debate on how best to address bad patents, the time is ripe to revisit this discussion. This Article seeks to conduct a similar cost-benefit analysis to the one that Lemley attempted nearly fifteen years ago. In doing so, we employ new and rich sources of data along with sophisticated empirical techniques to form novel, empirically driven estimates of the relationships that Lemley was forced, given the dearth of empirical evidence at his time, to assume in his own analysis. Armed with these new estimates, this Article demonstrates that the savings in future litigation and prosecution expenses associated with giving examiners additional time per application more than outweigh the costs of increasing examiner time allocations. Thus, we conclude the opposite of Lemley: society would be better off investing more resources in the Agency to improve patent quality than relying upon ex-post litigation to weed out invalid patents. Given its current level of resources, the Patent Office is not being “rationally ignorant” but, instead, irrationally ignorant.

 

Science Fiction: Fictitious Data in Patents

Lisa Larrimore Ouellette (Stanford Law)

Inventors applying for U.S. patents are allowed to include predicted experimental methods and results, known as prophetic examples, as long as the examples are not written in the past tense. These examples are particularly prevalent in biology and chemistry; an estimated 17% of examples in U.S. patents in these fields are prophetic. Some scholars—including both of us—have raised questions about whether too many patents are granted based on unproven results, but in this essay, we make a narrower point: Even if the law governing how early U.S. patents may be awarded remains unchanged, the existing legal standard can be satisfied in less misleading ways.

Survey evidence shows that many scientific researchers do look to the patent literature for technical information, but they are unlikely to be familiar with the verb tense rule that distinguishes predicted results from actual data. And there is evidence that scientists are misled: of 100 randomly selected U.S. patents with only prophetic examples that were cited in a scientific article, 99 were not cited in a way that made clear that the cited information was prophetic. Causing further confusion, the subtlety of prophetic examples may be literally lost in translation for some foreign patent applications. But nothing in U.S. patent law prevents patentees from more clearly distinguishing real data from predictions.

To support our argument that the benefits for patentees from prophetic examples can be obtained through less misleading methods of constructive reduction to practice, we interviewed U.S. patent prosecutors, including those who regularly use prophetic examples and those who rarely follow this practice. In this essay, we describe the results of these interviews and recommend changing patent prosecution guidelines at the U.S. Patent & Trademark Office to clarify fictitious data.

 

Decentralized Patent System

Lital Helman (Ono Academic College Faculty of Law)

The patent system features a centralized structure almost from end to end. The United States Patent and Trademark Office (PTO) possesses power to examine inventions, publish patents, and increasingly manage post-examination proceedings. The centralized nature of the patent system leads to well-known inefficiencies, including production problems, low quality patents, and information inefficiencies. Yet, despite intense criticism, and even proposals to ‘demonopolize’ the agency, the PTO’s dominance persists, and has in fact increased with the recent enactment of the America Invents Act (AIA).

This Paper considers an alternative, decentralized, patent system. Harnessing new developments in database technology, I propose that inventors would submit patent applications to a shared patent record instead of to the PTO. After a grace period, in which inventions would remain secret, the record would open to the public and the patent examination process would ensue. Following the examination, granted patents would be published to the record. During the examination process and throughout the lifetime of the patent, industry and state actors would be able to dynamically update the record. For example, third parties would be able to submit prior art, scientists — to weigh in on obviousness, patentees — to offer licenses, and courts — to list decisions and outstanding cases that pertain to the patent.

A decentralized patent model fosters a participatory and dynamic patent record and promises to transform the record into a central tool in the innovation economy. This strategy would yield several key benefits. First, it would boost the quality of patent examination and improve productivity, by allowing knowledgeable parties to shoulder some of the tasks that examiners now perform alone. Second, it would spur innovation by advancing information on new inventions, and reduce waste by preventing a race for patents that have already been filed. Third, it would allow inventors to avoid innocently infringing patents that are strategically held by ‘patent trolls,’ tackling one of the most troubling issues in patent law. Finally, decentralization would facilitate patent licensing, thus driving the adoption of new inventions in the market. Improved licensing forecasts would also produce a dynamic effect: increasing the potential reward of patents ex post, thus boosting the incentive to invent ex ante.

