Law Commons^™

European Community Law And Institutions In Perspective: Text, Cases And Readings, Josef Rohlik

Georgia Journal of International & Comparative Law

No abstract provided.

The Time Is Nigh: A Proposal For An International Patent System, Ben Mceniery

Chicago-Kent Journal of Intellectual Property

The world is slowly but inexorably moving towards adopting an integrated global patent system. It is inevitable that the present inefficient and splintered system in which patents must be separately obtained and enforced in each nation state must evolve to make obtaining global patent protection an achievable proposition for those other than just the wealthiest multinational corporations. The global patent system proposed in this article allows a patent applicant to file a single patent application in an international patent office, have that patent application examined in accordance with a uniform patentability standard, and results in the grant of a unitary …

Neglected Diseases: How Intellectual Property Can Incentivize New Treatment, Vinita Banthia

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Thoughts On The Relationship Between The Supreme Court And The Federal Circuit, Timothy B. Dyk

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Abuse Of Supreme Court Precedent: The "Historic Kinship", David W. Barnes

Chicago-Kent Journal of Intellectual Property

In Sony Corp. of America v. Universal City Studios, the Supreme Court applied a doctrine formulated for patent law to an issue arising in copyright law. The Court supplied a rationale for doing so by identifying a “historic kinship” between patent and copyright law based on fundamental goals of intellectual property law. The Court considered how the rationale applied in the particular factual context involved. The Court cautioned that the propriety of extending a doctrine developed in one intellectual property regime to another depends on the particular legal issue involved. Despite the importance of ensuring that new rules are …

Why The Supreme Court Should Use Ariosa V. Sequenom To Provide Further Guidance On U.S.C. § 101 Patent Eligibility, Naira Rezende Simmons

Chicago-Kent Journal of Intellectual Property

35 U.S.C. § 101 provides patent protection to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court previously concluded that Congress intended patentable subject matter to “include anything under the sun that is made by man.” Nevertheless, over the past five years the U.S. Supreme Court has made a series of decisions that narrowed the scope of subject matter eligible for patent protection.

In Mayo the court held that correlations between the concentrations of a metabolite in the blood and the concentration of a drug are not patent …

Puzzles Of The Zero-Rate Royalty, Eli Greenbaum

Fordham Intellectual Property, Media and Entertainment Law Journal

Patentees increasingly exploit their intellectual property rights through royalty-free licensing arrangements. Even though patentees using such frameworks forfeit their right to trade patents for monetary gain, royalty-free arrangements can be used to pursue other significant commercial and collaborative interests. This Article argues that modern royalty-free structures generate tension between various otherwise well-accepted doctrines of patent remedies law that were designed for more traditional licensing models. As such, current doctrines provide conflicting frameworks for evaluating the royalty-free arrangement, and offer inconsistent approaches for determining the appropriate remedy for their breach. This discord grows out of courts’ inadequate attention to non-monetary consideration …

Photocopies, Patents, And Knowledge Transfer: "The Uneasy Case" Of Justice Breyer's Patentable Subject Matter Jurisprudence, Dmitry Karshtedt

Vanderbilt Law Review

One aspect of Justice Stephen Breyer's discomfort with patents, as expressed in his opinion for the Supreme Court in Mayo v. Prometheus and his dissent from the order dismissing certiorari in LabCorp v. Metabolite, is strikingly similar to one of his critiques of copyright law in The Uneasy Case for Copyright, a well-known article he wrote as Professor Breyer more than forty-five years ago. In The Uneasy Case, Breyer argued that the burdens on duplication of technical articles imposed by copyright law restrict the flow of information and prevent scientists from enjoying spillover benefits of published research. His patent opinions …

(In)Valid Patents, Paul R. Gugliuzza

Notre Dame Law Review

Increasingly, accused infringers challenge a patent’s validity in two different forums: in litigation in federal court and in post-issuance review at the Patent and Trademark Office (PTO). These parallel proceedings have produced conflicting and controversial results. For example, in one recent case, a district court rejected a challenge to a patent’s validity and awarded millions of dollars in damages for infringement. The Federal Circuit initially affirmed those rulings, ending the litigation over the patent’s validity. In a subsequent appeal about royalties owed by the infringer, however, the Federal Circuit vacated the entire judgment—including the validity ruling and damages award it …

Resolving The Divided Patent Infringement Dilemma, Nathanial Grow

University of Michigan Journal of Law Reform

This Article considers cases of divided patent infringement: those in which two or more parties collectively perform all the steps of a patented claim, but where no single party acting alone has completed the entire patented invention. Despite the increasing frequency with which such cases appear to be arising, courts have struggled to equitably resolve these lawsuits under the constraints of the existing statutory framework because of the competing policy concerns they present. On the one hand, any standard that holds two or more parties strictly liable whenever their combined actions infringe a patent risks imposing liability on countless seemingly …

Curated Innovation, Lital Helman

Akron Law Review

The regulation of innovation-intensive industries is a critical issue for both innovation policy and regulation. In this Article, I propose a new framework to the way innovation-intensive industries are regulated.

