Search

Patents, along with the related systems of utility models and plant breeders’ rights, are the forms of intellectual property most closely associated with technological innovation. Some form of patent system is found in essentially all modern states, and patents have become a ubiquitous feature of the global legal and technical environment. Patents and related rights are therefore highly dynamic areas of law, displaying constant evolution of doctrine simultaneously in multiple jurisdictions. The shifting diversity of national approaches offers an opportunity to consider how characteristic themes and problems of patent law have been approached from different perspectives, and lend a sense of better, worse, and alternative solutions to the problem of prompting technical innovation. Consequently, this chapter surveys particular doctrinal problems in patent law and allied laws, uses them to illustrate both broad theoretical issues endemic to such laws, and ties those issues to ongoing controversies that have attracted widespread interest.

Patents, along with the related systems of utility models and plant breeders’ rights, are the forms of intellectual property most closely associated with technological innovation. Some form of patent system is found in essentially all modern states, and patents have become a ubiquitous feature of the global legal and technical environment. Patents and related rights are therefore highly dynamic areas of law, displaying constant evolution of doctrine simultaneously in multiple jurisdictions. The shifting diversity of national approaches offers an opportunity to consider how characteristic themes and problems of patent law have been approached from different perspectives, and lend a sense of better, worse, and alternative solutions to the problem of prompting technical innovation. Consequently, this chapter surveys particular doctrinal problems in patent law and allied laws, uses them to illustrate both broad theoretical issues endemic to such laws, and ties those issues to ongoing controversies that have attracted widespread interest.

China is facing a pressing need to build its innovation-driven economy. With this backdrop, recent cases and controversies in judicial/administrative practice call our attention to the need of a more systematic understanding of the intersection between antitrust and IP. A critical thread in this intersection tapestry is the concept of “unfairly high patent pricing (不合理专利高价)”. Different than its US counterpart, Chinese Anti-Monopoly Law pays substantial attention to a dominant market player’s unilateral “exploitative” conducts. Specifically, section 17(1) of the AML forbids a dominant undertaking from “abusing its market position” by selling at “unfairly high prices”. However, neither the Law nor later enacted Judicial Interpretation provides an administrable definition of what constitutes “unfairly high price” in an anti-monopoly sense. Correspondingly, courts and enforcement agencies have significant discretion in characterizing a patent pricing as “unfairly high”, thereby imposing penalty in practice. Despite a good intention, this ex post legal risk would seriously curtail business entities’ ex ante incentive to invest in innovation, which is often entailed with high risks. Lacking adequate legal and economic guidance, this discretion would also result in significant institutional positive error. Such error would be particularly severe in the context of patent-intensive industries. Section 55 of the AML provides an IP “safety harbor”, providing that a proper exercise of IPR shall be immune from the scrutiny by Anti-monopoly Law, while an abuse of IPR shall not. However, as recent cases/controversies indicated, this provision has been seldom followed by authorities in practice, probably due to the lack of an administrable test to differentiate “proper exercise” of IPRs from “abuse”. This article tries to inform the anti-monopoly differentiation between “proper use” and “abuse” of patent, by probing into the very mechanism patent regime has been utilizing to promote innovation, which constitutes a mutual goal with Chinese Anti-monopoly Law. Economic insight into patent jurisprudence prevalent in various jurisdictions including China and the US revealed that the patent regime promotes innovation essentially through the instigation of dynamic competition. More specifically, it (i) directly bridges an innovator’s RD (ii) By restricting the competition by imitation, patent regime achieves dual goals - it not only enables an incumbent patentee’s access to ex post supra-competitive profits as ex ante incentive to invest, but also induces scarce social resources into other innovators’ channels for “inventing around”, i.e. to provide better/cheaper non-infringing technologies. This “inventing around”, i.e. subsequent innovators’ competition by substitution ("CBS"), constitutes a critical link in the virtuous circle of dynamic competition; (iii) Feeling competition pressure by existing or potential peer innovators, the original innovator would be incentivized to further investing in her own CBS, in order to stay a winner in the marketplace. In this way, a virtuous circle of dynamic competition would be instigated. As the conventional vehicle to protect a healthy market competition ecosystem, antitrust/anti-monopoly law should adopt a more dynamic perspective and respect the patent regime’s key mechanism in its own facilitation of innovation. Importantly, antitrust law should not lightly disturb a well-functioning circle of dynamic competition, simply because under its lens CBI or static efficiency seems restricted and local optimum seems not achieved - as a result, a supra-competitive or even monopoly profit enjoyed by a patentee, should be presumed legal per se if static efficiency loss is the only proved harm. On the other hand, arguably in exceptional circumstances certain patent pricing may indeed be so excessively structured to amount to a constructive refusal to deal with follow-on innovators or at least serious “margin squeeze” for these innovators, and such refusal or squeeze in theory may lead to foreclosure of the CBS itself, thus frustrating the circle of dynamic competition. As an illustration, the conventional hypothesis of patent “anti-commons” or over-broad patents’ suppressing effect on follow-on innovation can be well considered as embodiments of such theoretical worries of foreclosure on CBS. Nevertheless, decades of empirical research in various industries, including recent findings in SEP intensive areas, have showed little success in proving this theoretical worry in practice. A very recent embodiment of such striking disintegration between theory and reality is the robust innovation and competition in SEP intensive industries today, despite the prevalence of patent hold up and royalty stacking theory. There might be different explanations to this empirical failure. This article comments that perhaps precisely because the very patent mechanism of promoting innovation has been all along to instigate CBS through a restriction of CBI, throughout the years our patent regime has developed an implicit yet critical awareness to safeguard CBS from being foreclosed. This built-in awareness is reflected in a wide variety of rules and principles of patent jurisprudence prevalent in many jurisdictions, including the eligibility, inventiveness/non-obviousness and disclosure/enablement requirements in the grant of a patent, reverse doctrine of equivalents in patent infringement findings, as well as a few fundamental principles, such as the proportionality principle as identified in recent theoretical scholarships like Justifying IP. Surely these built-in mechanisms are not ironclad, but they may have worked in a more successful way than we gave faith to, and antitrust law shall not overlook this. Based on this insight, this article proposes that a patentee’s pricing act of her patented technologies should be presumed legal per se under section 55 of the AML, unless an administrative agency or anti-monopoly plaintiff can prove with actual evidence that the pricing at issue constitutes an “abuse” of the patent(s), in that it would likely foreclose the very type of competition mechanism the patent regime aims to promote, i.e. dynamic competition. In addition to the economic insight, this proposal is also supported by the antitrust/competition law practices in sister jurisdictions, and the cost-error framework pioneered by antitrust scholars such as Judge Easterbrook. As our knowledge of dynamic efficiency is still insufficient and precision is very often unreachable, in choosing a good antimonopoly policy we should prefer the side with less error costs. This preference is particularly necessary in China today when it is still experiencing a strenuous transition from a planned regime to a full-fledged market economy.

