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Professor Gaia Bernstein

Professor Gaia Bernstein presents paper at new ABA symposium

Paper highlights a new trend in patent litigation, focusing on end users – those who do not produce or sell patented technology but use it for business or personal consumption

Professor Gaia Bernstein authored a paper, The Rise of the End User in Patent Litigation, which was selected to represent patent law academic scholarship at the American Bar Association – Intellectual Property Law (ABA-IPL) section’s first Intellectual Property Scholarship Symposium on April 2, 2014.

In an effort to bridge the gap between scholarship and practitioners, the Intellectual Property Section of the ABA set a committee of scholars to select one paper from each area of intellectual property – copyright, trademark, and patent – each to be presented at a symposium at its annual meeting. Although this was the first time it was ever done, the ABA hopes to make this an annual event. At the symposium, which proved to be a great success, Bernstein was given the opportunity to receive feedback from scholars and practitioners alike.

Professor Bernstein’s paper highlights a new trend in patent litigation: end users—those who do not produce or sell patented technology but use it for their business or personal consumption—are occupying a growing role in the patent system. For example, farmers are being sued for using patented genetically-engineered seeds, and small businesses are being sued for using patented scanning technologies. The paper argues that end users are “unique players in the patent playfield” and lack the basic procedural tools that can place them on equal footing with other players.

“End users are different from small technological competitors, Professor Bernstein writes. “End users lack technological sophistication, they are often one time players and tend to become involved in the patent dispute relatively late in the life of the patent.” At the same time, her paper demonstrates that the recent patent law reform, the America Invents Act, which mostly came into force in 2012, failed to predict and is largely ill-equipped to address the new role of end users. While Professor Bernstein’s paper is partly theoretical, it is also relevant to current developments in patent litigation, arguing for the need for attorney fee shifting to place end users on a more equal footing with the traditional players in the patent playfield. As she comments in the paper, “Fee shifting in patent litigation is at the center of debate this year in both Congress and the Supreme Court. A surge of Congressional bills propose different versions of fee shifting, and the Supreme Court has granted certiorariin two cases to clarify fee-shifting issues. “But,” Professor Bernstein concluded, “no one has addressed the importance of fee shifting for end users.”

Professor Bernstein’s paper, the first in a series of papers about end users, is forthcoming in the Boston College Law Review in 2014.

- Contributed by Corina De Lucia ‘14