Law Commons^™

Comparative Intellectual Property Protection For Marijuana: United States Vs. The European Union, Jillian Gosser

Global Business Law Review

Protecting intellectual property relating to marijuana is a complicated endeavor. The federal ban on marijuana renders trademark protection difficult at best, and patent protection, while available, still rife with complications. In Europe, the laws pose similar challenges in the protection and enforcement of marijuana related intellectual property. This Note presents a comparative law analysis of the various ways marijuana related intellectual property may be protected in the United States and Europe. Different types of intellectual property protection explored include utility patents, design patents, trademarks, plant patents, Plant Variety Protection Act coverage, and Community Plant Variety Act coverage. This Note explores …

Information Theory And Patent Documents, W. Michael Schuster

Akron Law Review

Recent scholarship has expanded the scope of analytical tools available to patent law researchers. The foundation of information theory published by Claude Shannon has been applied to textual analysis to determine the similarities of patents and to assess a patent’s value. This article presents a theoretical application of information theory to quantify lexical ambiguity and originality in innovation within patent law.

Copyright Protection For Works In The Language Of Life, Nina Srejovic

IPIPC Papers & Reports

In 2001, the DNA Copyright Institute sought to capitalize on the fear of human cloning by offering celebrities the opportunity to use copyright to secure exclusive rights in their DNA. At the time, a Copyright Office spokesperson pointed out that a person’s DNA “is not an original work of authorship.” That statement is no longer self-evident. A scientist claims to have used CRISPR technology to create a pair of twin girls with human-altered DNA that may provide immunity to HIV infection and improved cognitive function. Through gene therapy, doctors can “author” changes to patients’ DNA to cure disease. Scientists “edit” …

Does Size Matter? Nanoscale Particle Size As An Indicator Of Inherency In Nanopharmaceutical Patent Validity, Kirsten Fehlan

Georgia State University Law Review

Scientific and technological advances in nanopharmaceuticals bring the doctrine of inherent obviousness to a head. On the one hand, nanotechnology promises to offer novel ways to target and treat traditionally incurable diseases by operating at a scale that is comparable to the scales that most biological systems use. On the other hand, nanotechnology inventions that result in improved pharmacokinetic properties are susceptible to validity challenges based on inherent obviousness.

Inherency and obviousness are two independently recognized and well-understood principles in United States patent law. Inherency refers to a claimed limitation or feature that is either necessarily present in, or the …

Intellectual Property Rights And Competition Law For Transfer Of Environmentally Sound Technologies, Mahatab Uddin

Pace International Law Review

Battling against climate change, “a common concern of humankind,” is the most prominent global challenge of this century, and Environmentally Sound Technologies (“ESTs”) are the main tools to fight this battle. This article examines the juxtaposed role of Intellectual Property Rights (“IPRs”) and competition laws in facilitating wide-scale innovation and transfer of ESTs in developing and least developed countries. This article covers diverse IPRs, including patents and trade secrets. The discussion and analysis of the IPRs are based on the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). And the discussion on competition law mainly focuses on competition related …

International Rights Affecting The Covid–19 Vaccine Race, Samantha Johnson

University of Miami Inter-American Law Review

The impact of the COVID–19 pandemic has been felt world-wide, and despite having several vaccines in the market at this point, there are still issues of accessibility for certain countries. International intellectual property law has been a breeding ground for the exploration of intellectual curiosity and creation as it provides strong protections to creators. These strong protections have allowed for the monopolization of certain goods, such as vaccines, under the concept of patents. While patents are important to incentivize pharmaceutical companies to create life–saving medicines, these protections have also become a barrier for access to medicines, especially in less–developed countries. …

Patent Performativity, Dan L. Burk

Journal of Intellectual Property Law

Gender bias is rife in the patent system; a large and growing body of empirical literature demonstrates the exclusion of women from the patent system at every level. Such pervasive marginalization cannot be explained by the paucity of women in STEM fields. Rather, more fundamental discriminatory mechanisms must be at work. In this paper I examine one aspect of such biases, arguing that patents operate as performatives, that is, as social assemblages that enact what they disclose, and that create their own social facts. To demonstrate patent performativity, I briefly trace the development of performative concepts, from Austinian declarations, through …

