scholarly journals Is Patent Law Technology-Specific?

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
New Technologies ◽  
Computer Software ◽  
Patent Law ◽  
The Other ◽  
Legal Rules ◽  
Legal Standards ◽  
Structural Problems ◽  
Prior Art ◽  
Federal Circuit ◽  
Written Description

Patent law has a general set of legal rules to govern the validity andinfringement of patents in a wide variety of technologies. With a very fewexceptions, the statute does not distinguish between different technologiesin setting and applying legal standards. In theory, then, we have a unifiedpatent system that provides technology-neutral protection to all kinds oftechnologies.Of late, however, we have noticed an increasing divergence between therules themselves and the application of the rules to different industries.The best examples are biotechnology and computer software. In biotechnologycases, the Federal Circuit has bent over backwards to find biotechnologicalinventions nonobvious, even if the prior art demonstrates a clear plan forproducing the invention. On the other hand, the court has imposed stringentenablement and written description requirements on biotechnology patentsthat do not show up in other disciplines. In computer software cases, thesituation is reversed. The Federal Circuit has essentially excused softwareinventions from compliance with the enablement and best mode requirements,but has done so in a way that raises serious questions about howstringently it will read the nonobviousness requirements. As a practicalmatter, it appears that while patent law is technology-neutral in theory,it is technology-specific in application.The paper explains how the application of the same general legal standardscan lead to such different results in diverse industries. Much of thevariance in patent standards is attributable to the use of a legalconstruct, the "person having ordinary skill in the art" (PHOSITA), todetermine obviousness and enablement. The more skill those in the art have,the less information an applicant has to disclose in order to meet theenablement requirement - but the harder it is to meet the nonobviousnessrequirement. The level of skill in the art affects not just patentvalidity, but also patent scope.We do not challenge the idea that the standards in each industry shouldvary with the level of skill in that industry. We think the use of thePHOSITA provides needed flexibility for patent law, permitting it to adaptto new technologies without losing its essential character. We fear,however, that the Federal Circuit has not applied that standard properly ineither the biotechnology or computer software fields. The court has aperception of both fields that was set in earlier cases but which does notreflect the modern realities of either industry. The changes in an industryover time present significant structural problems for patent law, bothbecause law is necessarily backward-looking and precedent-bound and becauseapplying different standards to similar inventions raises concerns abouthorizontal equity. Nonetheless, we believe the courts must take more carethan they currently do to ensure that their assessments of patent validityare rooted in understandings of the technology that were accurate at thetime the invention was made.

scholarly journals Biotechnology's Uncertainty Principle

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Uncertainty Principle ◽  
New Technologies ◽  
Structural Features ◽  
Patent Law ◽  
Patent Policy ◽  
Prior Art ◽  
Practical Matter ◽  
Federal Circuit ◽  
Special Rules ◽  
Written Description

In theory, we have a unified patent system that provides technology-neutralprotection to all kinds of technologies. However, we have recently noticedan increasing divergence between the rules actually applied to differentindustries. Biotechnology provides one of the best examples. Inbiotechnology cases, the Federal Circuit has repeatedly held thatuncertainty in predicting the structural features of biotechnologicalinventions renders them nonobvious, even if the prior art demonstrates aclear plan for producing the invention. At the same time, the court claimsthat the uncertain nature of the technology requires imposition ofstringent patent enablement and written description requirements that arenot applied to patents in other disciplines. Thus, as a practical matter itappears that although patent law is technology-neutral in theory, it istechnology-specific in application. Much of the variance in patentstandards is attributable to the use of a legal construct, the "personhaving ordinary skill in the art" (PHOSITA), to determine obviousness andenablement. We do not challenge the idea that the standards in eachindustry should vary with the level of skill in that industry. We think theuse of the PHOSITA provides needed flexibility for patent law, permittingit to adapt to new technologies without losing its essential character. Wefear, however, that the Federal Circuit has not applied that standardproperly in biotechnology. The court has a static perception of the fieldthat was set in its initial analyses of biotechnology inventions, but whichdoes not reflect the realities of the industry. In the final part of thepaper, we offer a very preliminary policy assessment of theseindustry-specific patent cases. We suggest that the special rules theFederal Circuit has constructed for biotech cases are rather poorly matchedto the specific needs of the industry. Indeed, in some ways the FederalCircuit cases have it exactly backwards. We offer a few suggestions as towhat a consciously designed biotechnology patent policy may look like.

scholarly journals What is the "Invention"?

