Law Commons^™

Suppression Of Innovation Or Collaborative Efficiencies?: An Antitrust Analysis Of A Research & Development Collaboration That Led To The Shelving Of A Promising Drug, 5 J. Marshall Rev. Intell. Prop. L. 348 (2006), Saami Zain

UIC Review of Intellectual Property Law

This article discusses antitrust issues present in research and development collaborations between competitors. In particular, it illustrates that, although often very beneficial, these collaborations may have the potential for considerable harm via suppression of innovation. The article examines a recent case involving a collaboration to develop drugs, which arguably resulted in the suppression of a promising drug.

Taming The Code: Effectively Implimenting Software Patents, 5 J. Marshall Rev. Intell. Prop. L. 382 (2006), Anthony E. Anderson

UIC Review of Intellectual Property Law

Software patents are a sore subject for many programmers. Although still in their infancy, they have managed to anger many of those in the programming community. Software patents started to evolve in the early 80’s through multiple court decisions that eventually defined software as statutory patentable material. Although patentable, software has proven to be a formidable match for the examination process. The examination process has proven ineffective in properly examining software patent applications and as result multiple lawsuits based on frivolous patents have emerged. Potential battles such as the one between Creative and Apple over Creative’s patent for a hierarchal …

Why Are Competitor's Advertising Links Displayed When I Google My Product? An Analysis Of Internet Search Engine Liability For Trademark Infringement, 5 J. Marshall Rev. Intell. Prop. L. 431 (2006), Isaiah A. Fishman

UIC Review of Intellectual Property Law

Traditional federal trademark law is being challenged in the current case of Google v. AmericanBlind. When internet issues clash with trademark infringement, courts are often faced with the dangerous task of either refusing to stretch not specifically internet tailored trademark law to grant remedy to a perceived wrong or refusing to grant remedy because of the chilling effect the remedy may have on traditional trademark. By analyzing the history of trademark law in relation with internet issues, focusing on domain name cases, pop-up advertising cases, and search engine cases, it becomes clear that specific congressional action is the most viable …

Smithkline V. Apotex: Broadening The Scope Of Inherent Anticipation And Its Impact On The Patentability Of Chemical Structures, 5 J. Marshall Rev. Intell. Prop. L. 456 (2006), Bryan William Jones

UIC Review of Intellectual Property Law

In SmithKline v. Apotex, the Court of Appeals for the Federal Circuit invalidated the main patent on Paxil as inherently anticipated. In doing so, the court over-stepped the bounds of appellate review, and broadened the scope of the inherent anticipation doctrine to include chemical structures that are not measurably produced by strict practice of the prior art. This holding does not comport with well-settled precedent and could have dire consequences for the patentability of many chemical structures. A more equitable invalidity analysis would require a chemical structure to derive directly from a disclosed reaction in order to be anticipated; in …

Copyright Piracy In China, 5 J. Marshall Rev. Intell. Prop. L. 583 (2006), Ralph Oman

UIC Review of Intellectual Property Law

Copyrights play a major role in promoting economic development and creating a national identity, and they have a tremendous impact on the social and economic well-being of nations. Within the past fifteen years, China has passed a strong copyright law, upgraded enforcement, and joined the Berne Convention. However, since then, the forward momentum has subsided and piracy has grown deep roots in China. If protecting their own citizens’ rights was not important enough, the threat of international trade sanctions for having inadequate intellectual property protection may force China to reevaluate their current situation and step up international protection.

Some Remarks On The Limits Of Harmonization, 5 J. Marshall Rev. Intell. Prop. L. 596 (2006), Graeme B. Dinwoodie

UIC Review of Intellectual Property Law

Some Remarks on the Limits of Harmonization

Traditional Knowledge And The Fight For The Public Domain, 5 J. Marshall Rev. Intell. Prop. L. 317 (2006), Doris E. Long

UIC Review of Intellectual Property Law

What are the challenges facing the protection of traditional knowledge internationally? Can the protection of such rights, which have traditionally existed outside the boundaries of intellectual property, be achieved in the face of current challenges to protections epitomized by such emerging international movements as enhanced access to information and culture as a human right? This article examines some of the emerging issues in this hotly contested area and suggests that such movements, which are not adverse to intellectual property and traditional knowledge rights, should be used to craft a new method for addressing the issue of traditional knowledge protection internationally.

