Christopher Anthony Cotropia

Compulsory Licensing Under TRIPS and the Supreme Court of the United States' Decision in eBay v. MercExchange

The compulsory licensing of patents is a contentious issue in international patent law. The dispute over whether and when a government may issue a compulsory license has focused, in part, on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Recently, the question of allowed unauthorized use of a patented invention has also arisen under United States patent law in a unique context. In its 2006 decision in eBay Inc. v. MercExchange L.L.C., the Supreme Court of the United States decided that courts must use a four-factor equitable test to decide whether an injunction should be awarded in patent cases. As a result of this opinion, injunctions have been denied by United States district courts in at least seven cases, allowing the infringer to continuing practicing the patented technology without the patentees consent. The reason the eBay decision and its application are mentioned in the same context as TRIPS and compulsory licensing is that one of the arguments before the Supreme Court, advanced by the United States and others, is that a move away from automatic permanent injunctions potentially puts the United States in noncompliance. The Supreme Court did not address this question. But with the denial of injunctions and resulting unauthorized use due to eBay, the question is ripe for answering. This Chapter does just that, first placing the eBay decision in the context of compulsory licensing and then evaluating the decision under TRIPS. The Chapter evaluates the effect of an injunction denial pursuant to eBay both under the exceptions in TRIPS Articles 30 and 31 and the remedial provision - Article 44. While this discussion is important on a micro-level, the discussion also has macro-ramifications, potentially prompting a shift in the overall discourse concerning compulsory licensing and TRIPS. Furthermore, eBay may identify an optimal method for Member States to address social objectives by giving their judiciaries the flexibility to allow unauthorized uses on a case-by-case basis. This approach may protect the publics interest while doing minimal violence to the patentees rights and ability to recoup research and development costs.

The Upside of Intellectual Property's Downside

Intellectual property law exists because exclusive private rights provide an incentive to innovate. This is the upside of intellectual property: the production of valuable goods that society would otherwise never see. In turn, too much intellectual property protection is typically viewed as counterproductive, as too much control in the hands of private rightsholders can create more artificial scarcity than the incentive effect warrants. Such overprotection not only denies the public access to the innovation without a corresponding gain in incentive, but it also retards future innovation by making it more difficult for follow-on innovators to make use of existing products. This is the downside of intellectual property: reduced production and impeded innovation. This article turns the traditional discussion on its head and shows that intellectual propertys putative costs can actually be benefits. It does so by questioning one of the discussions underlying assumptions: that innovation is always good. This assumption is usually valid, but not always; there are certain industries that society may prefer to suppress. If intellectual property reduces production and impedes innovation in those industries, then its protection would be a net gain for society. We examine a handful of such industries (tax planning, pornography, and others), demonstrate that keeping (or bringing) them under the intellectual property umbrella may be the best way to stifle them - an approach that runs contrary to the scholarly consensus - and thereby describe the circumstances under which intellectual propertys downside can become societys upside.

Predictability and Nonobviousness in Patent Law after KSR

In KSR International Co. v. Teleflex, Inc., the Supreme Court addressed the doctrine of nonobviousness, the ultimate question of patentability, for the first time in thirty years. In addition to mandating a flexible approach to deciding nonobviousness, the KSR opinion also introduced two predictability standards for determining nonobviousness. The Court described predictability of use (“Type I predictability”) — whether the inventor used the prior art in a predictable manner to create the invention — and predictability of the result (“Type II predictability”) — whether the invention produced a predictable result — both as a means for proving obviousness. While Type I predictability is easily explained as part of the flexible approach endorsed by KSR, Type II predictability represents a possible radical shift in the nonobviousness doctrine. Instead of focusing on whether reasons already existed to create the invention, like Type I predictability does, a Type II predictability analysis takes the invention’s creation as a given and looks instead at the invention’s operation. Type II predictability moves the analysis away from the gap between the prior art and the invention to the invention only.The Patent Office, the Federal Circuit, and lower courts are using Type II predictability fairly extensively. The problem with this usage is that Type II predictability runs counter to statutory language, introduces hindsight bias, discriminates against certain technologies, and conflicts with basic patent theory. Accordingly, the Patent Office and courts need to reconsider how they use Type II predictability and interpret this part of KSR.

