State of Innovation

Patents and Innovation Economics

Good News on Patents From the Supreme Court

In two cases this week, the Supreme Court preserved the integrity of our patent system.  In the Stanford University v. Roche Molecular Systems, case the ownership of three patents for a diagnostic test used worldwide to measure the concentration of HIV in patients’ blood plasma was at issue.  The Court emphasized that U.S. patent law is based on the concept that the inventor is the first owner of his invention.

“Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor,” Chief Justice John G. Roberts Jr. wrote for the court’s majority. “Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not.”

This would seem to strike a blow to America Invents Act, which is trying to change the law so that the first person to file a patent application is the owner of the invention.

The second case was Microsoft Corp v i4i Limited Partnership, in which Microsoft argued that prior art not considered by the Patent Office should only have to meet the “preponderance of evidence” test to invalidate a patent.  The court disagreed and upheld the CAFC (Court of Appeals for the Federal Circuit) in requiring “clear and convincing” evidence.  If Microsoft had prevailed it would have significantly weakened patent rights.

These two cases taken together seem to signal a change in the Supreme Court towards patent cases.  For the last 3-5 years the Supreme Court has ruled on a number of patent cases that all weakened the patent right.  For instance, the KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), made it easier to find a patent invalid for obviousness.  The eBay Inc v. MercExchange, L.L.C., 547 U.S. 388 (2006) case made it more difficult to obtain an injunction against an infringer, even after winning a case showing that there was infringement.  The In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 case narrowed the scope of patentable subject matter.  The Medimmune, Inc. v. Genetech, Inc., 549 U.S. 118 (2007), case overturned a long-standing rule that a licensed patent user cannot file a declaratory judgment action when they have not breached the license terms.  These cases showed a Supreme Court that had become hostile to patents and was willing to ignore or rewrite the law to weaken patent rights.  While neither of these cases strengthens the rights of inventors, at least they did not undermine patent rights.  The timing of the Stanford case appears to be a way for the Supreme Court to weigh in on the Constitutionality of the America Invents Act before it passes.

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June 10, 2011 - Posted by | Uncategorized

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