This report highlights the main UK patent decisions from 2019, including: two Supreme Court decisions, one concerning obviousness and another concerning employee invention compensation; Court of Appeal decisions relating to FRAND, insufficiency, and SPCs; and several High Court decisions relating to the application of the doctrine of equivalents to numerical values, plausibility of second medical use claims, SPCs, public disclosures, and Arrow declarations.

The doctrine of equivalents (DOE) allows a court to hold an accused infringer liable for patent infringement in spite of the fact that the accused product (or process) does not fall within the literal scope of the asserted patent claim(s). Prosecution history estoppel (PHE), which can be triggered by a narrowing amendment of a patent claim during patent prosecution, or by arguments made during prosecution, imposes significant constraints on the ability of a patentee to assert the DOE. The 1990s and early 2000’s saw a proliferation of legal commentary postulating that the DOE would play an important role in protecting inventions arising out of biotechnology, particularly biomolecules (i.e., proteins and DNA/polynucleotides), and stressing the need for biotechnology patentees to avoid amendments or arguments during patent prosecution that might trigger PHE. In fact, however, prior to 2019 the Federal Circuit does not appear to have issued an opinion finding infringement under the DOE in a case in which the relevant claim limitation recites a biomolecule. It finally happened in Ajinomoto Co. v. Int'l Trade Comm'n, with a divided panel of the Federal Circuit holding that a claim limitation reciting a DNA sequence, defined in terms of the amino acid sequence of a protein encoded by the sequence, was infringed under the DOE by a DNA sequence encoding a protein having a different (but similar) amino acid sequence and equivalent function. This article begins with a brief overview of the DOE and PHE, and explains why DOE was at one time seen as particularly critical for the enforcement of patent claims reciting biomolecules. It then summarizes and analyzes the results of a Westlaw search designed to identify any and all Federal Circuit decisions applying the DOE and/or PHE to a claim limitation reciting a biomolecule, including the court’s most recent decision Ajinomoto.