 

Obviousness: Before and After

Dmitry Karshtedt (GW Law)

Non-obviousness, codified in 35 U.S.C. § 103, has been called “the ultimate condition of patentability” because of its crucial function of weeding out trivial patents and because of the challenges decision-makers have faced in devising a framework to determine whether a patent claim is obvious. The starting place for modern § 103 jurisprudence is Graham v. John Deere, the foundational Supreme Court decision interpreting this statutory provision. One of Graham’s important moves to was divide the evidence that bears on whether a patent claim is obvious into two general categories. The first set of inquiries, sometimes characterized as the “prima facie” case, mainly implicates pre-patent technical disclosures, known in patent law under the collective term “the prior art.” These inquiries include determinations of the prior art’s scope and content, differences between the prior art and the claim at issue, and the average level of skill in the technological area of the claimed invention. The second set of inquiries, which the Supreme Court in fact called “secondary considerations,” includes non-technical evidence such as commercial success of the claimed invention, long-felt need for a solution that the invention provided, and the failure of others to successfully address the problem ultimately solved by the patent. Decision-makers have used both types of evidence in determining whether or not patent claims comply with § 103.

In this Article, I argue that the primary-secondary heuristic that the Court set forth in Graham—and which it borrowed from a law review article that worked off some assumptions that are outdated if they were ever correct—has led to conceptual errors, and should be rejected in favor of a different framework. Among other things, the Court’s artificial segmenting of the § 103 inquiry into technical and non-technical siloes has led to mis-evaluations of the probative value of various types of evidence bearing on the obviousness question. I maintain that the logically salient way of organizing evidence in § 103 cases is not the primary-secondary divide, but the distinction between evidence that is available before the filing date of the patent application (ex ante) and evidence that is available after that date (ex post). Thus, after abandoning the primary-secondary framework, courts should instead classify evidence proffered on the question of obviousness into ex ante and ex post categories. I explain that, in contradistinction to the dubious guidance of Graham, the proposed approach fully accounts for the crucial role that the Patent Act attaches to the filing date in determinations of patentability. Finally, I contend that, should we wish to modulate the non-obviousness requirement so as to increase incentives for post-filing experimentation and commercialization activities, the Article’s framework provides a ready lever for implementing such a change.

 

Assessing the impact of patent litigations on the venture capital financing of young firms

Lakshmi Mudigonda (State University of New York at Buffalo)

Existing literature on entrepreneurship established that the intellectual property is crucial for young firms and that patents serve as efficient signals to the prospective investors (Hsu and Ziedonis, 2008). Intellectual property rights, along with other rights, bestow the owner with right to enforce in the event of infringement and litigations are manifestations of this right. Owing to the crucial role-played by the patents ‘what is the impact of patent litigations on the firms?’ and ‘what do the patent litigations convey to the investors?’ These questions are not sufficiently answered in the management literature. It is interesting to know if patent litigations drive away the investors or if VCs look beyond litigation to fund the young firms involved in litigations. In addition, ‘do the terms of investment differ for firms that are recently litigated compared to firms that are not involved in recent litigation?’ Are the rounds tightly staged or highly syndicated? All these important questions are unanswered.

The objective of this project is to quantify the impact of patent litigations on young firm’s growth and survival. Using patent litigation data provided by USPTO and Venture capitalist investment data from VentureXpert, we would like to test various hypothesis related to the impact of litigation characteristics on probability of raising VC funding and quality of funding raised. Patent litigation data is to be matched to investee firm names in venture capital investment data collected from VentureXpert and patent assignee databases. The current empirical challenge is to collect the patent numbers that are litigated under each case filed. The quality of investment is tested using amount invested in the rounds after litigation, number of rounds raised and number of investors in each round.          

Finding from this project will have valuable implications for management executives in young firms and for policy makers. Litigation process involves a series of decisions. Litigations are costlier for young firms than for established firms. Hence, the related decisions have far greater implications on firm growth and survival. There is little empirical literature to guide these decisions and young firms often lack in-house legal expertise. The current project is an attempt to guide the young firms in making patent related decisions.

 

Price Discrimination and Patent Exhaustion

David Olson (Boston College Law School)

This paper exams the use of patent licensing to promote price discrimination. The paper shows the ongoing incentives to use patent licenses to achieve product differentiation and price discrimination. The paper then explores the historical and current legal regime regarding patent exhaustion. The paper concludes by discussing how patent owners may attempt price discrimination under the current patent exhaustion case law, as well as the costs and benefits of such attempts.

