Law Commons^™

Legislative Responses To Patent Assertion Entities, David O. Taylor

Faculty Journal Articles and Book Chapters

While the existence of patent assertion entities is not new, in recent years they have proliferated, spawning debate concerning their impact on the patent system and, more broadly, on technological innovation. Despite the fear that they instill in their targets — or perhaps because of it — patent assertion entities arguably serve a beneficial purpose in the patent system. Theoretically they should be able to help individual inventors and small businesses, in particular, obtain a return on their investment in research and development. To the extent patent assertion entities assert patent claims that should be held invalid, not infringed, or …

China's Ip Protection Minefield: Separating Fact From Fiction, David Llewelyn, Peter J. Williamson

Research Collection Yong Pung How School Of Law

China is the key emerging market for international technology companies. Smart, well-informed IP and business strategies are required if companies are to make the most of what the country has to offer.

Patent Stewardship, Choice Of Law, And Weighing Competing Interests, David O. Taylor

Faculty Journal Articles and Book Chapters

Xuan-Thao Nguyen’s recent article, "In the Name of Patent Stewardship: The Federal Circuit’s Overreach into Commercial Law", is important for at least two potential reasons that Nguyen herself highlights. First, to the extent that the Federal Circuit’s decisions related to commercial law differ from state courts’ decisions related to commercial law, it might call into question the Federal Circuit’s competency with respect to commercial law. And, second, it certainly highlights something that practitioners might need to know to adapt their advice and strategies for reaching their clients’ desired ends. But Nguyen’s critique is important for a third reason. Assuming the …

Patent Law Challenges For The Internet Of Things, W. Keith Robinson

Faculty Journal Articles and Book Chapters

In the near future, emerging technologies will allow billions of everyday devices to be connected via the Internet. This increasingly popular phenomenon is referred to as the Internet of Things (“IoT”). The IoT is broadly defined as technology that allows everyday devices to (1) become “smart” and (2) communicate with other smart devices. Estimates indicate that the market for smart devices, such as wearables, will grow to $70 billion dollars in the next ten years. Like many other emerging technologies, the entrepreneurs and companies developing these applications will seek patent protection for their inventions. In turn, the current U.S. patent …

Trademark Extortion Revisited: A Response To Vogel And Schachter, Kenneth L. Port

Faculty Scholarship

Trademark bullying (a.k.a. trademark extortion) is a very controversial notion in trademark litigation in the United States. There, for sure, is a lot of illegitimate trademark infringement happening. Anecdotally, we also know that trademark holders often overstep in the assertion of their otherwise legitimate rights. For the first time, this article documents how large a problem trademark bullying is and how often it happens. Trademark bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of …

Where Have All The Patent Lawyers Gone? Long Time Passing..., Kenneth L. Port, Molly R. Littman, Lucas Hjelle

Faculty Scholarship

This article pursues two distinct, but related hypotheses. First, as total LSAT takers decline, we expect to see a decline in the number of new attorneys admitted to the patent bar. Second, as the number of new patent attorneys shrinks and the number of women pursuing engineering degrees increases, we expect that the patent bar will become more female.

In order to test these hypotheses, we gathered and collated data from the Law School Admission Counsel (LSAC) regarding students taking the Law School Admissions Test (LSAT), the United States Patent and Trademark Office (USPTO), the Society of Women Engineers (SWE), …

Derivative Works 2.0: Reconsidering Transformative Use In The Age Of Crowdsourced Creation, Jacqueline D. Lipton, John Tehranian

Articles

Apple invites us to “Rip. Mix. Burn.” while Sony exhorts us to “make.believe.” Digital service providers enable us to create new forms of derivative work — work based substantially on one or more preexisting works. But can we, in a carefree and creative spirit, remix music, movies, and television shows without fear of copyright infringement liability? Despite the exponential growth of remixing technologies, content holders continue to benefit from the vagaries of copyright law. There are no clear principles to determine whether any given remix will infringe one or more copyrights. Thus, rights holders can easily and plausibly threaten infringement …

Understanding Rights Reversion: When, Why, & How To Regain Copyright And Make Your Book More Available, Nicole Cabrera, Jordyn Ostroff, Brianna Schofield

Copyright, Fair Use, Scholarly Communication, etc.

