By Daniel Kazhdan

 

Federal Circuit scholars have begun to notice a shift in the way the Supreme Court interacts with the Federal Circuit when it comes to patent questions. These scholars note that in recent years the Supreme Court reviews the Federal Circuit more frequently and more harshly. The Court also criticizes the Federal Circuit for being too formalistic and too eager to expand its jurisdiction. What scholars have failed to note is that these trends are occurring across the entirety of the Federal Circuit’s decisions, and not just with regards to patent questions. This suggests that there is something about the Federal Circuit, and not patents, that is creating tension between the two courts. This article suggests that the Federal Circuit’s exclusive jurisdiction creates a gulf between the Federal Circuit and the rest of the appellate judiciary on all matters, and this gulf has caused changes both in how the Federal Circuit conducts itself and in how other courts perceive it.

By: Andrew J. Maas

Intangible assets have created value for hundreds of years. Valuation of intangible assets regularly applies to patents, copyrights, trademarks, and tradesecrets. A few current case studies included in the article cover current patents, copyrights, trademarks, and trade secrets. In 2011 the America Invents Act was signed into law by President Obama and will have a significant affect on patent valuation. The America Invents Act will require some adjustments to how current patent valuation analysts approach early stage patent valuation. Specifically, analysts will need to understand: 1)inventorship, 2) potential undermining of patent value because of the prior commercial user defense, 3) a likely increase in patent cost, and 4) potential reduction in risk due to the new America Invents Act system. Ultimately, patent valuation has become more complex under the America Invents Act and requires that the typical patent valuation analyst apply additional skills and knowledge to be effective.

By : Samantak Ghosh

The Supreme Court’s recent decision on patentable subject matter, Mayo Collaborative Services. v. Prometheus Laboratories, has come in for a lot of criticism from the biotechnology industry. Whenever the Supreme Court renders a judgment that is a significant departure from the past and arguably gets it wrong, the voices questioning the underlying principle behind the decision become stronger. Unfortunately, Prometheus was a poor vehicle for recalibrating a doctrine that has been untouched for the past three decades. However, it is important to dissociate the specific opinion from the principle animating the opinion, the natural phenomenon doctrine. If the natural phenomenon doctrine is to be rejected, it should be based on its merits rather than on the occasional mistakes of courts applying it. This Article analyzes the natural phenomenon doctrine and addresses some of the issues raised against it. It observes that the flexibility of this common law doctrine has been used by the Supreme Court to conform the scope of patentability to the demands of the time. The doctrine plays a vital role in ensuring that patents do not block off fundamental tools of future innovation. Furthermore, contrary to what some commentators argue, this role cannot be substituted by other statutory requirements. 

By: Michael A. Shinall

The America Invents Act reshaped U.S. patent law by granting priority of invention to the first inventor to file. This marks a radical departure from the United States’ previous method of giving priority of invention to the first inventor to invent. The policy shift harmonizes the U.S. patent system with the rest of the world, but creates potential problems for small firms or inventors who do not have the resources to win a race to the patent office against large corporate competitors. This Article argues, however, that small inventors may find protection in the new grace period, which grants inventors who publicly disclose their inventions priority over all third parties. Inventors who use disclosures under the new law to establish priority will be achieving the historically recognized patent law goals of encouraging inventors to disclose their work and increasing dissemination of information to the public.