Law Commons^™

A Constitutional Idea-Expression Doctrine: Qualifying Congress’ Commerce Power When Protecting Intellectual Property Rights., Yavar Bathaee

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Questionable Use Of Custom In Intellectual Property, Jennifer E. Rothman

All Faculty Scholarship

The treatment of customary practices has been widely debated in many areas of the law, but there has been virtually no discussion of how custom is and should be treated in the context of intellectual property (IP). Nevertheless, customs have a profound impact on both de facto and de jure IP law. The unarticulated incorporation of custom threatens to swallow up IP law, and replace it with industry-led IP regimes that give the public and other creators more limited rights to access and use intellectual property than were envisioned by the Constitution and Congress. This article presents a powerful critique …

Post Ksr V. Teleflex: Is Anything Invented Patentable Anymore?, Adam R. Stephenson

Adam Stephenson

The Supreme Court's 2007 KSR v. Teleflex decision greatly broaded the definition of "obviousness" under 35 U.S.C. 103. The U.S. Patent and Trademark Office's expansively interpreted the case to overturn a number of key Federal Circuit cases relied heavily upon by patent practitioners. In view of the USPTO's position, can any invention be patented?

Patent Eligible Subject Matter In The Biotechnological Arts, Benjamin A. Keim

Benjamin A Keim

This paper compares the patentability of biotechnology inventions under the laws of the United States, Canada, Australia, and New Zealand. Five specific categories of biotechnology are examined: genes and DNA, microorganisms, plants and animals, human embryonic stem cells, and medical methods. The WTO-TRIPS agreement establishes the underlying framework followed by these countries. All of these counties allow patenting of genes and DNA as well as microorganisms. Plant and animal patents are allowed in all the countries except Canada. Surgical and medical methods are only patentable in the U.S. and Australia. Human embryonic cells are patentable in all jurisdictions, except for …

Bad Science In Search Of “Bad” Patents, Ron D. Katznelson

Ron D. Katznelson

This paper draws attention to fundamental deficiencies in studies that have been relied upon as authoritative sources on patent grant rate comparisons among national patent offices. The two prominent studies analyzed here had employed erroneous methods to compare patent grant rates, resulting in false high indications of such rates at the U.S. patent office compared to foreign patent offices. The three identified categories of analysis errors found in these studies were (i) the misapplication of conditional probability; (ii) miscounting invention applications; and (iii) failure to account for patent obsolescence and application attrition due to the widely differing delays among national …

Differing Shades Of Meaning, Robin C. Feldman

Robin C Feldman

The relationship between patent law and antitrust law has challenged legal minds since the emergence of antitrust law in the late 19th century. In reductionist form, the two concepts pose a natural contradiction: One encourages monopoly while the other restricts it. To avoid uncomfortable dissonance, the trend across time has been to try to harmonize patent and antitrust law. In particular, harmonization efforts in recent decades have led Congress and the courts to engage in a series of attempts, some aborted and some half-formed, to graft antitrust doctrines onto patent law. These efforts have failed to resolve the conflicts.

This …

Fixing Through Legislative Fixation: A Call For The Codification And Modernization Of The Staple Article Of Commerce Doctrine As It Applies To Copyright Law, Blake Evan Reese

Marquette Intellectual Property Law Review

Courts have misinterpreted and disagreed over how to apply relevant principles of patent law to copyright cases in an effort to strike a balance between protecting copyright holders' rights without restricting innovation. The author argues that courts have inflicted damage upon the balance of copyright's competing policies, leaving copyright owners and technology innovators facing great uncertainty. The author's Comment addresses the development of the Staple Defense and the logical reasoning supporting a new legislative proposal.

Teaching Intellectual Property As A Skills Course , Malla Pollack

Malla Pollack

Students can gain experience in practical skills in substantive courses if professors spend the time to create appropriate projects. This article demonstrates by providing reproducible projects involving non-competition agreements, trademarks/trade dress, copyright, and patent. The article also explains the how projects can be expanded and how they can be transposed between counseling and litigation settings.

This paper is part of a symposium entitled “Reflections on Legal Education: How We Teach, How They Learn".