                                                                 

Revisiting the Impact of USPTO Examiner Incentives: Learning and Patent Office Outcomes

Nicholas Pairolero (United States Patent and Trademark Office) with Charles A. W. deGrazia and Mike H.M. Teodorescu

Prior research on USPTO examiner incentives suggests that first-action allowance rates increase with seniority and experience, resulting in lower patent quality. However, we identify an examiner learning mechanism that accounts for this empirical fact. Our analysis suggests that the policy prescriptions in the literature regarding modifying time allocations should be reconsidered. In particular, rather than re-configuring time allocations for every examination promotion level, researchers and stakeholders should focus on the variation in outcomes between junior and senior examiners. Further, the examiner learning mechanism studied in this paper also reduces patent grant delay, and therefore likely benefits innovators and firms.

∗ The views expressed are those of the individual authors and do not necessarily reflect official positions of the Office of Chief Economist or the U. S. Patent and Trademark Office. USPTO Economic Working Papers are preliminary research being shared in a timely manner with the public in order to stimulate discussion, scholarly debate, and critical comment.

 

Patent Office Errors

Greg Reilly (Chicago-Kent College of Law)

Commentators widely agree that the Patent Office often errs, granting patents that do not meet the statutory criteria and should not have issued.  Concern about Patent Office errors is behind many recent debates in patent law, including those over the presumption of validity for issued patents, new administrative procedures to cancel issued patents that fail the statutory criteria, and the proper of amount of resources to expend on initial patent examination.  Largely overlooked, however, is that Patent Office errors are not a unitary category.  This Article identifies four situations in which the Patent Office issues a patent that fails the statutory criteria and is invalid.  First, mistaken errors are when the Patent Office issues the patent despite having access to all of the relevant information, such as when the invalidating prior art was before the examiner but the examiner did not fully appreciate its significance.  Second, rational errors are when the Patent Office could have accessed the relevant information with sufficient time and effort but did not, such as when the invalidating prior art is a patent not found by the examiner.  Third, inevitable errors are when the relevant information is not amenable to discovery given the design of patent examination, such as invalidating sales or public uses.  Fourth, ex post “errors” are when the Patent Office properly issued the patent based on then-existing information but the patent subsequently becomes invalid as the patent owner stretches the patent claims further from the actual invention.  The Article evaluates which types of errors litigation and administrative patent cancellation are and are not well-designed to address, as well as which types of errors are most prevalent.  Recognizing the different types of Patent Office errors sheds light on current debates over how to address erroneously granted patents.

 

Patent Rights and State Sovereign Immunity

William Rich (Washburn University School of Law)

Can patent holders bring infringement claims for monetary damages against state universities? The Patent Remedy Clarification Act of 1992 indicated that the answer to that question should be yes. Seven years later, however, the Supreme Court rejected that argument, holding that the Patent Clause of the Constitution did not empower Congress to abrogate state sovereign immunity protected by the 11th Amendment. Arguments not yet considered by the courts, however, provide alternative grounds for rejecting state immunity in patent cases. Historical treatment by courts and commentators, including recent Supreme Court opinions, support the conclusion that patent rights exemplify a category of “privileges” that “owe their existence to the Federal government . . . its Constitution, or its laws.” As such, they should receive protection under the Privileges or Immunities Clause of the 14th Amendment which empowers Congress to override state immunity. Furthermore, in rejecting Patent Clause authority to abrogate state immunity, courts also ignored an alternative argument based upon the foreign affairs powers of the national government. International treaties provide a framework for patent protection, and U.S. negotiators can only strengthen enforcement of patent rights against government actors from other nations if American inventors have the authority to enforce their claims against state actors within this country.

 

The Surprising Value of Abandoned Applications to the Patent System

David Schwartz (Northwestern Law School) with Christopher A. Cotropia

Some patent applicants abandon their applications after publication without ever receiving a patent. The conventional wisdom is that an abandoned patent application is deficient in some way and consequently worthless. This Article empirically studies abandoned patent applications, finding they are more valuable on average than issued patents across a number of dimensions. For example, abandoned applications are more likely to be used as prior art by the USPTO when rejecting claims of others. There are even numerous abandoned patent applications in the list of the USPTO’s most highly cited pieces of prior art in office actions. Our results present an enigma for both patent scholars and economists: abandoned published applications, widely considered worthless, appear more valuable than issued patents and play a larger role in the patent system than previously thought. This high use of abandoned applications in rejecting other applications and thus preventing broader patent rights for others is arguably a public service, and potentially a huge private loss, that has not been previously recognized in the literature.

Our findings also have important implications for patent law and doctrine. Many scholars claim that scientific researchers ignore patents, rendering the disclosure portion of the patent bargain as an illusion. Our study exposes a yet unrecognized beneficial disclosure—an administrative disclosure where the USPTO relies upon abandoned applications as a significant source of prior art for rejections and improving issued patent quality. Our findings also raise questions about the effectiveness of the patent granting process. Why are there applications that go abandoned but are also amongst the most important pieces of prior art? We empirically study these most cited abandoned applications to attempt to discover the answer.

