Posted on October 6, 2007 in IP, Lewis and Clark, patents by Brian RoweView Comments

Katherine StranburgNonobviousness and Nerd Culture

A Research manager approach focusing on Socially Optimal Invention levels. This is an interesting piece that merges legal policy choices with economic models.

Brian’s response: The models appear to be useful for providing different perspectives for evaluating the nonobvious patent requirements. Although there at least 10 separate assumptions that need to be made to make this model work. The number of assumptions needed to make the model work may prevent the models from being ultimately useful for making larger policy decisions. I really appreciated that the models include social cost of patents including restricted diffusion of the invention, and higher prices. And am curious to see the final draft of the paper

Joseph Miller – Are Erroneous Patent Denials Better than Erroneous Grants?

Supreme Court prefers false rejections over granting obvious patents while the Federal Circuit had been leaning to the opposite side
Favorite quote: “patent attorney spiritual nihilism”

Brian’s response: His discussion on the cost of Grants and denils looks very interesting. I am curious to see how the draft paper changes with the R&D input stating that the standards change may have little real world impact on how R&D money is spent.

R. Polk WagnerKRS, The Supreme Court and The Future of Patent Reform

The Technology Industry has dramatically increased there pursuits of patents per research dollar. It is getting tougher to get major legislative change through due to the corporate interest, which leaves judicial reform as the path of least resistance for reforming the patent system. Although reform through the courts is not the long term solution.

Brian’s response: The paper uses statistics in a very useful way to empirically explore court findings.

Robert P. Merges – Commenter

“Reading ones own stuff (writings) make your brain light up like a Christmas tree” (paraphrased)

Robert argues that the patent law code will expand to look more like the copyright code. Specifically the legislative process will be used by cooperate interests to address case based issues expanding the code beyond its current limited focus and moving reform to the judicial as the code expands.

Side note for none patent geeks following the podcast or blog:
PHOSITA = Person having ordinary skills in the art, PHOSITA wiki defition

Final note, from Suzanne Scotchmer:

Nonobviousness: What is evidence?

  • Market Environment
  • Innovative Environment
  • Competing Technologies
  • Cost Considerations
Posted on October 5, 2007 in Economics, Lewis and Clark by Brian RoweView Comments

Scott Stern
Overview: the focus was on the economic impact of patents in general and the specific impact of KSR.

Highlights: KSR discourages investments in patents that could fill in a given technology landscape.

Brian’s response: I would question if there is any real harm from a standard that encourages less patents. Stern argues that it creates a “tax” which was not fully developed. I am very open to learning more about this it is just not obvious. I look forward to seeing a working paper or the final article.

Posted on October 5, 2007 in IP, Lewis and Clark, patents by Brian RoweView Comments

Suzanne Scotchmer – Nonobviousness, Option, and the Scarcity of Ideas
Obvious = ideas come rapidly
Nonobvious = where ideas are scarce, or a long wait between ideas

Solutions: private incentives to create should be based on how much you speed up progress or should be granted only to “Scarce” ideas.

Brian’s response: This idea helps limit patents in fast moving field like software. Another option would be to limit the length of patents in fast moving field. If it would come about naturally in 5 months why should we grant a 20 year patent.

Posted on October 5, 2007 in IP, Lewis and Clark, patents by Brian RoweView Comments

Rochelle C. Dreyfuss – Commenter on first panel.

Other incentives to invent: sharing norms, reputaion …

Solutions: patent rights are not a reward for inventors.

Highlights: if a patent is denied for a worthy invention the public wins the public gets the invention for free (Brian: this is a rare case and happens so rarely that it does not discourage invention)

Amazing Quote: “cognitive issues only arise when real cognition is going on”

Brian’s response: Great commentary, Rochelle was willing to go head to head with the article writers on some of there assumptions and focused on the true reasons for patents getting inventions to the public.

Posted on October 5, 2007 in IP, Lewis and Clark, patents, pharm patents by Brian RoweView Comments

Rebecca S. Eisenberg – Pharma’s Nonobvious Problem

Overview: There are lots of problems relating to patents regarding pharmaceuticals. Many of the compounds are substantial similar to other patents making prior art review a questionable standard for patents.

Highlights: The problem is that the pharmaceutical industry has a lot of obvious patents. There is an incentive to wait to release innovation until a competing drug is about to lose protection.

Brian’s response: dizzying array of issues related to pharmaceutical patents, I look forward to reading the final article. This talk was very interesting but a bit scattered.

Interesting note(I learned a new term): Evergreen patent = pharmaceutical company tactics to extend patent protections. (Patently Abusive).

Posted on October 5, 2007 in IP, Lewis and Clark, patents, prior art by Brian RoweView Comments

John Duffy – Racing, Timing and the Patenting Standard

Timing considerations should be more important.

Prior art? How prior

Why was it not invented earlier? it was lost, if no one invented it in the last 30 years was it really obvious?

Highlight: nice overview of Anderson’s-Black Rock 404 F.2d 450, 1968 and discussion of United States v. Adam 383 U.S. 39, 1966

Solution: distinguish between prior art (recent) and prior, prior, prior art (old)

Brian’s response: if there is no need then time extends, the prior v. prior prior prior art distinction could help a lot for fast moving industries like software.

Posted on October 3, 2007 in IP, Lewis and Clark, patents by Brian RoweView Comments

FFIP is taking a road Trip to attend Lewis and Clark’s 2007 Fall Forum. This year’s forum is on the nonobviousness requirement. This requirement is unique to patent law. It is the legal principle that reserves patent protection to technologically significant inventions; technologically trivial inventions, even if useful and new, are not patentable.

The recent Supreme Court decision in KSR v. Teleflex, raised the bar for nonobviousness.
The full text of the KSR v. Teleflex case can be found at :

Speakers this year include:
Gregory Mandel Temple Law
John Duffy George Washington University Law
Rebecca Eisenberg University of Michigan Law
Rochelle Dreyfuss NYU Law
Suzanne Scotchmer University of California, Berkeley

Aside: Suzanne wrote an interesting paper on DRM and Antitrust it can be found here. The Antitrust conclusions are interesting although I do not think the motives for hacking are understood enough to make some of the formulas work in the practical world. Hacking is not a cost benefit analysis equation where cost saved by pirating is balanced with cost of time spent hacking. The motives for hacking are often fun, learning, prestige or even ethics.)

Scott Stern Kellogg Graduate School of Management
Vincenzo Denicolo University of Bologna (Italy)
Michael Katz UC Berkeley
Kevin Rivette Chairman of the USPTO Public Patent Advisory Committee.
Keith Sawyer University of St. Louis
Colleen Seifert University of Michigan
Steven Smith University of Wisconsin
Janet Davidson Lewis & Clark
Mark Blaxill, Senior Partner & Managing Director, Boston Consulting Group
Ian Harvey, Chairman, Intellectual Property Institute (UK)
Damon Matteo, Vice President for Intellectual Capital Management, Xerox PARC
Andy Culbert, Associate General Counsel, Microsoft
Katherine Strandberg DePaul
R. Polk Wagner Penn Law
Robert Merges UC Berkeley
Lisa LeSage Lewis & Clark
Joe Miller Lewis & Clark