In order to promote harmonisation in a more effective manner in the European patent system, it is argued that this should not solely be done through legislation, but through judicial dialogue and cooperation. Through this means of informal harmonisation, progress can be made case-by-case, rather than waiting for legislation to be agreed upon and entered into force. This is already happening to good effect, as displayed through a number of examples, including the most recent example of Actavis v. Eli Lilly [2017] UKSC 48 in the UK Supreme Court. It is proposed by this article that official lines of communication should be opened among all judiciaries and Boards in the European patent system to improve this practice. Judicial cooperation would also be useful to the Unified Patent Court, if it becomes operational. Opening official lines of communication would be an important step towards a further harmonised European patent system and would increase legal certainty in this area.

This report highlights the main UK patent decisions from 2018, including: a major Supreme Court decision concerning sufficiency, more specifically plausibility, and infringement in relation to second medical use claims; Court of Appeal decisions on global FRAND licences and FRAND injunctions, applying the Actavis v. Eli Lilly questions concerning the doctrine of equivalents, enablement, claim construction and infringement, novelty of overlapping numerical ranges, and obviousness; and Patents Court decisions concerning interim applications, a jurisdiction challenge in the context of a FRAND licensing dispute, obviousness/inventive step, and injunctive relief.

Less than a handful of casebooks are truly open source, in the sense of being fully modifiable. (i>Patent Law: An Open-Source Casebook is the first patent law casebook that provides adopting professors, students, and others the ability to fully modify its contents. This chapter of the casebook covers infringement. It addresses the element-by-element comparisons required in establishing literal infringement and infringement under the doctrine of equivalents, and also covers means-plus-function claim limitations. The chapter also explores how the statute and case law define acts of infringement. In particular, the chapter discusses the geographic locus of infringing acts, the problem of divided infringement, indirect infringement, and transnational infringement.

In a situation where there is a possibility of application of Doctrine of equivalents, in such a situation, the defendant in a particular case can defend himself through the mechanism of Prosecution History Estoppel, on account of which the doctrine of equivalents should not be made applicable. So, during the prosecution of a patent, the patentee may start with a broad claim which may be objected by the controller or during the process of examination. In such a situation, in due course of the opposition raised by the authorities, the patentee may make certain amendments through which the patentee might actually end up in narrowing down the claim. So, to understand prosecution history estoppel, the consideration of the actions that have been initiated by the patentee during the prosecution of the patent becomes necessary. This research paper is going to deal primarily with the nature and extent of the Doctrine of Prosecution history estoppel and it also seeks to examine the impact of variations in the claim language of the corresponding foreign country on the patent litigation in India. Moreover, this paper also seeks to bring clarity in the mechanism of Patent infringement along the operation of Prosecution History estoppel.

Based on conflicting Federal Circuit case law, many academics have written, and many practitioners likely believe, that claim meanings or their applications may expand over time for purposes of literal infringement. But this common wisdom is wrong. Under existing Federal Circuit rules, the first precedent controls in the event of a conflict over doctrine, unless and until reversed en banc. The first precedent on the issue, the 2000 Schering Corp. v. Amgen, Inc. case, held that claim scope does not reach after-arising technologies for literal infringement, and suggested that if it did then such claims would lack written description support. Under existing validity precedents, temporally expanding claim scope would violate both Section 112(a)'s enablement and written description requirements, as explicitly held in the 1977 In re Hogan decision and as implied by the more recent 2010 Ariad Pharmaceuticals v. Eli Lilly & Co. en banc decision. Further, were claims able to expand over time for literal infringement, they would violate the axiomatic equivalency of claim scope for validity and infringement. Once it is recognized that claim scope for literal infringement does not protect against after arising technologies, further resort will be made to seek such protection under the doctrine of equivalents. This will lead to increased uncertainty regarding the scope of patent protection. This article demonstrates that academics and practitioners may be confused regarding the U.S. law of literal infringement's temporal scope. It describes the conflicting cases that have led to that confusion. And it explains why Section 112(f)'s rule of construction for functional claiming language may be understood to limit all claim scope to temporally fixed, known-to-be equivalent technologies. The article concludes by noting potential conflict with the pioneering invention doctrine and concerns should the law be changed to permit claiming the future.