2018 ◽  
Author(s):  
Christopher A Cotropia
Keyword(s):  
Supreme Court ◽  
Patent Law ◽  
Single Sentence ◽  
Natural Reaction ◽  
The Supreme Court ◽  
Federal Circuit ◽  
Written Description

Patent law is in flux, with recent disputes and changes in doctrine fueled by increased attention from the Supreme Court and en banc activity by the Federal Circuit. The natural reaction is to analyze each doctrinal area involved on its own. Upon a closer look, however, many patent cases concern a single, fundamental dispute. Conflicts in opinions on such issues as claim interpretation methodology and the written description requirement are really disagreements over which "invention" the courts should be considering. There are two concepts of invention currently in play in patent decisions. The first is an "external invention" definition, in which courts define the invention by the detailed technology discussion in the patent specification's descriptions and drawings. Other decisions invoke a "claim-centered invention" definition, which relies almost exclusively on the claim, a single sentence at the end of the patent. Judging these two definitions against common patent theories can help to determine which best fits the theories'narratives.T his Article concludes that the external invention is more favorable because it grounds exclusivity in what the inventor has actually done or plans to do and, accordingly, is more likely to comport with common patent theories.

scholarly journals Copyrightability of Recombinant DNA Sequences

2016 ◽  
Author(s):  
Dan Burk
Keyword(s):  
Intellectual Property ◽  
Dna Sequences ◽  
New Technologies ◽  
Recombinant Dna ◽  
Computer Software ◽  
Copyright Law ◽  
Patent Law ◽  
Intellectual Property Protection ◽  
Dominant Form ◽  
Recent Emergence

The recent emergence and rapid growth of biotechnology as a commercial industry has raised serious questions concerning the role of patent law as the industry's dominant form of intellectual property protection. Several commentators, drawing on an analogy to computer software protection, have suggested copyright law as an alternative method of protecting recombinant DNA innovation. This article reviews these arguments in light of recent court decisions and scholarly commentary concerning copyright of computer software. The article argues that copyright law is not sacrosanct, but rather represents a particular scope of proprietary interests that may be used to accommodate the needs of new technologies such as biotechnology. The article asserts, however, that the decision to apply copyright protection to such a technology should be based on policy rather than on analogy. The article reviews the basic characteristics of both the science of molecular biology and of the biotechnology industry, and, by contrasting these characteristics to those of the software industry, concludes that, as a matter of policy, copyright is not the most appropriate form of intellectual property protection for biotechnology.

scholarly journals Ending Patent Law's Willfulness Game

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Law ◽  
Good Faith ◽  
The Other ◽  
Patent Owner ◽  
Legal Rules ◽  
Legal Advice ◽  
The Law ◽  
Withholding Information