 

Jefferson’s Taper

Jeremy Sheff (St. John’s University School of Law)

This Article reports a new discovery concerning the intellectual genealogy of one of American intellectual property law’s most important texts. The text is Thomas Jefferson’s often-cited letter to Isaac McPherson regarding the absence of a natural right of property in inventions, metaphorically illustrated by a “taper” that spreads light from one person to another without diminishing the light at its source. I demonstrate that Thomas Jefferson likely copied this Parable of the Taper from a nearly identical passage in Cicero’s De Officiis, and I show how this borrowing situates Jefferson’s thoughts on intellectual property firmly within a natural law theory that others have cited as inconsistent with Jefferson’s views. I further demonstrate how that natural law theory rests on a pre-Enlightenment Classical Tradition of distributive justice in which distribution of resources is a matter of private judgment guided by a principle of proportionality to the merit of the recipient — a view that is at odds with the post-Enlightenment Modern Tradition of distributive justice as a collective social obligation that proceeds from an initial assumption of human equality. Jefferson’s lifetime correlates with the historical pivot in the intellectual history of the West from the Classical Tradition to the Modern Tradition, but modern readings of the Parable of the Taper, being grounded in the Modern Tradition, ignore this historical context. Such readings cast Jefferson as a proto-utilitarian at odds with his Lockean contemporaries, who supposedly recognized property as a pre-political right. I argue that, to the contrary, Jefferson’s Taper should be read from the viewpoint of the Classical Tradition, in which case it not only fits comfortably within a natural law framework, but points the way toward a novel natural-law-based argument that inventors and other knowledge-creators actually have moral duties to share their knowledge with their fellow human beings.

 

USPTO Patent Number and Case Code File Dataset

Ted Sichelman  (University of San Diego School of Law) with David L. Schwartz Richard Miller, Asrat Tesfayesus, & Andrew Toole

Researchers of the U.S. patent litigation system have typically had to rely on proprietary, commercial databases to retrieve comprehensive lists of litigated patents and associated case information, precluding publication of underlying data and verification of study results.  In other situations, researchers have used incomplete datasets, potentially resulting in skewed study results.  In order to overcome these limitations, the authors and their research teams reviewed every available initial complaint and related documents in roughly 99% of all patent cases filed in U.S. district courts between 2003 and 2016 in order to generate a comprehensive list of litigated patents in those cases, which can be downloaded in bulk and used and reproduced with no licensing restrictions.  In addition, the authors and their teams coded the case “type” for all of these actions, such as infringement, declaratory judgment, false marking, ownership dispute, malpractice, and so forth. This data has been married to USPTO’s Patent Litigation Docket Dataset, which provides full case and docket information for every one of these cases. Thus, for the first time, researchers can now use a single, comprehensive data set of patents, case types, and related case information to conduct empirical studies of U.S. patent litigation.

 

Comparative Patent Scope

Norman Siebrasse (University of New Brunswick Faculty of Law)

This paper provides a comparative analysis of US and European law on patent scope and the related issue of utility / industrial applicability, with a focus on biotechnology. It is principle of both US and European patent law that the permissible scope of a patent claim should be commensurate with the inventor’s contribution to the art. While the principle itself is generally accepted, it has proven difficult to implement. In the US, it has given rise to the controversial written description doctrine, and in European law the novel and almost equally controversial concept of “plausibility” has emerged as a means of controlling speculative and overbroad claims. Of course, these doctrines interact with a variety of other doctrines, including enablement / sufficiency, utility / industrial applicability, and claim construction, as a means of limiting patent scope.

While some doctrines are broadly comparable between the jurisdictions, other key doctrines, in particular US written description and European plausibility, do not have a clear counterparts. Consequently, rather than carry out a direct comparison of the relevant doctrines, this article focuses on some canonical examples, including after-acquired technology, functional claims to monoclonal antibodies, timing of patenting for a novel compound, and selection patents. These examples will be separately analyzed descriptively on a comparative basis. This will allow an assessment of the degree to which the law converges between the jurisdictions, without relying on a shared doctrinal framework. Conversely, it will also allow a comparative functional assessment of the legal doctrines, by identifying the extent to which particular doctrines play corresponding roles in the various examples. Normative analysis, drawn broadly from law and economics, will then focus on points of divergence. For example, while European law does not have an explicit  “possession” requirement such as that which drives US written description, and the initial descriptive question is whether this difference results in different outcomes on similar facts, or whether European law arrives at similar results using other mechanisms. If the results are indeed different, the question is which outcome is preferable; if the results are similar, there is still a question as to which doctrinal framework is preferable in terms of concerns such as predictability.