This report highlights the main UK patent decisions from 2017, including a major Supreme Court infringement case introducing a doctrine of equivalents, the first ruling on FRAND royalty rates and injunctions, compensation for employee inventors, legal priority, patentable subject matter, and a novel, unsuccessful attempt by the State to sue a pharmaceutical company whose invalid patents delayed the entry of generics.

In the article there is considered the question of a possibility of creation of the doctrine of equivalents as the strict scientific theory on the basis of the theory of conclusions by A. I. Uyemov’s analogy within which synthesis of the theory of similarity having paramount value for practice of patent work is already undertaken. The invention and its technical equivalents is offered to consider respectively as a prototype and models. It allows transferring to the theory of equivalents of the rule of conclusions on analogies and conditions of reliability (verification) of such conclusions. In this case a conclusion about equivalence of technical solution to some invention can be proved depending on whether necessary and sufficient conditions for recognition of such equivalent are satisfied by model of the considered technical solution, whether there corresponds the model to the prototype and whether allows in this or that capacity to predict model behavior of a prototype. Through fundamental concepts of the theory of conclusions by analogy (the internal and external relations, essential properties, and structure) the explication of the main terms of the theory of equivalents is given: prototype, equivalence, equivalent, law of the nature, function of sign of a formula and technical result. Thanks to it, it is emphasized that modeling of processes in a prototype is based on that, as in model, and in a prototype the same laws of the nature (the technical principles) which possess a certain degree of independence in relation to the correlates that actually explains a possibility of existence of equivalents from the ontological point of view can be carried out. Also it is paid attention that different laws of the nature, being the internal relations, possess different degree of independence of the correlates that narrows or, on the contrary, expands a circle of possible equivalents for inventions from different areas of the equipment.

Rapid advances in digital and life sciences technology continue to spur the evolution of intellectual property law. As professors and practitioners in this field know all too well, Congress and the courts continue to develop intellectual property law and jurisprudence at a rapid pace. For that reason, we have significantly augmented and revised Intellectual Property in the New Technological Age. The 2019 Edition reflects the following principal developments: Trade Secrets: Congress passed the Defend Trade Secrets Act of 2016, one of the most momentous changes in the history of trade secret protection. The new law opens up the federal courts to trade secret cases, provides for ex parte seizures of misappropriated trade secrets in “extraordinary circumstances,” and establishes immunity for whistleblowers. Other recent developments address nonsolicitation agreements, the inevitable disclosure doctrine, and the enforceability of noncompetition agreements Patents: The past several years have witnessed some of the most significant developments in U.S. patent history—from the establishment of the new administrative review proceedings at the Patent Office to important shifts in patent-eligibility, claim indefiniteness, enhanced damages, and equitable remedies at the Supreme Court and means-plus-function claim interpretation and infringement doctrine at the Federal Circuit. IPNTA significantly expands coverage of design patents in response to the growing importance of this form of protection. ● Updated Section 102 discussion with time line illustrations explaining first-to-invent (1952 Act) and first-to-file (AIA) regimes; added note on corroboration of invention dates; update on Helsinn Healthcare v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 698 (2019) ● Updated Section 101 notes to reflect substantial new developments (Berkheimer, Aatrix, Vanda) and legislative reform efforts ● New section on Reassessing Patent Eligibility featuring Judge Lourie's concurrence in denial of rehearing en banc in Berkheimer ● Administrative Patent Review: Updated statistics on IPRs ● Note on Amgen Inc. v. Sandoz Inc., 923 F.3d 1023, 1029 (Fed. Cir. 2019) (doctrine of equivalents) ● Administrative Patent Review: Updated statistics on IPRs ● Design Patent: Updated note on apportioning damages to reflect remand of Samsung Electronics Co. v. Apple Inc. Copyrights:The Supreme Court issued important decisions addressing the useful article doctrine, public performance right and the first sale doctrine. The past few years also witnessed important developments in the Online Service Provider safe harbor, fair use, and state protection for pre-1972 sound recordings. We have also integrated the digital copyright materials into a unified treatment of copyright law and substantially revamped the fair use section to reflect the broadening landscape of this important doctrine. IPNTA2019 integrates the complex provisions of the Music Modernization Act of 2018. ● Originality: New problem on copyrightability of jokes based on lawsuit by comedy writer Alex Kaseberg against Conan O’Brien ● Update on copyright duration (1923 works now in the public domain) ● Note on cord cutting and Locast, a nonprofit local broadcasting service ● Update on DMCA exemptions ● New fair use problem based on Dr. Seuss Enterprises v. ComicMix ● Integration of new cases: Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (registration must be made prior to filing suit); Revision Comm’n for General Assembly of Georgia v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018) (holding that “the People are the constructive authors of . . . official legal promulgations of government,” meaning that the works are intrinsically public domain material and, therefore, uncopyrightable), cert. granted, Georgia, et al. v. Public.Resource.Org, Inc. (2019)); Disney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848 (9th Cir. 2017) (Family Entertainment and Copyright Act of 2005 is not a defense to anticirumvention provisions); Capitol Records, LLC v. ReDigi, Inc., 910 F.3d 649 (2d Cir. 2018) (rejecting digital exhaustion); BWP Media USA Inc. v. Polyvore, Inc., 922 F.3d 42 (2d Cir. 2019) (exploring the volition requirement); Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019) (scope of costs recoverable under Section 505) Trademarks: IPNTA2019 integrates important cases on federal registrability of disparaging marks, merchandising rights, likelihood of confusion on the Internet, and remedies. ● False Advertising: added MillerCoors, LLC v. Anheuser-Busch Companies, LLC, United States District Court, Western District of Wisconsin, 2019 WL 2250644 (2019) ● New problem based on Dr. Seuss Enterprises v. ComicMix (protectability) ● Integration of new cases: Iancu v. Brunetti, S. Ct. (June 24, 2019) (holding that FUCT, while vulgar, is registrable); Moldex-Metric, Inc. v. McKeon Prods., 891 F.3d 878 (9th Cir. 2018) (holding that aesthetic functionality must consider the availability of alternative designs); Beyonce Knowles-Carter v. Feyonce, Inc., 347 F. Supp. 3d 217 (S.D.N.Y. 2018) (denied summary judgment that “Feyonce” merchandise marketed to fiances would confuse consumers into thinking it was sponsored by the musician Beyonce); Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018) (application of the Rogers test).