Bright Stars Or Unreliable Compasses: Navigating Patent Definiteness During The Fourth Industrial Revolution, N. Thane Bauz

Texas A&M Journal of Property Law

This Article traces the evolution of the definiteness requirement over the course of two centuries. From the time of inventions relating to flour mills, the definiteness requirement evolved into the consequence for drafting uninterpretable claims. Without considering the reasons for this evolution, the Supreme Court in its Nautilus decision returned the standard for assessing definiteness to its root form. Given the consequences are the loss of patent rights, this Article grapples with the Supreme Court’s decision during an era where complex and convergent technologies are more commonplace. The Article also analyzes empirical evidence six years before and six years after …

Patents And Plants: Rethinking The Role Of International Law In Relation To The Appropriation Of Traditional Knowledge Of The Uses Of Plants (Tkup), Ikechi Mgbeoji

PhD Dissertations

Legal control and ownership of plants and traditional knowledge of the uses of plants (TKUP) is often a vexed issue, particularly at the international level because of the conflicting interests of states or groups of states in the matter. The most widely used form of juridical control of plants and TKUP is the patent system which originated in Europe. This thesis rethinks the role of international law and legal concepts, the major patent systems of the world and international agricultural research institutions as they affect legal ownership and control of plants and TKUP. The analysis is cast in various contexts …

Assessing Responses To The Pto’S 2021 Patent Eligibility Study, Jorge L. Contreras, Victoria T. Carrington

Utah Law Faculty Scholarship

In July 2021, the US Patent and Trademark Office (PTO) issued a public request for comments regarding the impact of recent patent eligibility jurisprudence on US businesses and markets. The PTO received 145 responses to its request by the October 2021 deadline. In this paper, we analyze the responses by industry sector and respondent type, assessing whether responses were generally positive, neutral or negative toward US patent eligibility jurisprudence, and also identifying those responses that cited international competitiveness of US businesses (particularly with respect to China) in their reasoning.

In Your Own Defense: The Importance Of Immuno-Oncology And The Problem With Patenting Under The "Laws Of Nature", Laura Schwartz

Pace Law Review

No abstract provided.

Anti-Suit Injunctions And Jurisdictional Competition In Global Frand Litigation: The Case For Judicial Restraint, Jorge L. Contreras

Utah Law Faculty Scholarship

The proliferation of international jurisdictional conflicts and competing “anti-suit injunctions” in litigation over the licensing of standards-essential patents has raised concerns among policy makers in the United States, Europe and China. This article suggests that national courts temporarily “stand down” from assessing global “fair, reasonable and nondiscriminatory” (FRAND) royalty rates while international bodies develop a more comprehensive, efficient and transparent methodology for resolving issues around FRAND licensing.

Is The Chemical Genus Claim Really “Dead” At The Federal Circuit?: Part I, Christopher M. Holman

Faculty Works

A 2020 law review article entitled The Death of the Genus Claim (“Death”) purports to document a dramatic shift in the Federal Circuit’s interpretation of 35 U.S.C. 112(a)’s enablement and written description requirements, particularly as applied to chemical genus claims. According to the authors of Death, it has become nearly impossible to obtain a chemical genus claim that will be upheld as valid in the face of a challenge for overbreadth under Section 112(a). Death was cited extensively in Amgens’s successful petition for certiorari in Amgen v. Sanofi, a case asking the Supreme Court to overturn the Federal Circuit’s decision …

Bilski And The Information Age A Decade Later, Michael J. Meurer

Faculty Scholarship

In the years from State Street in 1999 to Alice in 2014, legal scholars vigorously debated whether patents should be used to incentivize the invention of business methods. That attention has waned just as economists have produced important new research on the topic, and just as artificial intelligence and cloud computing are changing the nature of business method innovation. This chapter rejoins the debate and concludes that the case for patent protection of business methods is weaker now than it was a decade ago.