Heterogeneity Among Patent Plaintiffs: An Empirical Analysis of Patent Case Progression, Settlement, and Adjudication

This article empirically studies current claims that patent assertion entities (PAEs), sometimes referred to as ‘patent trolls’ or non-practicing entities (NPEs), behave badly in litigation by bringing frivolous patent infringement suits and seeking nuisance fee settlements. The study explores these claims by examining the relationship between the type of patentee-plaintiffs and litigation outcomes (e.g., settlement, grant of summary judgment, trial, and procedural dispositions), while taking into account, among other factors, the technology of the patents being asserted and the identity of the lawyers and judges. The study finds significant heterogeneity among different patent holder entity types. Individual inventors, failed operating companies, patent holding companies, and large patent aggregators each have distinct litigation strategies largely consistent with their economic posture and incentives. These PAEs appear to litigate differently from each other and from operating companies. Accordingly, to the extent any patent policy reform targets specific patent plaintiff types, such reforms should go beyond the practicing entity versus non-practicing entity distinction and understand how the proposed legislation would impact more granular and meaningful categories of patent owners.

Who Benefits from Repealing Tampon Taxes? Empirical Evidence from New Jersey: Who Benefits from Repealing Tampon Taxes?

Many state and local governments exclude some medical products from the sales tax base, including some that are primarily used by men such as hair growth products. However, tampons and other menstrual hygiene products are subject to sales taxes in most states. A recent social movement advocates for the repeal of these “tampon taxes” and several class action lawsuits have been filed against states citing equal protection violations. In this article, we use the 2005 elimination of menstrual hygiene products from the sales tax base in New Jersey as a natural experiment to study who benefits from the repeal of tampon taxes. We find that the tax break is fully shifted to consumers, but that the tax break is not distributed equally. Low‐income consumers enjoy a benefit from the repeal of the tax by more than the size of the repealed tax. For high‐income consumers, the tax break is shared equally with producers. The results suggest that repealing tampon taxes removes an unequal tax burden and could make menstrual hygiene products more accessible for low‐income consumers.

Who Would Benefit from Repealing Tampon Taxes? Empirical Evidence from New Jersey

Many state and local governments exclude some medical products from the sales tax base, including some that are primarily used by men such as hair growth products. However, tampons and other menstrual hygiene products are subject to sales taxes in most states. A recent social movement advocates for the repeal of these “tampon taxes�? and several class action lawsuits have been filed against states citing Equal Protection violations. In this article, we use the 2005 elimination of menstrual hygiene products from the sales tax base in New Jersey as a natural experiment to study who benefits from the repeal of tampon taxes. We find that the tax break is fully shifted to consumers, but that the tax break is not distributed equally. Low-income consumers enjoy a benefit from the repeal of the tax by more than the size of the repealed tax. For high-income consumers, the tax break is shared equally with producers. The results suggest that repealing tampon taxes removes an unequal tax burden and could make menstrual hygiene products more accessible for low-income consumers.

Patent Applications and the Performance of the U.S. Patent and Trademark Office

This paper presents and analyzes data collected from United States Patent and Trademark Office (USPTO) reports and a series of FOIA requests for the period from 1996 to 2012. The data and analyses is set forth in three parts — the number, types, and disposition of patent applications being examined by the USPTO (the USPTO’s “input”); the number of applications allowed and patents issued by the USPTO (the USPTO’s “output”); and the number of pending applications and the average pendency for an application (the “difference” or commonly referred to as the USPTO’s “backlog”). The data shows that the backlog of patent applications awaiting examination has declined even though patent applications are increasing. However, an ever growing percentage of these applications are requests for continued examination (RCEs) taking another turn in the USPTO. And we are experiencing a return to the rising allowance rates of the late 1990s, which presumably is facilitating the USPTOs drop in backlog. Our modest hope is that this information will bring awareness to the current state of play at the USPTO and in the U.S. patent system in general and help others answer, empirically, questions surrounding the health of the U.S. patent system and the performance of the USPTO.