Recent Developments In Patent Law, 5 J. Marshall Rev. Intell. Prop. L. 630 (2006), Bradley C. Wright

UIC Review of Intellectual Property Law

Over the past year, the United States patent law has developed significantly. Numerous cases were decided, shaping the future of patent law. This article tracks the development of patent law over the past year by analyzing important court decisions. These decisions affect various aspects of patent law, including the patentability of subject matter, the validity of patents, and the patent procurement process. While the specific impact of each decision varies, the combination of the decisions resulted in noteworthy changes to patent law in the United States.

Patent Cooperation Treaty – Implementation V. U.S. Law, 5 J. Marshall Rev. Intell. Prop. L. 641 (2006), Richard Lazarus

UIC Review of Intellectual Property Law

What ways can an individual attack the enforceability of a patent that relies on the benefit of an earlier filed Patent Cooperation Treaty application (“PCT”)? This article highlights the top five PCT issues that an attorney should look for to successfully defend a client against infringement. The strategies discussed include: (1) searching for new matter; (2) searching for errors in inventorship; (3) examining an international filing date; (4) checking for withdrawal of an international application; and (5) examining estoppel arguments in international applications.

Special 301: Trips Plus – Alive And Kicking, 5 J. Marshall Rev. Intell. Prop. L. 651 (2006), Vicki Allums

UIC Review of Intellectual Property Law

Despite significant strides and multilateral agreements, including requirements for enforcing intellectual property, trademark counterfeiting and copyright piracy remain a persistent problem for intellectual property owners as reflected in the 2006 Special 301 Report issued by the Office of the United States Trade Representative on April 28, 2006. Border measures are a key tool in the United States fight against counterfeiting and piracy at U.S. borders in the global economy where goods are manufactured in different countries and sold worldwide. How does the United States prevent infringing works from crossing its borders and assist its trading partners in creating border enforcement …

The Impact Of The New World Order On Economic Development: The Role Of The Intellectual Property Rights System, 6 J. Marshall Rev. Intell. Prop. L. 1 (2006), Joseph Straus

UIC Review of Intellectual Property Law

This article provides a close look at the development of intellectual property protection contrasted with the development of globalization. Specifically, the agreements forming the legal framework of the World Trade Organization are discussed and their impact on the economic development of developing countries examined. A closer look is given to China and India, where only recently intellectual property protection standards complying with mandatory rules of the TRIPS Agreement have been introduced, and where the most remarkable economic, scientific, and technological development can be observed. This article emphasizes the necessity of all members of the World Trade Organization to comply with …

The Wipo "Internet Treaties" The United States As The Driver: The United States As The Main Source Of Obstruction — As Seen By An Anti-Revolutionary Central European, 6 J. Marshall Rev. Intell. Prop. L. 17 (2006), Mihály Ficsor

UIC Review of Intellectual Property Law

The copyright policy of the United States developed from initial isolationism, through the 1891 Chase Act, various bilateral and inter-American agreements and the establishment of the Universal Copyright Convention, to active participation in the international copyright cooperation. This development was completed by the United States’ accession to the Berne Convention in 1988. Since then, the United States has played a leading role in this field, which was manifested both during the negotiations of the 1994 TRIPS Agreement and the preparatory work of the two 1996 WIPO “Internet Treaties”, the WCT and the WPPT. These WIPO Treaties, the preparation and adoption …

Recent Developments In Copyright Law: Selected U.S. Supreme Court, Court Of Appeals, And District Court Opinions Between February 1, 2005 And May 1, 2006, 6 J. Marshall Rev. Intell. Prop. L. 40 (2006), Tyler T. Ochoa