Preliminary Injunctive Relief In Patent Cases: Repairing Irreparable Harm, John C. Jaros, Jorge L. Contreras, Robert L. Vigil

Utah Law Faculty Scholarship

Unlike a permanent injunction, which is an equitable remedy awarded to an injured party, a preliminary injunction is a form of interlocutory relief that is imposed by a court to preserve the status quo during litigation. In patent cases decided since (and often before) the Supreme Court’s 2006 decision in eBay v. MercExchange, courts have applied a four-factor test when considering the issuance of a permanent injunction. A similar test has evolved for preliminary injunctions, following the Court’s decision in Winter v. NRDC. Both the eBay and Winter tests rely heavily on whether the patentee is likely to suffer “irreparable” …

Patents On 5g Standards Are Not Matters Of National Security, Jorge L. Contreras

Utah Law Faculty Scholarship

Recent arguments for stronger patent rights, particularly on 5G wireless telecommunications technologies, are relevant to discussions of national industrial policy and economic development, but are not matters of national security.

'In The Public Interest' - University Technology Transfer And The Nine Points Document – An Empirical Assessment, Jorge L. Contreras

Utah Law Faculty Scholarship

In 2007, eleven major U.S. research universities and the Association of American Medical Colleges signed an accord titled “In the Public Interest: Nine Points to Consider in Licensing University Technology.” It outlined a range of issues that universities should consider when licensing their technology to the private sector - from reservations of rights and limitations on exclusivity to refraining from dealing with patent assertion entities to making medical technologies accessible at affordable prices. More than talking points, the document proposed specific contractual clauses intended to promote the educational and public welfare missions of universities. Today, more than one hundred academic …

Patent Reality Checks: Eliminating Patents On Fake, Impossible And Other Inoperative Inventions, Jorge L. Contreras

Utah Law Faculty Scholarship

The recent assertion of patents originally held by Theranos, the defunct blood analysis company whose founders are under federal indictment for fraud, highlights the existence of patents that might claim non-existent or inoperative inventions. While such patents may ultimately be subject to validity challenges in court, their issuance nevertheless has harmful effects on markets and innovation. I propose several administrative and legislative measures directed toward the elimination of patents claiming inoperative inventions including (1) increasing USPTO efforts to detect potentially inoperable inventions, (2) heightening examination requirements, including a certification of enablement, for certain inventions, (3) enabling greater public input into …

Unenjoined Infringement And Compulsory Licensing, Jorge L. Contreras, Jessi Maupin

Utah Law Faculty Scholarship

The United States has traditionally held a dim view of compulsory patent licensing, which occurs when a government mandates the licensing of privately held patents to a third party in order to advance a public goal. Yet following the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, federal courts have denied a substantial number of requests for permanent injunctions following a finding of patent infringement. Without an injunction, an infringing party may continue to practice the infringed patent subject, in most cases, to the payment of a courtapproved ongoing royalty. In the years following eBay, courts and scholars have …

Justice Breyer And Intellectual Property Law

Marquette Intellectual Property & Innovation Law Review

None

Sabermetrics And Patents?: Open Source, Property Protections, And Alice V. Cls Bank

Marquette Intellectual Property & Innovation Law Review

None

Ms. Attribution: How Authorship Credit Contributes To The Gender Gap, Jordana Goodman

Faculty Scholarship

Misattribution plagues the practice of law in the United States. Seasoned practitioners and legislators alike will often claim full credit for joint work and, in some cases, for the entirety of a junior associate’s writing. The powerful over-credit themselves on legislation, opinions, and other legal works to the detriment of junior staff and associates. The ingrained and expected practice of leveraging junior attorneys as ghost-writers is, to many, unethical. But it presents a distinct concern that others have yet to interrogate: misattribution disparately impacts underrepresented members of the legal profession.

This Article fills that space by offering a quantitative analysis …