I’m always on the lookout for interesting new scholarship related to intellectual property and innovation policy. The following are a few of the articles that I’ve been delving into this past week:
- James Hicks, Do Patents Drive Investment in Software?, 118 NW. U. L. REV. 1277 (2024).
- Ana Santos Rutschman, From Myriad to Moderna: The Modern Pharmaceutical Company, ___ Texas A&M University Journal of Property Law ___ (2024) (forthcoming).
- John Howells, Ron D Katznelson, Freedom to Operate analysis as competitive necessity—the Selden automobile patent case revisited, Journal of Intellectual Property Law & Practice (2024).
- Christa Laser, Scientific Educations Among U.S. Judges, ___ American University Law Review ___ (2025) (forthcoming).
- Garreth W. McCrudden, Drugs, Deception, and Disclosure, 38 BERKELEY TECH. L.J. 1131 (2024).
James Hicks, Do Patents Drive Investment in Software?, 118 NW. U. L. REV. 1277 (2024).
Professor Hicks uses what he calls a “quasi-experimental approach” to investigate whether the grant of a patent makes a business-methods software startup more likely to attract early-stage venture capital investment. Contrary to prior scholarship, Hicks finds “no evidence that patents play a role in channeling investment to these startups, nor that they lead to more successful downstream outcomes such as acquisitions and initial public offerings.” The article leverages the Supreme Court’s decision in Alice Corp., which dramatically tightened patent eligibility standards for business-methods software, to compare outcomes for patent applications decided just before and after the decision. Despite a sharp drop in grant rates, Hicks finds no corresponding change in startup funding or success.
Ana Santos Rutschman, From Myriad to Moderna: The Modern Pharmaceutical Company, ___ Texas A&M University Journal of Property Law ___ (2024) (forthcoming).
Prof Santos Rutschman’s article presents the stories of two modern biotech companies, Myriad Genetics and Moderna, as windows into recurring themes surrounding drug and vaccine development. She contrasts their origins, core technologies, relationships with venture capital, industry, academia, and government agencies, as well as their intellectual property strategies. While Myriad commercialized genetic testing spun out of University of Utah research, Moderna pioneered mRNA vaccine technology anchored in the Boston biotech hub. The article includes substantial critiques of how universities and government entities that funded early research and co-owned key patents failed to leverage that position to ensure affordable pricing and public access when licensing to these companies.
John Howells, Ron D Katznelson, Freedom to Operate analysis as competitive necessity—the Selden automobile patent case revisited, Journal of Intellectual Property Law & Practice, 2024; https://doi.org/10.1093/jiplp/jpae018
I really enjoy history articles that provide insight into our modern dilemmas. In this fairly short article, Howells and Katznelson explores the role of Freedom to Operate (FTO) analyses in mitigating the restrictive effects of broad patent claims on industry innovation, specifically within the U.S. automobile sector during the early 20th century. Although broad scope was given to the Selden patents, the authors illustrate how companies like Ford utilized FTO analyses to ensure their developments did not infringe.
Christa Laser, Scientific Educations Among U.S. Judges, ___ American University Law Review (2025) (forthcoming).
Professor Laser’s article argues that the federal judiciary would benefit from an increased presence of judges with formal education in science, technology, engineering, and mathematics (STEM) due to the growing complexity and technical nature of cases involving scientific evidence. The article emphasizes the low percentage (7.6%) of federal judges with STEM backgrounds and argues that this lack is problematic for effectively handling cases with technical content, such as patent law, environmental cases, and forensic evidence in criminal cases. The article uses the Myriad decision as one case study involving substantial misunderstanding of the science.
Garreth W. McCrudden, Drugs, Deception, and Disclosure, 38 BERKELEY TECH. L.J. 1131 (2024).
This is a well done student note, perhaps because author already had a PhD in chemistry prior to law school and was practicing patent agent. McCrudden focuses on the issue of pharma companies making inconsistent representations to the USPTO and FDA. The idea here is that for the USPTO they want to show their drug is novel and non-obvious compared to prior art, while for the FDA they want to show their drug is similar to already approved drugs in order to demonstrate safety and obtain regulatory approval more easily. The article argues that this practice undermines the integrity of the patent system and denies the public access to generic medicines that are unfairly blocked by invalid patents. Two solutions: (1) USPTO-FDA interaction during patent prosecution; (2) expanding inequitable conduct with a “pharma exception.”
Christa Laser, Scientific Educations Among U.S. Judges, ___ American University Law Review (2025)
I took a quick look at this article, and I’d love to see an additional data point added – who appointed the judge. Is there any relationship between the (lack of) scientific knowledge of the judge and the President who appointed him or her? Political leanings suggest there might be, but solid data would be greatly appreciated.
Re: “..(7.6%) of federal judges with STEM backgrounds.”
Even though a technology background of some kind would seem particulary appropriate for Fed. Cir. judges, I have noted over it’s years the background of their judges, including the several CCPA judges before then, as they were nominated by the president. Only a relatively small percentage have been patent attorneys. Having been a Senator’s aide was far more common than STEM backgrounds to both political parties.