 

Patent Law's Latent Philosophical Schism

Matthew Sipe (GW Law)

Under the conventional view, utilitarian theory has come to dominate patent law.  Patents are viewed as the incentive we offer for innovation, from which all of society ultimately benefits, despite short-term monopoly costs.  Patent doctrines are, in turn, assessed against the goals of optimizing that incentive and reducing those costs.  On the other side, a minority of embattled jurists and scholars defend the relevance of freestanding moral principles, such as desert, autonomy, or justice, and argue for their re-incorporation into contemporary patent doctrine and policy.

This Article challenges that conventional view, and offers a unique reframing: the moral principles never left patent law, but instead took up residence in one half of the field, where they reign supreme.  While utilitarian theories do an excellent job of explaining modern patent validity law, patent infringement law is unmistakably animated by broader moral principles, and is even at times hostile to a traditional economic approach.

The Article examines in detail the most significant doctrines governing patent validity—novelty, non-obviousness, subject-matter eligibility, utility, written description, enablement, and inventorship—and demonstrates the strength of their relationship to utilitarian frameworks at the (often explicit) expense of others.  The Article then explores the most significant doctrines with respect to patent infringement—relief (whether injunctive or damages), scope (vis-à-vis the doctrine of equivalents), and defenses (inequitable conduct and prior use)—and builds the case that moral frameworks alone are capable of explaining their contours.  Finally, the Article contends that this framework schism can be traced to three interrelated causes: the adjudicatory split between the USPTO and district courts, the influence of traditional property law, and the mix of private-law and public-law features that patents exhibit.

 

Global Patterns of Technical Knowledge Flow

Andrew Torrance (KU School of Law;  MIT Sloan School of Management)

Technical knowledge flows among inventors, organizations (e.g., firms, research institutes, universities), and countries.  Patent citation data can be used to estimate these flows.  In this study, we focus on knowledge flow among countries or other jurisdictions, calculating pairwise citations - both raw and importance-weighted - to and from them.  Our data includes pairwise comparisons in technical knowledge flow among more than 200 countries and other patent jurisdictions;  countries are identified as developed and developing countries.  We find that technical knowledge flow from developed to developing countries is much greater than vice versa, but that technical knowledge flow from developing to developed countries has been growing very rapidly over the past decade.  Using radial diagrams, we illustrate detailed patterns of technical knowledge flow both within and between countries and jurisdictions and types of countries.  This method offers new insights into global patterns of technical knowledge flow.

 

Inconsistent Intellectual Property Judgments

Saurabh Vishnubhakat (Texas A&M University School of Law)

This article explores, both analytically and empirically, inconsistent judgments by courts and administrative tribunals regarding the validity of patents and trademarks. Although correcting the erroneous grant of these IP rights was historically the province of the courts, robust administrative mechanisms now provide alternate means for error-correction. Patents are subject to review in the Patent Trial and Appeal Board; trademarks, in the Trademark Trial and Appeal Board. These administrative proceedings are competitive substitutes for judicial resolution, and litigants often have diverging preferences for court or agency process. Concurrent litigations are a frequent result, creating the potential for inconsistent judgments. Using comprehensive data on Patent Office petitions for administrative ex post review, I quantify the extent to which initial PTAB decisions to grant or deny review, as well as final PTAB decisions about patent validity, are consistent with prior or subsequent court decisions on the same patents. To evaluate these findings, I also examine analogous TTAB and court decisions pertaining to the same trademarks as a baseline. The article’s key contributions are to put traditional understandings of consistent judgments into perspective with modern agency adjudication of intellectual property rights, and to recommend reforms for conserving adjudicatory resources by minimizing the potential for inconsistency and relitigation.

Other Opportunities

Outside the classroom there are numerous rich experiences available to students interested in further pursuing their interests in intellectual property law. Students may join the Intellectual Property Law Student Association, which is run by students for the purpose of encouraging interest in their field by sponsoring interesting speakers and events.

KU Law can also help place students in externships and internships at the KU Center for Technology Commercialization.


Questions?

Andrew Torrance
Professor of Law
785-864-9222
torrance@ku.edu

PatCon5 | The 5th Annual Patent Conference