My proposal is a four-pronged model, which I term “Curated Innovation.” In the first stage, policymakers would set a standard that would represent the outcome the regulation seeks to achieve. Second, policymakers would launch a competition, where innovative technologies or methods would race to meet the standard that was defined. Third, policymakers would select the methods or technologies that come closest to meeting the standard and create an incentive in …

Are Universities Special?, Shubha Ghosh

Akron Law Review

Universities offer a space for development of ideas, exploration of basic research, and productive outlets for creation and invention. As such, they are key to the innovation environment within which intellectual property laws operate. Although scholarship has focused on universities as institutions counter to other institutions like markets and government, less attention has been paid to universities as organizations, a site for governance through detailed rules and commonly understood norms. When understood as an organization, universities display three overlapping, but distinct models: one of pure research, one of pure commercialization, and one of public purpose. These three models together define …

Intellectual Property Revenue Sharing As A Problem For University Technology Transfer, Jennifer Carter-Johnson

Akron Law Review

The Bayh-Dole Act, often credited with the explosion of university technology transfer, requires universities to incentivize invention disclosure by sharing the royalties generated by patent licensing with inventors. Many scholars have debated the effectiveness of university implementation of this requirement, and, indeed, the low rate of invention disclosure by academic researchers to the university is often a bottleneck in the technology-transfer process.

Unfortunately, most discussions focusing on inventor compliance with Bayh-Dole Act requirements have explored faculty-inventor motivations. However, in most cases, university inventions are joint products of a group of university members including not only faculty but also post-doctoral researchers …

University Ip: The University As Coordinator Of The Team Production Process, Samuel Estreicher, Kristina A. Yost

Indiana Law Journal

This Article focuses on intellectual property (IP) issues in the university setting. Often, universities require faculty who have been hired in whole or in part to invent to assign inventions created within the scope of their employment to the university. In addition, the most effective way to secure compliance with the Bayh-Dole Act, which deals with ownership of inventions involving federally funded research, is for the university to take title to such inventions. Failure to specify who has title can result in title passing to the government. Once the university asserts ownership, it then decides whether to process a patent …

3d Printing And Healthcare: Will Laws, Lawyers, And Companies Stand In The Way Of Patient Care?, Evan R. Youngstrom

Pace Intellectual Property, Sports & Entertainment Law Forum

Today, our society is on a precipice of significant advancement in healthcare because 3D printing will usher in the next generation of medicine. The next generation will be driven by customization, which will allow doctors to replace limbs and individualize drugs. However, the next generation will be without large pharmaceutical companies and their justifications for strong intellectual property rights. However, the current patent system (which is underpinned by a social tradeoff made from property incentives) is not flexible enough to cope with 3D printing’s rapid development. Very soon, the social tradeoff will no longer benefit society, so it must be …

Book Review: Foreign Commerce And The Antitrust Laws. By Wilbur L. Fugate. Boston: Little, Brown & Co., 2d Ed. 1973. Pp Xxv, 491. $35.00., Paul P. Harbrecht

Georgia Journal of International & Comparative Law

No abstract provided.

P, Mariana Lopez-Galdos

Chicago-Kent Journal of Intellectual Property

The paper tracks recent developments in the United States and EU competition systems with regard to the different policy tools used to address matters arising from the intersection of IP and competition policies. The analysis compares the enforcement and advocacy efforts carried out by the different antitrust agencies in the United States and EU.

This Article first traces how different authorities with antitrust mandates in the United States have dealt with the issue of balancing the rights of standard essential patent holders with innovation driven public welfare. This article then looks at how the antitrust authorities are using their antitrust …

Putting The Pieces Together: A Proposal For A Contributory Infringement Provision In Patent Law, Xianzhi Quan

Chicago-Kent Journal of Intellectual Property

Among the top five countries who have filed the most patent applications under the Patent Cooperation Treaty (“PCT”) in 2015, China is the only country that has no provision regarding contributory patent infringement. As a result, in patent cases related to contributory infringement, different courts have adopted different criteria to determine whether contributory patent infringement is present. This has resulted in many problems in China, causing confusion and conflicts in understanding among patent holders and the public.