Patent law turns the attorney-client privilege on its head. Patent lawpunishes willful infringers by subjecting them to treble damages. An oddset of legal rules stemming from patent law's effort to determine whatconstitutes willful infringement effectively requires companies confrontedwith a patent first to obtain a written opinion of counsel and then todisclose that opinion in court. To do that, the accused infringer will haveto waive its attorney-client privilege in virtually every case. Even worse,the law puts the question whether an accused infringer will have to waiveprivilege in the hands of the patent owner, who can send a carefullycrafted letter putting a potential defendant on notice of the patent. Apatent owner thus triggers the obligation to obtain a written opinion ofcounsel without actually threatening to sue anyone. In turn, accusedinfringers who are aware of these rules respond to such letters byobtaining a sort of pseudo-legal advice that both they and their attorneysrecognize to be a construct. Both plaintiffs and defendants are playing acostly game.The rules of this game have perverse consequences for patent law. Some ofthese consequences affect litigation - lawyers and clients who know thatthe lawyer's advice will be disclosed to the other side will behavedifferently, withholding information and candid advice from each other. Butother consequences extend beyond litigation. They infect pre-litigationadvice, essentially making it impossible for a competent lawyer to advise aclient that a competitor's patent should be avoided. The rules of thewillful infringement game set traps for the unwary, who may not realize theconsequences of failing to obtain the necessary written opinion of counsel.They interfere with a client's ability to choose counsel. And theydiscourage engineers and companies from reading a competitor's patents atall, thereby undermining the disclosure function that is at the foundationof the patent system.One possibility is to abolish the willfulness rule entirely. We ultimatelyreject this approach because we worry that ordinary patent damages alonewill be insufficient to deter infringement optimally in many cases. Anotherpossibility is to abolish the rule that requiring disclosure of opinions ofcounsel. While a good idea, this option would not solve the problemscreated by the willfulness game, because many defendants will still need torely on the opinion of counsel in order to disprove willfulness.Instead, we think the better approach to willful infringement is first toredefine it as adopting a technology with knowledge that it was derivedfrom the patentee, and second to adjust the premium charged for it. Many ofthe problems with the willfulness rules stem from the fact that willfulnessis an ongoing inquiry. The ongoing nature of the inquiry adversely affectsa defendant that develops or adopts a technology in good faith but laterlearns it is infringing a patent. Changing the focus of the inquiry to thetime of adoption is consistent with the ordinary understanding ofwillfulness outside of patent law and would help end the willfulness game.An independent developer could never be a willful infringer, and thus wouldnot need either to obtain or disclose in court a written opinion of counselmerely because it later learned of a patent. By contrast, an accusedinfringer would need advice of counsel if it was aware of a patent andaffirmatively sought to design around the patent. Such an accused infringertherefore would have to waive privilege. But since only the accusedinfringer's intent at the time of adoption would matter, the scope ofprivilege waiver would be limited to communications at the time ofadoption, and would not infect the advice given by litigation counsel.

scholarly journals The Changing Meaning of Patent Claim Terms

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Application ◽  
Fundamental Principle ◽  
Patent Law ◽  
Legal Rule ◽  
Patent Claim ◽  
Prior Art ◽  
Patented Invention ◽  
Sufficient Detail ◽  
One Act ◽  
Written Description

In order to construe the claims of a patent, the court must fix the meaningof the claim terms as of a particular point in time. Both the knowledge ofthe PHOSITA in a particular field and the meaning of particular terms tothat PHOSITA will frequently change over time. But at which point in timeshall we fix the meaning of the claims?It is a fundamental principle of patent law that the time at which wedetermine the meaning of claim terms varies depending on what legal rule isat issue. Where the question is one of novelty or nonobviousness - whetherthe invention is truly new - the courts compare the patented invention tothe prior art as both were understood at the time of the invention. Wherethe question is one of enablement or written description - whether theinventor understood and described the invention in sufficient detail -courts evaluate the adequacy of the disclosure based on the meaning of theclaims at the time the patent application was filed. Where the questioninvolves the meaning of a special patent claim element called ameans-plus-function claim, courts evaluate the scope of that claim elementat the time the patent issues. And where the question involves allegedinfringement of the patent, courts evaluate infringement in at least somecircumstances based on the meaning of the claim at the time ofinfringement.An equally fundamental principle of patent law is that patent claims mustbe construed as an integrated whole. In particular, patentees (or accusedinfringers, for that matter) are not permitted to argue that a patent claimmeans one thing when it comes to validity and something else entirely whenit comes to infringement. Instead, courts give claims a single meaning inany given case, engaging in only one act of claim construction for anygiven patent.These two principles contradict each other. In this paper, I seek toresolve this conflict. In Part I of this paper, I document thedistinguished pedigree of both principles. In Part II, I argue that patentclaim terms should have a fixed meaning throughout time, and that thatmeaning should be fixed at the time the patent application is first filed.Part II also discusses some complications that arise as a result of theprosecution process, and how to deal with the problem of later-developedtechnology.

