Errors, Incorporation by Reference, and the Abhorrent Doctrine of Disappearing Anticipation

Mark R. Buscher

The standard for anticipation of a patent claim is seemingly straight forward – a single prior art reference recites each and every element and limitation of the claim. “There must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention.” Yet some interesting wrinkles can occur.


Ethical Considerations in Intellectual Property Law

Leonard Raykinsteen

The U.S. legal system affords certain rights and provides protections for owners of property that result from “the fruits of mental labor,” or so-called “creations of the mind.”1 This kind of property is called intellectual property (IP). IP law, in turn, deals with the rights and protections for owners of IP. These rights and protections are based on federal patent, trademark and copyright laws and state trade secret laws. In general, patents protect inventions of tangible things; copyrights protect various forms of written and artistic expression; and trademarks protect a name or symbol that identifies the source of goods or services.


The Interplay Between User Innovation, the Patent System and Product Liability Laws: Policy Implications

Stijepko Tokic, J.D., LL.M.

Innovation is a heavily used buzzword in the United States of America, and the fixation with innovation has deep roots in American society. It was even suggested that “America is innovation.” The “innovate or die” mindset, famously articulated by Bill Gates in his Congressional testimony in 1998, has been mentioned in at least ten books going back to 1958. Over time, the popularity of the slogan “Innovate or Die” made the slogan itself a business, as it is now commercially sold as a poster.

One of the primary issues in innovation debates is the role of the patent system in promoting innovation. Recognizing the importance of stimulating innovation, the Framers of the Constitution authorized the United States Congress (Congress) “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The Patent Act of 1790 was the first act enacted by Congress, and the law gave inventors rights to their creations for the first time in American history. While the notion that intellectual property rights are designed to create incentives to innovate, and ultimately to promote innovation, has been repeatedly acknowledged by the Supreme Court of the United States (Supreme Court), many scholars continue to question that notion and argue that the patent system currently does the exact opposite: stifles innovation.



How an Old Non-Statutory Doctrine Got Worked into the § 101 Test for Patent Eligibility

Peter Hecker 

The 35 U.S.C. § 101 test for patentable subject matter laid out by the Supreme Court in Alice has been the subject of complaint by judges and patent practitioners because of its redundancy with the § 103 nonobviousness requirement. This redundancy seems to have come from a common root shared by Alice’s inventiveness requirement and § 103 obviousness. Particularly, § 103 obviousness descended from a mid-nineteenth century doctrine known as the skillful mechanic test, while Alice’s inventiveness requirement appears to have evolved from another old doctrine known as aggregation. Both the aggregation doctrine and the skillful mechanic test assessed whether a patent claim was inventive. In the mid twentieth-century, the Supreme Court clearly stated that the Patent Act of 1952 codified the skillful mechanic test in § 103 obviousness. It is less clear that Alice’s inventiveness requirement descends from the aggregation doctrine. However, the similarity between the two rules, their legal contexts, their purposes, and complaints about them, all suggest that Alice’s inventiveness requirement descended from the aggregation doctrine. If this is true, then the overlap between Alice’s inventiveness requirement and § 103 obviousness likely stems from the common root of inventiveness shared by the old skillful mechanic and aggregation doctrines. 


An Overview and Comparison of U.S. and Japanese Patent Litigation, Part II

Kyle Pietari

The forces of globalization and nations’ investments in their patent systems are making the enforcement of patent rights an increasingly international practice. Though the patent systems of Japan and the United States differ in many fundamental ways, both are key jurisdictions. The aim of this two-part article is to provide a thorough overview and comparison of the major aspects of patent litigation in the U.S. and Japan. It is written from a litigator’s perspective, to demystify the system of each nation for someone familiar with that of the other nation.


Bifurcation of Validity and Infringement Determinations

Janice Kwon and Mark Vallone

A large majority of jurisdictions have adopted a “unified” (or “combined”) patent litigation system, wherein the same court adjudicates the validity and infringement of a patent. For example, prior to the implementation of the America Invents Act (“AIA”), in the United States, the same court would adjudicate both an infringement claim and an invalidity defense thereto. However, a handful of other jurisdictions, such as Germany and China, have adopted a bifurcated system wherein one court supported by technical experts adjudicates patent validity and a separate court or agency adjudicates patent infringement. Infringement proceedings are quickly completed under the assumption that the patent is valid, and the judgment can be enforced before the validity of the patent is determined. Other countries, such as Belgium, Japan, and now the United States, are de facto or “optional” bifurcated systems—while the patent litigation system on its face is a “unified” system, wherein the same court adjudicating infringement can also review validity issues, patent infringement proceedings may be suspended until parallel validity proceedings in the Patent Office are completed.


Reconceptualizing Copyright Registration

Omri Alter

This Article considers the issue of copyright registration through the paradigm of behavioral economics. By considering the issue through a paradigm that has not been considered before, it results in a conclusion that stands face to face with copyright scholarship of recent years. This Article critiques the trend in the literature that advocates for strengthening the role of registration in copyright law. The Article does so by examining what is termed here as “registration dilemma,” which relates to the decision making done by authors to come to a conclusion regarding whether to register their work. The social benefits ascribed to the implementation of copyright registration by the conventional literature dealing with this issue are based on rational decision making of authors. Yet, this conventional model portrays only a limited picture. It does not account for a wide array of decisions that authors may take with regard to the registration dilemma, such as decisions that arise while considering behavioral models of decision making. Because the benefits of copyright registration rely on authors making rational decisions, the existence of decisions that are not based on these kinds of considerations imply that the intended goals will not be achieved. Hence, this Article proposes to downplay the role of registration and search for other means to achieve the same policy goals, without relying on authors’ decision making.


Holmes on Patents: Or How I Learned to Stop Worrying and Love Patent Law 

Amelia Smith Rinehart

The writings and opinions of Oliver Wendell Holmes, Jr., have inspired generations of legal scholars to explain topics like pragmatic skepticism, legal positivism, legal realism, legal moralism, and other “legal-isms.” Justice Holmes—celebrated and contemptible, beloved and beleaguered, emphatically entrenched in the common law—stumbled into federal patent cases on the Supreme Court, yet there is little scholarship stemming from his few opinions in this area. As the twenty-first century ushers in a new gilded age, replete with important battles over patent law and policy as a mechanism for promoting innovation, Holmes’ unique outlook on public and private law (and patents) at the turn of the twentieth century may offer a new perspective within contemporary debates about patent law and its limitations.

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