The Impact Of Regional Trade Areas On International Intellectual Property Rights, Brian Cimbolic

Brian Cimbolic

This article seeks to explore the impact of Customs Unions and Free Trade Areas (Regional Trade Areas, or “RTAs”) on both the developing world’s intellectual property concerns and on the international trade principle of most favored nation status. By examining various RTAs such as the North American Free Trade Agreement (“NAFTA”) and the upcoming Free Trade Agreement of the Americas (the “FTAA”), along with several smaller RTAs, this paper seeks to show that RTAs are undermining the principles of the International Trade Agreements they are a supposed to be a part of by refusing to apply MFN principles and by …

Ksr V. Teleflex: The Non-Obviousness Requirement Of Patentability, John Richards, Herbert F. Schwartz, Steven L. Lee, John R. Thomas

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Intellectual Property, Free Trade Agreements And Economic Development, Anselm Kamperman Sanders

Georgia State University Law Review

No abstract provided.

The Safe Harbor Of 35 U.S.C. § 271(E)(1): The End Of Enforceable Biotechnology Patents In Drug Discovery?, Paul T. Nyffeler

University of Richmond Law Review

No abstract provided.

Patent Injunctions And The Problem Of Uniformity Cost, Michael W. Carroll

Articles in Law Reviews & Other Academic Journals

In eBay v. MercExchange, the Supreme Court correctly rejected a one-size-fits-all approach to patent injunctions. However, the Court's opinion does not fully recognize that the problem of uniformity in patent law is more general and that this problem cannot be solved through case-by-case analysis. This Essay provides a field guide for implementing eBay using functional analysis and insights from a uniformity-cost framework developed more fully in prior work. While there can be no general rule governing equitable relief in patent cases, the traditional four factor analysis for injunctive relief should lead the cases to cluster around certain patterns that often …

Patent Injunctions And The Problem Of Uniformity Cost, Michael W. Carroll

Michael W. Carroll

In eBay v. MercExchange, the Supreme Court correctly rejected a one-size-fits-all approach to patent injunctions. However, the Court's opinion does not fully recognize that the problem of uniformity in patent law is more general and that this problem cannot be solved through case-by-case analysis. This Essay provides a field guide for implementing eBay using functional analysis and insights from a uniformity-cost framework developed more fully in prior work. While there can be no general rule governing equitable relief in patent cases, the traditional four factor analysis for injunctive relief should lead the cases to cluster around certain patterns that often …

Re-Evaluating Declaratory Judgment Jurisdiction In Intellectual Property Disputes, Lorelei Ritchie De Larena

Lorelei Ritchie de Larena

The Declaratory Judgment Act of 1934 was quickly tagged by the U.S. Supreme Court as a simple procedural measure. Whether simple or procedural, the addition of the declaratory judgment option has dramatically increased the rights of would-be defendants. This is of special interest in patent law, where without the ability to initiate legal action, an alleged infringer would typically have no recourse but to either drop a lucrative business and lose a massive investment, or to languish in legal limbo while potentially accruing liability for treble damages. The option of a mirror-image lawsuit removes the patentee’s ability to unilaterally decide …

Extraterritorial Reach Of U.S. Patent Law: Has The Federal Circuit Gone Too Far?, Robert W. Pierson, Jr.

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

When Second Comes First: Correcting Patent’S Poor Secondary Incentives Through An Optional Patent Purchase System, Jordan Barry

ExpressO

As research has advanced, technologies have become more closely knit, and the relationships between them—both complementary and competitive—have become increasingly important. Unfortunately, the patent system’s use of monopoly power to reward innovators creates inefficient results by overly encouraging the development of substitute technologies and discouraging the development of complementary technologies. This paper explains how an optional patent purchase system could help ameliorate such problems and discusses the implications of such a system.

The Trademark Jurisprudence Of Judge Rich, Jeffrey M. Samuels, Linda B. Samuels

American University Law Review

For nearly forty-three years, Giles Sutherland Rich served as a member of the U.S. Court of Customs and Patent Appeals (C.C.P.A.) and its successor court, the U.S. Court of Appeals for the Federal Circuit. Judge Rich is widely regarded as one of the most influential jurists in the area of patent law—and rightfully so. Less well known is that Judge Rich also authored many significant decisions in the area of trademark law. Judge Rich’s opinions in the area of trademarks span the spectrum of trademark registrability issues and explore important issues of public policy. This Article reviews a number of …

Total Upgrade: Intellectual Property Law Reform In Russia, Sergey Budylin, Yulia Osipova

Sergey Budylin

Russia has undertaken a large-scale intellectual prop-erty (IP) law reform. The reform abolishes most of the ex-isting IP legislation and instead puts all IP issues into the new Fourth Part of the Civil Code. The new legislation was signed into force at the end of 2006, but it was made effective starting from January 1, 2008. While the new leg-islation largely restates, consolidates, and refines the exist-ing legislation, it also introduces some concepts not known to Russian law before (such as “unified technology”). Im-portantly, the new Russian IP legislation addresses issues currently being a matter of international concern (such as …

One Step Outside The Country, One Step Back From Patent Infringement, Katherine E. White

Law Faculty Research Publications

No abstract provided.

