TIPLJ: Volume 27

Why Patent Hold-Up Does Not Violate Antitrust Law

Citation: 27 Tex. Intell. Prop. L. J. 1 (2019)

Authors: Gregory J. Werden, Luke M. Froeb

About: Werden is Senior Economic Counsel in the Antitrust Division, U.S. Department of Justice. Froeb is William C. Oehmig Chair of Free Enterprise and Entrepreneurship at Owen Graduate School of Management, Vanderbilt University. The views expressed herein are not purported to reflect those of the U.S. Department of Justice.

The PTAB’s Problem

Citation: 27 Tex. Intell. Prop. L. J. 31 (2019)

Author: Greg Reilly

About: Assistant Professor of Law, Chicago-Kent College of Law.

Abstract: Concerns raised by opponents of the PTAB to date are largely unpersuasive.  However, underlying their concerns may be a more legitimate problem – ex post patent invalidation undermines reliance interests of patent owners that never would have developed if the patent had been rejected as unpatentable during ex ante patent examination.  This is a potential problem of ex post patent invalidation generally, not the PTAB specifically, but has become more apparent as the PTAB has made ex post invalidation more common.  The extent, source, and consequences of such reliance costs are questionable and require much more exploration and evaluation.  These issues, however, would be a better focus for debates over the optimality of the PTAB generally, and its design choices specifically, than existing arguments focused on constitutional power, supposed procedural bias, and the PTAB’s absolute invalidity rate.  They also may be relevant to ongoing debates about whether it would be rational to expend more resources on ex ante patent examination.

Uncreative Intellectual Property Law

Citation: 27 Tex. Intell. Prop. L. J. 51 (2019)

Author: Aaron X. Fellmeth

About: Dennis S. Karjala Professor of Law, Science & Technology, Arizona State University, Sandra Day O’Connor College of Law.

Abstract: An insidious myth has begun pervading intellectual property (IP) law and scholarship. Courts and academics commonly assume that the purposes of copyright law, patent law, and even in some cases trademark law are to reward creativity. The belief has been encouraged by opinions of the Supreme Court and influential lower courts and has become so embedded in IP law discourse that many scholars now dispute the effectiveness or relevance of copyright law and patent law in light of their understandings of psychological research showing that creativity is primarily intrinsically motivated. This article challenges the assumption on which these arguments are based by denying that any branch of IP law—copyright, patent, or trademark—is primarily designed to promote creativity. Although creativity is relevant in some ways to each field, it is not an indispensable or even a central goal of any of them. The article further explains why the related claim that IP laws “reward” or “incentivize” the desired behavior misrepresents the functioning of IP law. The article concludes by explaining how each field of IP law attempts to accomplish more complex (and, in each field, different) goals using more subtle and variable means.

The Problem with Pathogen-Selective Antibiotics

Citation: 27 Tex. Intell. Prop. L. J. 105 (2019)

Author: Jonathan I. Tietz

About: JD, University of Michigan Law School, 2019; PhD (chemistry), University of Illinois at Urbana-Champaign, 2016; MS (organic chemistry), Kent State University, 2012.

Abstract: In the battle with bacteria, humanity is outnumbered and outgunned. The ability of bacteria to quickly evolve and share antibiotic resistance strategies, combined with humanity’s indiscriminate use of broad-spectrum antibiotics, has created a terrifying antibiotic resistance crisis: soon, even a simple scrape or a routine medical procedure may become life-threatening. Hope may lie in pathogen-selective antibiotics. That is, if we design “magic bullet” drugs that each target only one bacterial species, we can avoid the problems of cross-resistance and antibiotic overuse that have led to the current crisis. But that is difficult, both scientifically and economically. Current antibiotic incentives focus on antibiotics as a broad monolith and in general, inadequately incentivize the development of one-bug-per-drug therapies.

Here I identify two important respects in which pathogen-selective, “one-bug-per-drug,” antibiotics differ from traditional, broad-spectrum drugs: conditional spillover benefits, and network-dependent social utility. These characteristics must be considered if we are to incentivize development of a pathogen-selective arsenal. Accordingly, I suggest that a comprehensive prize or bounty framework, targeted research grants, coupled or tolled exclusivity, or revised clinical trial standards may be useful tailored solutions.  Last, I suggest that it might be more generally useful, in innovation scholarship, to think generally about incentive frameworks, not in terms of disease or symptom, but rather in terms of the contextual relationship between the drug, the doctor, the disease, and society.


Citation: 27 Tex. Intell. Prop. L.J. 137 (2019)

Author: Joshua Scheufler

About:  JD, University of Texas School of Law, 2019


In his influential 1970 piece, The Uneasy Case for Copyright, Justice Breyer notes the most well trotted tension in copyright law: consumers want cheap products and producers want strong protections. He cites this argument back to 1914; the tension is certainly nothing new, and as Breyers’ attention suggests, it is well trodden ground. From the consumers’ standpoint, they want free competition, and they trust the market to bring prices close to marginal cost. Producers counter that if the industry is to survive, they must see returns greater than marginal cost, so they demand protection from competition. But what if there is no commercial market for the good and the production of the good is already paid for? Is there any argument for granting protection to producers of that good? Traditionally, the answer is resounding no. If the good is already produced, incentivizing production is wasteful, especially if no market facilitates the incentive. But a cautious approach might find that value could be gained from such protections. After all, a good could provide value to the public without a commercial market. If so, the public would prefer to protect the good and may reasonably think the producer of the good is the ideal entity to do that. Alternatively, the good may serve the general public well and simply not have a market yet. In such a case we should provide protection so that when the market is created, the proceeds may be funneled into producing more of the base good.

This Note addresses these questions looking specifically at patent documents. In particular, this Note addresses whether, under a utilitarian framework of intellectual property, a patent document should receive copyright protection. This Note also investigates whether, under current law, patent documents do receive copyright protection, and what might be done to align the legal answer with the theoretical answer. Part I lays a groundwork by defining copyright protections in a patent document, considering who they might vest in, and summarizing the patent drafting process. Part II addresses patent document copyrights under a utilitarian framework and seeks to answer whether a patent document should receive copyright protection. It considers three theoretical explanations for copyright protection: the incentive function, the subsidization function, and encouragement of searchability features. Part III evaluates both the current state of the law and what steps might align the law with the theoretical determination of Part II. It considers applying the originality requirement in light of the factual and functional content of a patent document, the merger doctrine, and the legal significance of a copyrighted work.