Are you an author who would like to increase your book’s availability? Have you already entered into a publishing agreement for your book? If you answered “yes” to both of these questions, then read on! This guide addresses the needs of authors who wish to make their works available to a wider audience in ways that may be prohibited by the terms of their existing publishing agreements.

For example, this guide will help authors who want to do things like: • Bring their out-of-print books back into print • Publish digital versions of their books • Make their books openly …

The Oligopoly Of Academic Publishers In The Digital Era, Vincent Larivière, Stefanie Haustein, Philippe Mongeon

Copyright, Fair Use, Scholarly Communication, etc.

The consolidation of the scientific publishing industry has been the topic of much debate within and outside the scientific community, especially in relation to major publishers’ high profit margins. However, the share of scientific output published in the journals of these major publishers, as well as its evolution over time and across various disciplines, has not yet been analyzed. This paper provides such analysis, based on 45 million documents indexed in the Web of Science over the period 1973-2013. It shows that in both natural and medical sciences (NMS) and social sciences and humanities (SSH), Reed-Elsevier, Wiley Blackwell, Springer, and …

The Mcdonaldization Of Academic Libraries?, Brian Quinn

Copyright, Fair Use, Scholarly Communication, etc.

George Ritzer, a sociologist at the University of Maryland, has proposed an influential thesis that suggests that many aspects of the fast food industry are making their way into other areas of society. This article explores whether his thesis, known as the McDonaldization thesis, is applicable to academic libraries. Specifically, it seeks to determine to what extent academic libraries may be considered McDonaldized, and if so, what effect McDonaldization may be having on them. It also investigates some possible alternatives to McDonaldization, and their implications for academic libraries.

The Strategic And Discursive Contributions Of The Max Planck Principles For Intellectual Property Provisions In Bilateral And Regional Agreements, Peter K. Yu

Faculty Scholarship

In June 2013, the Max Planck Institute for Intellectual Property and Competition Law released its Principles for Intellectual Property Provisions in Bilateral and Regional Agreements. Drafted by the Institute’s directors and research fellows in collaboration with a team of outside experts, this document seeks to facilitate the development of "international rules and procedures that can achieve a better, mutually advantageous and balanced regulation of international [intellectual property]."

This essay discusses the important contributions the Principles have made at both the strategic and discursive levels. It situates these two sets of contributions in the context of the ongoing challenges confronting the …

Mapping The Interface Between Human Rights And Intellectual Property, Laurence R. Helfer

Faculty Scholarship

No abstract provided.

Pharmaceutical Patents And The Human Right To Health The Contested Evolution Of The Transnational Legal Order On Access To Medicines, Laurence R. Helfer

Faculty Scholarship

Disputes over the regulation of access to medicines are occurring in multiple transnational, national, and local venues. Competing groups of states and non-state actors shift horizontally and vertically among these forums in an effort to develop competing legal rules over the propriety of granting intellectual property (IP) protection to newly developed life-saving drugs. This chapter applies the framework of Transnational Legal Orders (Terence C. Halliday & Gregory Shaffer, eds. 2015) to explain the origins of these controversies and their consequences. The chapter argues that the current state of affairs arose from a clash between two previously discrete TLOs—one relating to …

When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai

Faculty Scholarship

Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.

This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history …

Brief Of Professors Peter S. Menell, J. Jonas Anderson, And Arti K. Rai As Amici Curiae In Support Of Neither Party, J. Jonas Anderson, Peter S. Menell, Arti K. Rai

Faculty Scholarship

No abstract provided.