Accidental Rights, James Gibson

Law Faculty Publications

Written for the Yale Law Journal's online Pocket Part, this is a much shorter and (I hope) more accessible iteration of my earlier paper, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L.J. 882 (2007). It summarizes that paper's central point - i.e., that intellectual property entitlements are growing not just because of expansive court decisions and legislative enactments, but also because of seemingly sensible, risk-averse licensing decisions that inadvertently feed back into legal doctrine - and then explores how this phenomenon might apply to (and be manipulated by) enterprises such as Google Book Search.

The Freedom Of Information Act And Trade Secrets, Roger V. Skalbeck

Law Faculty Publications

This article details a case illustration where federal law intersects with trade secret questions, a subject normally governed by state laws.

The Proper Scope Of Patentability In International Law, Shawn J. Kolitch

Marquette Intellectual Property Law Review

Patent law encourages innovation, but the harm caused by some inventions may outweigh the benefits of disclosure. This article examines the environmental and public health consequences of patent laws around the world and argues that the patent incentive should be selectively removed to mitigate the harmful effects of granting patents without regard to the invention-specific impacts of doing so.

What Is Patentable Subject Matter? The Supreme Court Dismisses Labcorp V. Metabolite Laboratories, But The Issue Is Not Going Away, Sue Ann Mota

Marquette Intellectual Property Law Review

Patent law seeks to strike a balance regarding patentable subject matter between overprotection, which can impede the free exchange of ideas, and under-protection, which can lessen the incentive to invent. This article summarizes the Supreme Court's recent decision to dismiss Laboratory Corporation of America Holdings v. Metabolite Laboratories, Inc., passing on the opportunity to consider the issue of what constitutes patentable subject matter under the Patent Act, and the author outlines recommendations for when the issue is raise by future litigants.

Breaking The Law To Break Into The Black: Patent Infringement As A Business Strategy , Eric C. Wrzesinski

Marquette Intellectual Property Law Review

Corporations and businesses make important decisions everyday that affect their financial viability and market image. This article analyzes the phenomenon of patent infringement, considering whether firms consciously decide to infringe certain patents as a sound business strategy, or whether such cases arise spontaneously due to incomplete and careless research of prior art by infringing firms. The author considers the extent to which patent infringement may remain an effective business strategy for technology-producing firms, even when not employed willfully, due to the inadequate deterrence function of current U.S. patent laws.

Collateralizing Intellectual Property, Xuan-Thao Nguyen

Articles

This Article identifies and critiques the collateralization of intellectual property, revealing the complexity of intersecting secured transaction law, namely Article 9 of the Uniform Commercial Code, and doctrinal intellectual property laws such as patent law, copyright law, and trademark law. The inquiry challenges the silence surrounding the pervasive use of intellectual property as collateral in secured financing and suggests changes to the existing framework on secured financing law.

The Article proceeds as follows: Part II discusses the normative intellectual property rights for patents, copyrights, and trademarks and how such rights are utilized as corporate assets. Part III describes different forms …

Is Lilly Written Description Paper Tiger?: Comprehensive Assessment Of The Impact Of Eli Lilly And Its Progeny In The Courts And Pto, Christopher M. Holman

Faculty Works

In University of California v. Eli Lilly, decided by the Federal Circuit in 1997, the court established for the first time a new form of patent law's written description requirement, apparently targeted specifically at biotechnology. To this day, the conventional wisdom is that the so-called Lilly written description requirement (LWD) exists as a biotechnology-specific super-enablement requirement, substantially more stringent than the enablement requirement (the conventional standard for patentability), and standing as an impediment to effective patent protection for biotechnology inventions. My objective in writing this article was to test this conventional wisdom, by conducting a comprehensive search for all LWD …

Pto Rulemaking In The Twenty-First Century: Defining The Line Between Strategic Planning And Abuse Of Authority, Brian E. Mack

Fordham Law Review

No abstract provided.

From Infringement To Innovation: Counterfeiting And Enforcement In The Brics, J. Benjamin Bai, Keith D. Lindenbaum, Yi Qian, Cynthia Ho

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

The Emerging Bric Economies: Lessons From Intellectual Property Negotiation And Enforcement, Robert C. Bird, Daniel R. Cahoy

Northwestern Journal of Technology and Intellectual Property

No abstract provided.