Tuesday, June 20, 2017

More Classic Patent Scholarship

It has been a while since the last update to my Classic Patent Scholarship, so I thought I would add some works that I view as "classics" but that haven't made it onto the list yet.

First, while the body of "Beyond IP" scholarship is blossoming (see, e.g., the two Yale ISP conferences, where I got to present work with Daniel Hemel), there is a long history of work on innovation incentives beyond patents. For example, Machlup and Penrose (already on the list of classics) describe how the patents-vs-prizes debate dates back to at least the 19th century. Here are two works I would add to the classics list:
Other important works in this genre, which don't quite fit under my pre-2000 "classic" bar, include Frischmann 2000, Shavell & van Ypersele 2001, Gallini & Scotchmer 2002, and Abramowicz 2003.

As a former grant-funded university researcher (during my physics grad school days), I'm particularly interested in the role of grants and other direct funding as a non-patent incentive, and their overlap with patents through the Bayh–Dole Act. Here are some additional classics in this area:

Finally, there is now a long strand of literature on the Federal Circuit as an institution and the value of specialized patent adjudication; anyone interested in this area should start with the work of Rochelle Dreyfuss:

For other classics—including more extended commentary on them by prominent patent law professors—see the Classic Patent Scholarship page. And if you have suggestions of other pre-2000 works that should be on the list, please add them to the comments on send me an email!

Monday, June 12, 2017

Jeanne Fromer: Should We Regulate Certification Marks?

Teaching trademark law for the first time this spring, I fielded several questions from students on a lesser known corner of trademark law: certification marks. For those who have not encountered certifications marks, they are a special type of trademark, whose role is to certify that goods or services comply with a particular standard. Precisely how are certification marks obtained, students asked, and how closely does the PTO scrutinize the chosen standard? What if a company wants to certify its goods, and the mark owner refuses out of an arbitrary dislike for the seller rather than the contents or quality of its offerings? So it was a fortuitous event that I came across Jeanne Fromer's article The Unregulated Certification Mark(et)published in January in the Stanford Law Review.  Former's paper answers these questions and much more.

Wednesday, June 7, 2017

More Impressions About Patent Exhaustion

Daniel Hemel and Lisa Larrimore Ouellette
Cross-posted at Whatever Source Derived

As we explained last week, the full impact of the Supreme Court’s decision in Impression Products v. Lexmark will depend on whether courts are willing to view creative patent transactions as licenses (which do not exhaust the patentee’s rights) rather than sales (which, after Impression, now do). While it is too early to answer that question, we can already anticipate answers to two related questions regarding Impression’s impact: (1) What does the decision mean for pharmaceutical prices in the United States and abroad?; and (2) How will Impression affect information costs in markets for patented products? With respect to the first question, we expect that Impression will put upward pressure on pharmaceutical prices in developing countries—and downward pressure on prices in the United States—notwithstanding the fact that the importation of drugs from abroad will remain illegal under most circumstances. As for the second question, we are skeptical that Impression will have a substantial effect on information costs in markets for patented products, notwithstanding some of the enthusiastic commentary in the technology press immediately after the decision.

Below, we explain both of these conclusions in more detail.