Open Legal Educational Materials: The Frequently Asked Questions, James Boyle, Jennifer Jenkins

Faculty Scholarship

There has been considerable discussion in academic circles about the possibility of moving toward open educational materials—those which may be shared, copied and altered freely, without permission or fee. Legal education is particularly ripe for such a transition, as many of the source materials—including federal statutes and cases—are in the public domain. In this article, we discuss our experience producing an open casebook and statutory supplement on Intellectual Property Law, and answer many of the frequently asked questions about the project. Obviously, open coursebooks are less expensive and more convenient for students. But we found that they also offer pedagogical …

Does The U.S. Patent And Trademark Office Grant Too Many Bad Patents?: Evidence From A Quasi-Experiment, Michael D. Frakes, Melissa F. Wasserman

Faculty Scholarship

Many believe the root cause of the patent system’s dysfunction is that the U.S. Patent and Trademark Office (PTO or Agency) is issuing too many invalid patents that unnecessarily drain consumer welfare. Concerns regarding the Agency’s overgranting tendencies have recently spurred the Supreme Court to take a renewed interest in substantive patent law and have driven Congress to enact the first major patent reform act in over sixty years. Policymakers, however, have been modifying the system in an effort to increase patent quality in the dark. As there exists little to no compelling empirical evidence the PTO is actually overgranting …

A Mask That Eats Into The Face: Images And The Right Of Publicity, Rebecca Tushnet

Georgetown Law Faculty Publications and Other Works

In their eagerness to reward celebrities for the power of their “images,” and to prevent other people from exploiting those images, courts have allowed the right of publicity to distort the First Amendment. The power of the visual image has allowed courts to create an inconsistent, overly expansive regime that would be easily understood as constitutionally unacceptable were the same rules applied to written words as to drawings and video games. The intersection of a conceptually unbounded right with a category of objects that courts do not handle well has created deep inconsistencies and biases in the treatment of visual …

Patent Confusion, Jennifer L. Behrens

Faculty Scholarship

No abstract provided.

Patent Boundaries, Elizabeth I. Winston

Scholarly Articles

A patent grants a limited right to exclude others from practicing an invention within the United States, its territories and possessions. Much has been written about the limits of the patent grant and how to determine what the protected invention may be. At the same time, scholars have not systemically analyzed the geographic limitations of United States patents, a critical component of a patentee’s limited right. A patent’s geographical scope is not simple to discern. Commentators have neither analyzed the patent boundaries collectively nor delineated the scope of patent sovereignty on land, in the air and at sea. Technology has …

Institutionalizing The Uspto Law School Clinic Certification Program For Transactional Law Clinics, Jennifer S. Fan

Articles

With 188 transactional law clinics nationwide and the United States Patent and Trademark Office (“USPTO”) Law School Clinic Certification Program (“Program”) recently established as a statutory program of the USPTO, this Article argues that every transactional clinic that works on trademark and patent applications should apply to become part of the Program. In satisfying the participation requirements of the Program, transactional law clinics will usher in a new, uniform way to educate aspiring intellectual property attorneys. As a result, the law students will not only be “practice ready,” but also more effective attorneys once they are in practice. Participating in …

In The Stewardship Of Business Model Innovation, Robert W. Gomulkiewicz

Articles

Patent law scholars often criticize the Federal Circuit because they think it favors patentees. The Supreme Court has reinforced this scholarly critique by taking an usually large number of patent cases in recent years, often reversing the Federal Circuit and admonishing it to avoid patent law exceptionalism.

The Federal Circuit’s perceived patent law exceptionalism motivated Professor Xuan-Thao Nguyen to write her article In the Name of Patent Stewardship: The Federal Circuit’s Overreach into Commercial Law. Professor Nguyen’s concerns about damage to commercial law are not trifles. When it comes to the stewardship of our information economy, the laws that …

Whether Rejection Of A Trademark License Agreement Terminates The Licensee's Rights To Use The Trademark, Crystal Lawson

Bankruptcy Research Library

(Excerpt)

Section 365(a) of the Bankruptcy Code sets forth the basic power of a trustee in bankruptcy or a debtor in possession to assume or reject an executory contract. A debtor's ability to assume or reject an executory contract allows a debtor to keep favorable contracts and to discard burdensome contracts, subject to the bankruptcy court’s approval. The bankruptcy court will apply a two-part test to determine whether assumption or rejection should be allowed. First the court will determine whether the contract is executory. If the court determines that the contract is executory, the court will then determine whether assumption …