J. Prost got appointed because she used to pick up Orrin Hatch’s dry cleaning. That was apparently her only qualification.
Garreth W. McCrudden, Drugs, Deception, and Disclosure, 38 BERKELEY TECH. L.J. 1131 (2024)
“Belcher II is, of course, just one case.” Erm, precisely, yet out come the bandwagons and marching bands “Burn Pharma, Burn Pharma, witches all of them!”
“The senators’ letter echoed the demands for meaningful reform
that nonprofit organizations, such as I-MAK, had been making for years.”
I-MAK still being funded? $0.5 million a year for the I-MAK couple to write garbage, lies and defamatory articles. Oh, to be in the non-profit business, incompetent, clueless, but rich!
Great to see such articles being written by those with zero industry knowledge.
Must get back to performing open heart surgery on my neighbour. Just as soon as the youtube adverts finish. Such an inconvenient interruption after my knife cut though some red pipe, delaying the writing of my article for the Berkeley Technology Medical Journal.
B-b-but “Equity.”
+1. You can’t make this stuff up! Youz jus’ can’t!
Yes it would help to use some actual pharma examples when arguing for a special pharma unenforceability rule. Belcher, really?
James Hicks, Do Patents Drive Investment in Software?, 118 NW. U. L. REV. 1277 (2024).
“Using a novel quasi-experimental approach and an original dataset, I investigate whether the grant of a patent makes a business-methods software startup more likely to attract early-stage venture capital investment. In contrast to prior scholarship, I find no evidence that patents play a role in channeling investment to these startups, nor that they lead to more successful downstream outcomes such as acquisitions and initial public offerings.”
Let me guess: Google paid him $200K to write the article. My lived experience is that patents are vital for software start-ups and help the start-ups get funding.
Note the author has no technical background and is a graduate of Reed College with a degree in political science. Probably Lemley/Google has such a hold on these people that unless they publish negative articles about information processing patents, they will have no hope of tenure or promotion (or a gravy train from Google.)
Meanwhile Grampy Wingnert gets paid by the Klan to cut eye holes in their pillow sheets. Use the safety scissors that the nurse gave you!
Yay – Malcolm loves to inject politics into a non-political situation.
How about injecting your view on the Israel/Hamas debacle?
(Nice way to obtain crickets from Malcolm)
My instant knee-jerk reaction is that both NW and Hicks are right. I mean, vital for attracting funding is a showing of patent savviness and that multiple patents are pending BUT the mere fact of “the grant of a patent” is an event which by itself not enough to get investors on board.
Further, are not Hicks’s “in contrast to prior scholarship” words a flagrant give-away (in that the author with this publication is seeking to promote their own career by whipping up controversy, setting a hare running)?
I work with start-ups MaxDrei. I’ve helped a number of them get funding.
Good distinction, between the importance of patents pending versus patents finally issued later in obtaining initial business funding. Another distinction is that this article is only adressing “business-methods” software patents [notoriously difficult to enforce even though popular with some PAE’s], not the many other software-related technology inventions.
“the author has no technical background and is a graduate of Reed College with a degree in political science.”
Making him a perfect — perfect! — candidate for both the CAFC and SCOTUS!
Re “John Howells, Ron D Katznelson, Freedom to Operate analysis as competitive necessity—the Selden automobile patent case revisited, Journal of Intellectual Property Law & Practice, 2024; link to doi.org
I spent some time years ago looking into the early and broad Seldon patent on gas powered vehicles, and the suit against Ford. Of particular interest since the named inventor Seldon was also a patent attorney. Also, a later-on Seldon automobile is in our local museum. I also experienced from later patent suits against Ford the Freedom to Operate (FTO) policy of Ford which lasted for many years after the Seldon patent suit. That “policy” seemed more accurately to be the attitude of Henry Ford to refuse to pay license fees to anyone unless forced to after fighting and losing a patent suit even if clearly infringing. The Randsburg electrocoating suit in the 7th Cir. was one example.
As for Seldon’s patent, it was a classic example of what many would now consider serial continuations abuse and secret lengthy prosecution laches with little or no PTO docket contol that was available in those days [until Lemelson got that golden goose killed with new patent terms] to allow issuance for a 17 years term and enforcement many, many, years after the application was originally filed. As I recall, the Ford suit on this patent was only decided on appeal and after an unusual effort to build an automobile based on the Seldon specification to prove it would not work?
“Scientific Educations Among U.S. Judges”
Two lack-of-such educations, innovation-crippling examples front and center:
1. SCOTUS
2. CAFC
I would say it’s more likely that a jurist with a STEM background is able to not only comprehend the subject matter of the case, but also to simply think logically. An extreme recent failure is J. Albright’s stunning claim construction foul-up in Maxell v. Amperex [https://patentlyo.com/patent/2024/03/contradiction-%E2%87%92-indefiniteness.html]. I would also say that there are many non-STEM jurists that have shown themselves fully capable of comprehending complex technical information as well as be clear-minded and logical in rendering opinions.