scholarly journals Scope

2016 ◽  
Author(s):  
Mark Lemley
Keyword(s):  
Patent Law ◽  
Fundamental Question ◽  
The Other ◽  
Legal Issue ◽  
Natural Right ◽  
Prior Art ◽  
The Law ◽  
Ip Law ◽  
The U.S ◽  
Standard Components

Intellectual property (IP) law doctrines fall into three basic categories:validity, infringement and defenses. Virtually every significant legaldoctrine in IP is either about whether the plaintiff has a valid IP rightthat the law will recognize – validity – about whether what the defendantdid violates that right – infringement – or about whether the defendant issomehow privileged to violate that right-defenses.IP regimes tend to enforce a more or less strict separation between thesethree legal doctrines. They apply different burdens of proof and persuasionto infringement and validity. In many cases they ask different actors todecide one doctrine but not the other. The U.S. Patent and TrademarkOffice, for example, decides questions of patent and trademark validity butnot questions of infringement. Even in court, resolution of one issue isoften allocated to a judge while the jury decides a different issue. Andeven where none of that is true, the nature of IP law is to categorize anargument in order to apply the proper rules for that argument.The result of this separation is that parties treat IP rights “like a noseof wax, which may be turned and twisted in any direction.” Wheninfringement is at issue, IP owners tout the breadth of their rights, whileaccused infringers seek to cabin them within narrow bounds. When it comesto validity, however, the parties reverse their position, with IP ownersemphasizing the narrowness of their rights in order to avoid having thoserights held invalid and accused infringers arguing the reverse.Because of the separation between validity, infringement, and defenses, itis often possible for a party to successfully argue that an IP right meansone thing in one context and something very different in another. Andcourts won’t necessarily detect the problem because they are thinking ofonly the precise legal issue before them.The result is a number of IP doctrines that simply make no sense to anoutsider. In patent law, for instance, it is accepted law that there is no“practicing the prior art” defense. In other words, one can be held liablefor doing precisely what others had legally done before, even though apatent isn’t supposed to cover things people have already done. In designpatent law, one can be held liable for making a design that an “ordinaryobserver” would find too similar to a patented design, even though thethings that make the two look similar – say, the roundness of the wheels onmy car – are not things the patentee is entitled to own. In copyright, oncea court has concluded that someone has actually copied from the plaintiff,a song will sometimes be deemed infringing because of its similarity to aprior song, even if the similarity is overwhelmingly attributable tounprotectable standard components of the genre. And in trademark, a partycan be deemed infringing because its products look to similar to theplaintiffs’ mark and therefore make confusion likely, even if thatconfusion is likely caused by non-source-designating features of the design.The culprit is simple, but fundamental: IP regimes largely lack anintegrated procedure for deciding the proper extent of an IP right. Theproper scope of an IP right is not a matter of natural right or immutabledefinition. Rather, it is a function of the purposes of the IP regime. Butwithout some way of assessing how broad an IP right is that considersvalidity, infringement, and defenses together, courts will always be proneto make mistakes in applying any one of the doctrines.In this article, we suggest that IP regimes need a process for determiningthe scope of an IP right. Scope is not merely validity, and it is notmerely infringement. Rather, it is the range of things the IP rightlawfully protects against competition. IP rights that claim too broad ascope tend to be invalid, either because they tread on the rights of thosewho came before or because they cover things that the law has made adecision not to allow anyone to own. IP rights with narrower scope arevalid, but the narrowness of that scope should be reflected in thedetermination of what actions do and do not infringe that right. Andwhatever the doctrinal label, we should not allow an IP owner to capturesomething that is not within the legitimate scope of her right. Nor shouldit follow from the fact that some uses are outside the lawful scope of anIP owner’s right that the IP right itself is invalid and cannot be assertedagainst anyone. Only by evaluating scope in a single, integrated proceedingcan courts avoid the nose of wax problem that has grown endemic in IP law.Scope is, quite simply, the fundamental question that underlies everythingelse in IP law, but which courts rarely think about expressly.