The Dtsa: The Litigator’S Full-Employments Act, Sharon Sandeen

Faculty Scholarship

Civil litigation is expensive, both for the party bringing suit and the party that must defend against such claims. For a variety of reasons, not the least of which are the usual requests for preliminary relief and protective orders, trade secret litigation is particularly expensive. These costs can have a crippling effect on small businesses and start-up companies that are accused of trade secret misappropriation, often resulting in litigation expenses that exceed the alleged harm to the plaintiff. Such litigation is particularly costly and unjust in cases where the plaintiff asserts rights that, due to common misunderstandings about the limited …

Revisiting Park ‘N Fly: In Pursuit Of Constraints On Trademark Bullies, Kenneth L. Port

Faculty Scholarship

The Supreme Court has been inextricably constraining the trademark right in the last 15 years. The Court first embarked in a wholesale expansion of the trademark right and now the Court is engaged in an effort to rein it back in.

The expansion started in 1985 with Park ‘N Fly v. Dollar Park & Fly. The Court there held that a descriptive and otherwise unenforceable trademark is made enforceable and the appropriate subject of an offensive action to enjoin a competing use if it is incontestable. The Court overruled Park ‘N Fly by implication with KP Permanent Makeup v. Lastings. …

Here Come The Trade Secret Trolls, David S. Levine, Sharon Sandeen

Faculty Scholarship

Within the past few years, the U.S. federal government has been forced to confront the massive but hard-to-quantify problem of foreign and state-sponsored cyberespionage against U.S. corporations, from Boeing to small technology start-ups, and (as of this writing) perhaps Sony Pictures Entertainment. As part of that effort, Congress has taken up the Defend Trade Secrets Act and the Trade Secret Protection Act, which would create a private cause of action under the federal Economic Espionage Act. This Article addresses the possibility of introducing trolling behavior — using litigation as a means to extract settlement payments from unsuspecting defendants — to …

In The Name Of Patent Stewardship: The Federal Circuit’S Overreach In Commercial Law, Xuan-Thao Nguyen

Articles

While the U.S. Court of Appeals for the Federal Circuit has admirably commandeered its stewardship of patent law-Congress bestowed the Federal Circuit with exclusive jurisdiction over patent appeals since 1982-the court has unabashedly extended its reach, unwelcomed, into commercial law. Camouflaged in the name of patent stewardship, the Federal Circuit's foray into commercial law has yielded unexpected and unjustifiable results. This Article argues that, paradoxically, to maintain its stewardship of patent law, the Federal Circuit should not invoke patent law to rationalize its decisions concerning commercial law, which have dramatically altered established commercial law. This encroachment into commercial law, which …

Financing Innovation: Legal Development Of Intellectual Property As Security In Financing, 1845–2014, Xuan-Thao Nguyen

Articles

There is a need for both traditional and online lenders to appreciate the intellectual property assets held by small businesses. The intellectual property assets should be included in the analytics in assessing the overall health of a business seeking a loan or a line of credit for its new innovative product, idea, or vision. The Article ends with a brief conclusion that in order to maintain the United States’ innovative edge, attention to the access to financing by small businesses must be at the center of the discussion, and intellectual property must be recognized as part of that center.

The Romantic Author And The Romance Writer: Resisting Gendered Concepts Of Creativity, Rebecca Tushnet

Georgetown Law Faculty Publications and Other Works

Dominant narratives of creativity regularly expect female-associated forms of creativity to be provisioned naturally without need for the economic incentives provided by exclusive rights, just like housework and childcare. Even as the concept of Romantic authorship has come under sustained analytic assault, its challengers often look elsewhere–to the kinds of creativity in which men are more likely to participate–to find models of situated, always-influenced authorship. In this chapter, I examine one variant of the problem, in which certain arguments about copyright discount the value of forms that are predominantly produced and enjoyed by women. But creative works in these oft-denigrated …

Framing The Question, "Who Governs The Internet?", Robert J. Domanski

Publications and Research

There remains a widespread perception among both the public and elements of academia that the Internet is “ungovernable”. However, this idea, as well as the notion that the Internet has become some type of cyber-libertarian utopia, is wholly inaccurate. Governments may certainly encounter tremendous difficulty in attempting to regulate the Internet, but numerous types of authority have nevertheless become pervasive. So who, then, governs the Internet? This book will contend that the Internet is, in fact, being governed, that it is being governed by specific and identifiable networks of policy actors, and that an argument can be made as to …