Milestone Contributions to Intellectual Property Law
Professor Irving Kayton founded Patent Resources Institute, Inc. (PRI) and Patent Resources
Group, Inc. (PRG) in 1969. PRG offers publications and courses in all aspects of intellectual
property for lawyers, scientists, engineers, and executives at all levels of experience.
Approximately 3,000 professionals attend those courses each year at locations throughout the
United States. PRG is located in Charlottesville, Virginia. Of all the currently
active patent practitioners in the United States, approximately 75% have attended one or
more of the scores of courses in all aspects of patent law that Professor Kayton has taught in
law schools and various continuing legal education forums throughout the U.S. since 1964.
Dr. Kayton is Professor of Law Emeritus, George Mason University, Arlington, Virginia.
From 1964 to 1988, he was a Professor of Law at The George Washington University Law
Center in Washington, D.C., where he originated and was the Director of the Patent and
Intellectual Property Law Program and also of the Computers-in-Law Institute. Dr. Kayton
left the G.W.U. faculty to become the George Mason University Foundation Professor of
Intellectual Property Law at the George Mason School of Law. He joined the George Mason
faculty in January, 1988, and instituted and directed both the Juris Doctor Specialty Track
in Patent Law and the Complex Technology Litigation Institute at George Mason until
1992.
From 1970 through 1985, he was retained in approximately 100 major patent infringement
litigations as a patent expert witness or consultant. Of those litigations, 24 went through
trial and several of them on to appeal. Professor Kayton’s clients prevailed in 20 of those 24
cases. The technologies in the cases in which he has been retained cover a wide spectrum,
including analytical instrumentation, sophisticated computer and electronic systems and
components, mechanical systems and devices, as well as organic and inorganic compounds
and processes. He wrote a seminal article on the protection of biotechnology inventions
listed in the publications section below.
In 1990, Professor Kayton was appointed a special master by U.S. District Court Judge
Harold A. Ackerman of the District of New Jersey, in a major patent infringement suit
involving multiple patents and more than 50 major defendants. During a period covering
12 months, Professor Kayton presided over the pretrial proceedings in their entirety and
conducted a trial with respect to one of the equitable defenses, by the end of which time all
the parties to the litigation had settled at various points in the proceeding. Refac Int'l Ltd. v.
Matsushita Elec. Corp. of America, et al. Civ. A. Nos. 87-4674, 88-2586, 88-4607.
Education
His formal degrees are:
- Doctor of Juridical Science (J.S.D.), Columbia University, 1967
- Master of Laws (LL.M.), Columbia University, 1964
- Juris Doctor (J.D.), New York University, 1957
- B.A., in mathematics (with distinction), Cornell University, 1951.
In addition to the university training indicated above, Professor Kayton completed a year of
graduate study in electronic communications engineering, conducted by New York
University faculty, while he was a member of the Technical Staff of Bell Telephone
Laboratories (1953-54).
Part of his doctoral dissertational work at the Columbia University School of Law (1963-64)
included the invention of a computer process for automatically generating natural language
thesauri, which in turn are used in systems for computer searching and retrieval of case law.
Honors
Professor Kayton is a member of Phi Beta Kappa (elected in his junior year) and Phi Kappa
Phi. He was the John Jay Fellow at Columbia while a doctoral candidate. From 1975 to
1978, Professor Kayton was a member of the Board of Managers of the American Intellectual
Property Law Association. In 1973, he chaired the education committee of the Licensing
Executives Society. From 1978 to 1981, he was a member of the Steering Committee of the
Patent, Trademark and Copyright Section of the District of Columbia Bar.
Professor Kayton's published works have often been cited with favor by the U.S. Court of
Appeals for the Federal Circuit, most of the regional U.S. Courts of Appeals, the former U.S.
Court of Customs & Patent Appeals and U.S. Court of Claims, and numerous U.S. District
Courts.
Legislative Testimony and Addresses
Professor Kayton has addressed and testified extensively before official audiences and groups
including Senate committees, the Federal Judiciary, the U.S. Patent and Trademark Office,
and the intellectual property section of the Max Planck Institute in Munich.