With the increase of patent infringement cases in China, legislation on the standard of contributory patent infringement is imminent. This Article puts forward …

Improving Patent Quality Through Post-Grant Claim Amendments: A Comparison Of European Opposition Proceedings And U.S. Post-Grant Proceedings, Jennifer Turchyn

Michigan Law Review

Congress enacted the Leahy-Smith America Invents Act to encourage innovation, strengthen U.S. patents, and achieve greater uniformity with foreign patent systems. The America Invents Act introduced two new post-grant patent validity proceedings: inter partes review and post-grant review. The new U.S. proceedings are similar to European opposition proceedings, but there are significant differences in the extent of the patent owner’s ability to amend claims, the patent’s claim construction, the patent owner’s evidentiary burden, and the procedural requirements. The U.S. proceedings result in a very limited opportunity for amendment and a high percentage of invalidated patents. In contrast, European opposition proceedings …

The Aia Is Not A Taking: A Response To Dolin & Manta, Camilla A. Hrdy, Ben Picozzi

Washington and Lee Law Review Online

No abstract provided.

What Jury? A New Approach To Obviousness After Ksr V. Teleflex, Rishi S. Suthar

Journal of Intellectual Property Law

No abstract provided.

Medical Process Patents: Can We Live Without Them? Should We?, Lara L. Douglass

Journal of Intellectual Property Law

No abstract provided.

Metaphors Of Infringement And Equivalence: The Solution Of Our Problems, Robert M. Meeks

Journal of Intellectual Property Law

No abstract provided.

Placebo Patents: Creating Stronger Intellectual Property Protection For Pharmaceuticals Approved By The U.S. Food & Drug Administration, Sarah Renee Craig

Journal of Intellectual Property Law

No abstract provided.

History, Trips, And Common Sense: Curbing The Counterfeit Drug Market In Sub-Saharan Africa, Hannah Elizabeth Jarrells

Georgia Journal of International & Comparative Law

No abstract provided.

Copy Game For High Score: The First Video Game Lawsuit, William K. Ford

Journal of Intellectual Property Law

No abstract provided.

Limiting Downstream Effects Of Patent Licensing Activity In Software And Electronics: An Argument For Alienability Of Patent Licenses To Licensees' Business Successors, Anna A. Onley

Chicago-Kent Law Review

Frustrating the ability to transfer ownership is costly, and non-creative entities (NCEs) may contribute to rising costs of innovation by contractually requiring their licensees to seek NCE consent to subsequent license transfers. One possible way of gradually limiting the reach of NCEs in this area is to expand the doctrine of patent misuse—which supports the unenforceability defense to patent infringement—to construe restraints on alienation of patent licenses as patent misuse. This narrowly tailored approach, discussed in this Note, minimizes the risk of negative impact on the patent system because it avoids the question of patent invalidity and does not seek …

Alice Was No Rabbit Hole: Why Software Inventors Should Be Neither Surprised, Nor Alarmed, Sherman Helenese

Utah Law Review

Trade secrets offer an alternative to patent - ineligible innovations and to the problems and perils of protecting, defending and enforcing patents. Although there is currently limited trade secret legislation on the national level, nearly all states have adopted, with little substantive variation, the Uniform Trade Secrets Act. Unlike patent - eligibility requirements that precluded software in Gottschalk, Diehr, Alice, and Tenon from patent protection, no trade secret is automatically deemed out of scope. Trade secrets encompass anything of value, so long as it is not generally known and reasonable steps are taken, such as the use …

The Interconnections Between Entrepreneurship, Science, And The Patent System, Amy Landers

Utah Law Review

This Article considers several related points about the recent changes to the patent system and the opportunities for entrepreneurship. The concern about the adverse effect of the recent changes to patent law on innovation may be overstated. As a practicalmatter, the concept that patents are a necessary input to innovation is built on a model that does not account for the complex relationship between this legal system, science, and innovation. Although it can be expected that there may be some adverse impacts from these decisions, this trend opens up the opportunity for entrepreneurship. By releasing more foundational information into the …

Plugging The Rabbit Hole: The Supreme Court's Decision In Alice, Steven Swan

Utah Law Review

The two-step analysis in Mayo is insufficient to objectively analyze and make consistent determinations on patent eligibility. The effects of Alice are prime exhibits of this conclusion. Uncertainty and confusion in the realm of patents and software technology have risen to such a level that there is a telling impact on the economy and perhaps far greater devastation to the economy on the horizon. At the same time, the patent prosecution process has become increasingly expensive and difficult for both the client and drafting attorney provided the sheer number of Section rejections that are challenging to overcome. Consequently, this Note …