Ecological Innovations in the Automotive Sector. Part I: Construction Innovations

2018 ◽  
Vol 19 (11) ◽  
pp. 30-35
Author(s):  
Marta Wójcik
Keyword(s):  
Automotive Industry ◽  
Diesel Engines ◽  
New Technologies ◽  
Negative Impact ◽  
The Other ◽  
Automotive Sector ◽  
Environmental Aspects ◽  
Car Industry ◽  
Human Transport ◽  
Sector Part

The automotive sector is one of the fastest growing sectors of economy. The increasing amount of cars both in Polish and world roads results in the immeasurable benefits associated with the goods and human transport. On the other hand, this phenomenon caused the contamination of the environment. During the fuel combustion in petrol or diesel engines, the harmful gases, for example CO2, NOx and SOx are emitted. Apart from the negative impact on the environment, the emission of the aforementioned gases results in the deterioration of human conditions, as well as, the development of civilization diseases. In order to minimalize the harmful influence of an automotive industry on the environment, new technologies which can reduce the consumption of fuel or limit the fumes emission are developed. The first part of paper presents new solutions in an automotive sector which influence on the decline of the negative impact of automobiles on the environment. Additionally, proposed solutions affect the development of a car industry, taking into consideration environmental aspects.

scholarly journals Geocomputing, New Technologies and Historical Analysis: Tools for a Changing Planet

Proceedings ◽  
2019 ◽  
Vol 30 (1) ◽  
pp. 9
Author(s):  
Sebastiano Trevisani
Keyword(s):  
Quantitative Analysis ◽  
Philosophy Of Science ◽  
New Technologies ◽  
Historical Analysis ◽  
Holistic Approach ◽  
Research Topic ◽  
The Other ◽  
Historical Records ◽  
The Earth ◽  
The Relationship

Modern Earth Scientists need also to interact with other disciplines, apparently far from the Earth Sciences and Engineering. Disciplines related to history and philosophy of science are emblematic from this perspective. From one side, the quantitative analysis of information extracted from historical records (documents, maps, paintings, etc.) represents an exciting research topic, requiring a truly holistic approach. On the other side, epistemological and philosophy of science considerations on the relationship between geoscience and society in history are of fundamental importance for understanding past, present and future geosphere-anthroposphere interlinked dynamics.

scholarly journals Chromatin Manipulation and Editing: Challenges, New Technologies and Their Use in Plants

2021 ◽  
Vol 22 (2) ◽  
pp. 512
Author(s):  
Kateryna Fal ◽  
Denisa Tomkova ◽  
Gilles Vachon ◽  
Marie-Edith Chabouté ◽  
Alexandre Berr ◽  
...  
Keyword(s):  
Cell Fate ◽  
Dna Sequence ◽  
Zinc Finger ◽  
Chromatin Structure ◽  
New Technologies ◽  
Dna Interaction ◽  
The Other ◽  
Proof Of Concept ◽  
Epigenetic Marks ◽  
Molecular Events

An ongoing challenge in functional epigenomics is to develop tools for precise manipulation of epigenetic marks. These tools would allow moving from correlation-based to causal-based findings, a necessary step to reach conclusions on mechanistic principles. In this review, we describe and discuss the advantages and limits of tools and technologies developed to impact epigenetic marks, and which could be employed to study their direct effect on nuclear and chromatin structure, on transcription, and their further genuine role in plant cell fate and development. On one hand, epigenome-wide approaches include drug inhibitors for chromatin modifiers or readers, nanobodies against histone marks or lines expressing modified histones or mutant chromatin effectors. On the other hand, locus-specific approaches consist in targeting precise regions on the chromatin, with engineered proteins able to modify epigenetic marks. Early systems use effectors in fusion with protein domains that recognize a specific DNA sequence (Zinc Finger or TALEs), while the more recent dCas9 approach operates through RNA-DNA interaction, thereby providing more flexibility and modularity for tool designs. Current developments of “second generation”, chimeric dCas9 systems, aiming at better targeting efficiency and modifier capacity have recently been tested in plants and provided promising results. Finally, recent proof-of-concept studies forecast even finer tools, such as inducible/switchable systems, that will allow temporal analyses of the molecular events that follow a change in a specific chromatin mark.

Sign in / Sign up

Export Citation Format

Share Document