Patent Law Review Canon Bleg - 1970s
What do you think is the most important law review article about patent law that was published in the 1980s?
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Academic commentary about patent law, i.p. law, creativity, and more
April 20, 2008Patent Law Review Canon Bleg - 1970sWhat do you think is the most important law review article about patent law that was published in the 1980s? Patent Law Review Canon Bleg - 1960sWhat do think is the most important law review article about patent law that was published in the 1960s? March 28, 2008Agrizapping ObviousnessToday, in Agrizap, Inc. v. Woodstream Corp. (Fed. Cir. May 28, 2008), the Federal Circuit overturned a jury verdict of nonobviousness. The claimed invention is a rodent electrocution trap, U.S. Patent No. 5,949,636. The key difference between the ‘636 trap and the key prior art trap (a trap the patentee sold more than a year before the ‘636 patent’s filing date) is that the prior art trap used a mechanical switch and the claimed trap uses a resistive switch. The Federal Circuit’s analysis employs a post-KSR presumptive obviousness framework that I think we’ll see quite a bit of in the coming years. Here’s the entirety of the court’s substantive analysis of the nonobviousness question:
February 23, 2008The perfume tradeAn interesting article from Chandler Burr in today’s New York Times, about the invention of scent molecules in the perfume trade.
As they say, read the whole thing! ( I wonder if the perfume folks are as agitated about patent reform as big pharma … ) February 15, 2008Bilski Goes En BancThe Federal Circuit has taken In re Bilski, the patentable subject matter case, en banc. According to the September 2006 BPAI decision rejecting Bilski’s claims on section 101 grounds, Claim 1 is as follows:
The Federal Circuit en banc order asks for a supplemental brief from each of the parties, Bilski and the PTO, by March 6, 2008. Amici can file briefs “30 days thereafter.” By my count, that would put the amicus brief deadline on Saturday, April 5. And under Fed R App P 26(a)(3), that Saturday becomes the next Monday, April 7. Here are the questions in the court’s en banc order:
Although the courts order doesn’t mention it, the closest analogue in the court’s recent section 101 cases appears to me to be In re Comiskey (Sept. 2007). January 23, 2008Common Sense at the BPAIA potentially interesting fact about the database of Board of Patent Appeals & Interferences decisions available on Westlaw: From 4/30/2007 (i.e., the date KSR issued) to now (which is 269 days), the phrase “common sense” appeared at least once in 233 BPAI opinions. In the 269 days ending 4/29/2007 (the day before KSR), the phrase “common sense” appeared at least once in 58 BPAI opinions. (That’s a 364% increase.) Coincidence? Hard to say … The Board’s Lee decision(s)You can pull down a copy of the BPAI’s remand decision(s) in In re Lee here. The copy is a pdf; it starts with the Board’s denial of rehearing, and continues with the Board’s June 2006 remand decision. The Federal Circuit affirmed the Board’s decision yesterday, as I noted. January 22, 2008‘Nuf saidThis morning, the Federal Circuit affirmed the PTO’s remand decision in In re Lee rejecting the claims as invalid for obviousness; the case had been argued just 14 days ago, on Jan 8. The court affirmed by a summary affirmance order, under Rule 36 … in other words, no opinion, just the word “Affirmed.” In re Lee, in its prior trip to the Federal Circuit, gave the court a bit of a black eye: it was in Lee that the court opined that “[t]he ‘common knowledge and common sense’ on which the Board relied in rejecting Lee’s application are not the specialized knowledge and expertise contemplated by the Administrative Procedure Act. Conclusory statements such as those here provided do not fulfill the agency’s obligation.” 277 F.3d 1338, 1344 (Fed. Cir. 2002). Compare KSR: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” 127 S. Ct. 1727, 1742-43. January 17, 2008“Benefit of the Doubt?” - ReduxI first posted the below item in November 2006. I’m reposting it now in response to a comment made to a recent post. So … here’s what I wrote in Nov 2006: You file a patent application at the Patent & Trademark Office. Are you entitled to receive the patent unless the PTO can show you’re not entitled to it? Put another way, who gets the benefit of the doubt on patentability or not … you, or the PTO? Structural rules like this play a large role in driving outcomes, as any lawyer will tell you. The case law says that, at least so far as novelty (sec 102) and nonobviousness (sec 103) are concerned, the applicant is entitled to the claim unless the PTO proves the contrary. The current approach is stated in, e.g., In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). But the current disregard for any textual difference between sections 102 and 103 traces to In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967). Warner makes no effort to root in the text of section 103 the burden it places on the PTO to show obviousness (rather than placing on the applicant the burden to show nonobviousness). Is the case law right? The issue comes to the fore now because, as PFF’s IPcentral has noted, petitioner KSR has filed its Reply Brief at the Supreme Court. (You can pull the brief at IPcentral.) Oral argument is Tuesday, November 28. There’s a strong argument from statutory text that the case law is wrong. Here it is: Section 102 begins, “A person shall be entitled to a patent unless … ,” and continues with a variety of scenarios that, if proved, would negate the applicant’s entitlement. This mandate, “shall be entitled … unless,” is quite clear. How does section 103(a), the core nonobviousness requirement, compare? Well, it’s phrased quite differently: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if … .” Unlike section 102, which expressly mandates the applicant’s entitlement unless a negating condition is proved, section 103 commands that a patent can’t be obtained if a particular condition - obviousness - exists. Given that Congress knows how to put the burden on the PTO to show lack of entitlement (as in section 102), the fair reading of section 103’s quite different text is that it puts the burden on the applicant to show nonobviousness. Petitioner KSR points out that this structural question plays an important role in its case. In doing so, it urges a rejection of the common, undefended (and indefensible?) (mis)reading of the statute. According to KSR, which calls the common reading “an upside down view of sec 103(a),”
KSR Reply Brief at 10 (emphases in original). Strong stuff. So, we have another issue to watch for in the KSR case … will the Supreme Court state that an applicant has the burden to show nonobviousness, or that the PTO has the burden to show obviousness? January 14, 2008A new essayI’ve just posted a new essay on SSRN. It’s entitled “Level of Skill and Long-felt Need: Notes on a Forgotten Future.” Here’s the abstract:
If you would like to download a pdf of the essay, please follow the link to SSRN. And I welcome any feedback you care to offer on the paper. |