Research Handbook on the Economics of Intellectual Property Law
Vol 1: Theory Vol 2: Analytical Methods
Edited by Ben Depoorter, Peter Menell and David Schwartz
Abstract
By law, an issued U.S. patent is presumed valid in court. While Congress placed the burden of establishing a patent’s invalidity on the challenging party, it failed to specify the particular quantum of proof necessary to overcome this presumption. In a 2011 decision, Microsoft Corp. v. i4i Limited Partnership, the Supreme Court held a patent’s invalidity must be established by clear and convincing evidence. However, a jury may be instructed that prior art not previously considered by the U.S. Patent and Trademark Office (USPTO) can assist the challenger in satisfying its burden. Several recent empirical studies have sought to assess the impact of the presumption of validity following Microsoft v. i4i. These studies generally find that the clear-and-convincing evidence standard can have a material impact on invalidity decisions in litigation. In addition, these studies suggest that invalidity challenges based on prior art not previously considered by the USPTO are more likely to succeed.
You are not authenticated to view the full text of this chapter or article.
Elgaronline requires a subscription or purchase to access the full text of books or journals. Please login through your library system or with your personal username and password on the homepage.
Non-subscribers can freely search the site, view abstracts/ extracts and download selected front matter and introductory chapters for personal use.
Your library may not have purchased all subject areas. If you are authenticated and think you should have access to this title, please contact your librarian.