This chapter revisits the doctrine of equivalents (DOE) by reviewing previoius court cases to summarize and distill the main principles, and then, to select two pairs of US patents in the area of sintered silver (Ag) pastes to demonstrate their applications. The sintered Ag paste formulation is chosen as our case study because of the active patenting activities in the last 5 years. This interest stems from the urgency to find a lead-free bonding material to conform the EU environmental regulations and its excellent thermal-mechanical properties needed in the next generation of microelectronic packaging. This chapter demonstrates the limitations of DOE, and its applicability depends on the factors, such as prosecution history estoppel (PHE), public dedication, all-element rule, prior art, and the classification of nano-Ag materials. This article is expected to be useful for patent attorneys dealing with patent infringement cases related to nano-materials in the USA, as well as scientists and engineers who are working in the manufacturing industry to appreciate the DOE and PHE while analyzing the relevant patents in their job.

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 reincorporation into contemporary patent doctrine and policy. This Article challenges the conventional terms of this debate by offering a unique reframing: a resilient thread of moral principles does remain woven into patent law, but largely only in one half of the tapestry. Whereas utilitarian theories generally do an excellent job of explaining modern patent validity law, many of the core doctrines in patent infringement law are heavily influenced by broad moral principles—and sometimes even 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-a-vis the doctrine of equivalents), and defenses (inequitable conduct and prior use)—and builds the case that reference to non-utilitarian, moral frameworks is often needed to explain their contours. This fault line, the article argues, can likely 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. Finally, the article concludes by briefly examining the implications for policymakers, using two case studies of reform efforts: patents on surgical techniques and plants.

Because of the active research on microorganisms, there is a large number of deposit number limited claims of microorganism strain patents; at the same time, the total amount of deposited strains has increased continually. However, the scope of protection of these patents is unclear, and there are many restrictions on obtaining the deposited strains. This paper begins with a Chinese case involving strain patent infringement, discusses the scope of deposit number limited claim of the strain and suggests that this kind of claim can be interpreted as "a strain that has the same specific characteristics as the strain deposited in qualified depository institution" to retain flexibility in judgment. Specifically, the full genomic sequence should first be considered as the compared subject unless it is unavailable, and random mutations in the sequence can be assessed under the doctrine of equivalents. As for the propagation, multiplication, and gene recombination of patent strains, 98/44/EC has established rules for treating derivatives from biological materials, which are worth applying in this area. If deposit number limited claim of strain could get a broad scope of protection, the furnishing of the deposited strain should be more convenient, and strict restrictions on furnishing the strain should be relaxed.