Results tagged “Patent Law”

May 18, 2012

Petherbridge blog.jpgBy Professor Lee Petherbridge & Associate Professor Jason Rantanen (Iowa)

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act ("AIA" or "Act").[1] It embodies the most substantial legislative overhaul of patent law and practice in more than half a century. Commentators have begun the sizable task of unearthing and calling attention to the many effects the Act may have on the American and international innovation communities.[2] Debates have sprung up over the consequences to inventors small and large,[3] and commentators have obsessed over the Act's so-called "first-to-file" and "post-grant review" provisions. Lost in the frenzy to understand the consequences of the new Act has been the demise of patent law's "best mode" requirement.

The purpose of this Essay is to draw attention to a benefit the best mode requirement provides--or perhaps "provided" would be a better word--to the patent system that has not been the subject of previous discussion. The benefit we describe directly challenges the conventional attitude that best mode is divorced from the realities of the patent system and the commercial marketplace. Our analysis suggests that patent reformers may have been much too quick to dismiss best mode as a largely irrelevant, and mostly problematic, doctrine.

Read the full piece on Stanford Law Review.

[1]Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified in scattered sections of 35 U.S.C.). [2]See Jason Rantanen & Lee Petherbridge, Commentary, Toward a System of Invention Registration: The Leahy-Smith America Invents Act, 110 Mich. L. Rev. First Impressions 24 (2011),
[3]See Lee Petherbridge & Jason Rantanen, Jay P. Kesan, Debate, America Invents, More or Less?, 160 U. Pa. L. Rev. PENNumbra 229 (2012),


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January 17, 2012


Professor Lee Petherbridge is involved in a debate on PENNumbra, a University of Pennsylvania Law School project (originating with their law review) that hosts debates between scholars on current controversies. He and Professor Jason Rantanen of the University of Iowa College of Law have asserted that despite its stated goal to stimulate innovation and job creation, the America Invents Act (recent patent reform legislation) may well do just the opposite. In response, Professor Kesan (Illinois) examines other sections of the Act, arguing that they provide more reason to be optimistic.

In the piece, the professors argue that:

"All rules are distortive. In perhaps no instance is this idea more true than when it comes to the patent system. In a very fundamental sense, the system is nothing more than a set of rules imposed for the very purpose of affecting the behavior of economic actors. Like so many other rules, it has a laudable purpose: the desire to efficiently stimulate invention and innovation.

The purpose of the newly enacted Leahy-Smith America Invents Act (AIA) is to rearrange the rules of the patent system and thus to create a new and different set of benefit and cost possibilities for economic actors. Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified in scattered sections of 35 U.S.C.). Unfortunately, the changes in benefits and costs worked by the AIA seem tailored to do two things: (1) discourage the patent-driven incentive to innovate, and (2) protect market power. This suggests the AIA may have a negative effect on American competitiveness and job creation, a disappointing outcome given that Congress's express purpose in enacting the law is to promote technological development and protect the rights of small businesses and inventors."

Read the complete debate on PENNumbra.


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