Publications and Treatises
He is the editor and principal co-author of the multi-volume treatise, Patent Practice,
originally published in 1976 and now in its Eighth Edition, Release 2 (2006). Professor Kayton was
co-author (until 1973) of the eight-volume treatise, Patent Law Perspectives - Current Service
(Matthew Bender).
A representative (but not exhaustive) list of other formal articles and books in the patent,
copyright, and computer law fields, which he has authored, co-authored or edited, are set
forth below.
- Brand & Generic Pharmaceutical Patent Term Extension Litigations (with Longfellow)
(PRG and Patent Term Online 2006).
- Patent Law Guide for Inventors, Investors, Paralegals, and Non-Patent Lawyers
(with
Gardner) (PRI 2005).
- Craft, Draft and Prosecute Patents That Win at the Federal Circuit (with Gardner and
Rainey) (PRG 2004).
- Miscalculated Patent Term Adjustment Consequences (PRI 2003).
- Patent Term Guarantee & Pre-Issuance Publication (with Gardner) (PRG 2001).
- Crafting and Drafting Winning Patents (with Gardner and Lazar) (PRG 1999).
- Practice Under GATT's Uruguay Round Agreements Act (with Burchfiel and Irving)
(PRG 1995).
- Patent Infringement Damages & Accounting (with Myers), 4th Ed. (PRI 1990).
- Electronics & Computer Patent & Copyright Practice (Ed.), 2nd Ed. (PRI 1990).
- Copyright in Living Genetically Engineered Works, 50 Geo. Wash. L. Rev. 191 (1982).
- Kayton on Patents (PRI, 1979, 1983, 1985).
- "Nonobviousness of the Novel Invention - 35 U.S.C. §103," in Nonobviousness: The
Standard of Patentability in the United States (B.N.A. 1977).
- Fraud in Patent Procurement (with Lynch & Stern), 43 Geo. Wash. L. Rev. 1 (1974).
- Patent Property: Cases and Readings (PRG, 1968, 1972, 1974).
- Status of Proprietary Rights in the United States for Computer Program Listings and Processes: App. 2, June 1971, Pat. L. Persp. (Matthew Bender & Co.).
- The Crisis of Law in Patents, Parts I & II (Patent Resources Group, 1970).
- "Patent Protectability of Software: Background and Current Law," Law of Software
1968 Proceedings, B-25, reported in 1969 ABA Jurimetrics J. 127.
- Patent Law (1971/72); (1970/71); (1969/70); (1968); (1967); each annual survey
article appears under "Patents" in The Annual Survey of American Law (New
York University).
- Patent Law in Perspective, 36 Geo. Wash. L. Rev. 545 (1968).
- This Year (1966) in Patent Law, 35 Geo. Wash. L. Rev. (1967).
- The Computer as a Legal Judge, IEEE Int'l Convention Record 71 (Mar. 1967).
- Retrieving Case Law by Computer - Fact, Fiction and Future, 35 Geo. Wash.
L. Rev. 1 (1966).
- Patents and Technical Data (Govt. Contracts Program, Geo. Wash. Univ. 1965).
- Can Jurimetrics Be of Value to Jurisprudence?, 33 Geo. Wash. L. Rev. 287 (1964).
Pre-Academic Legal and Technical Experience
Prior to entering teaching in 1964 at The George Washington University Law School,
Professor Kayton had a broad variety of patent and technological experience beginning in
1951. After having served as Radar Officer and Navigator in the U.S. Navy (1951-53),
Professor Kayton started his civilian career in 1953 as a digital computer logic circuit
designer for Bell Telephone Laboratories. He worked as a Patent Attorney from 1954 to
1963 for Bell Telephone Laboratories, General Precision, Inc., and the General Electric
Company. His work, from a technological viewpoint, included most aspects of the digital
computer field (hardware, logic design, and software) as well as many related technical areas
such as microwave components and systems, digital control systems and control processes.
He wrote the patents on two of the electronic communications circuit inventions that were
incorporated in the first communication satellite, Telstar I.
From a legal viewpoint, his practice has included all aspects of patent and know-how
procurement, licensing, and litigation.