UIC Review of Intellectual Property Law

This article highlights nine selected U.S. copyright law decisions handed down between February 1, 2005 and May 1, 2006. Two of the decisions concern peer-to-peer file sharing, including the U.S. Supreme Court’s landmark decision in MGM v. Grokster. One of the decisions questions the applicability of the idea/expression dichotomy to works of visual art. Two of the decisions discuss ownership of the renewal rights in a work under the 1909 Act when the author is deceased. One of the decisions interprets the requirement that an author register his or her work before filing an infringement action. Two of the decisions …

Recent Developments In Trade Secrets Law, 6 J. Marshall Rev. Intell. Prop. L. 59 (2006), R. Mark Halligan

UIC Review of Intellectual Property Law

As companies are increasingly trying to protect information by designating it as a trade secret, courts are increasingly trying to resolve litigation disputes relating to trade secrets misappropriation issues. Trends have emerged from these court cases, further defining the limits of trade secrets protection and attempting to carve out uniform rules concerning such protection. This article highlights some of the most interesting and recent developments in Trade Secrets Law.

Trademark Parodies: When Is It Ok To Laugh?, 6 J. Marshall Rev. Intell. Prop. L. 72 (2006), Emily Adelman

UIC Review of Intellectual Property Law

In trademark parodies, there is a fine line between what is considered a First Amendment right to freedom of speech and what constitutes an unlawful appropriation, or trademark infringement. Current judicial decisions have been inconsistent across the different jurisdictions, thus making it unclear to parodists as to what may be lawfully appropriated when creating their parodies. This comment proposes that a new balancing test be used that is specific to trademark parodies. This new test will help to create more concrete guidelines that will reduce the amount of subjectivity that is currently used in trademark parody analysis.

The Cache Cow: Can Caching And Copyright Co-Exist?, 6 J. Marshall Rev. Intell. Prop. L. 101 (2006), Nicole Bashor

UIC Review of Intellectual Property Law

Copyright protection in a digital environment is difficult. Protection is made more difficult because of the scope of the Internet, uncertainty of a governing Internet agency, and copyright enforcement problems. Copyright protection is further complicated because search engines utilize a process involving copying web sites and displaying cached links to web sites without the web site owner's express permission. By analyzing the intersection of copyright law and the search engine caching process, it is clear that search engines are on dangerous ground and possibly violate the copyrights of web site owners. Accordingly, a solution is proposed that compensates web site …

The Patent Reform Act’S Proposed First-To-File Standard: Needed Reform Or Constitutional Blunder?, 6 J. Marshall Rev. Intell. Prop. L. 129 (2006), Karen E. Simon

UIC Review of Intellectual Property Law

The proposed Patent Reform Act of 2005 would bring U.S. patent law into harmony with most other countries by adopting a first-to-file standard for determining patent rights. This comment questions whether overturning the first-to-invent standardand two hundred years of settled law is permissible under the Patent Clause of the U.S. Constitution. The comment concludes that the Patent Reform Act of 2005, as proposed, violates the Constitution, and supports its argument by placing intocontext of the founding fathers fear of extending government monopolies. The comment proposes that Congress focus on procedural reform, and not change thefundamental standard for awarding patent rights.

Why Bother Calling Patents Property? The Government's Path To License Any Patent And Maybe Pay For It, 6 J. Marshall Rev. Intell. Prop. L. 151 (2006), Bradley M. Taub

UIC Review of Intellectual Property Law

In 2006 the Federal Circuit in Zoltek Corp. v. United States denied a patent owner the basic protections of the Constitution. In 2005 the United States Supreme Court in Kelo v. City of New London effectively wrote the Public Use Clause out of the Fifth Amendment. This comment focuses on the constitutional and statutory rights of patent owners in light of Zoltek, Kelo, and 28 U.S.C. § 1498. After Zoltek and Kelo several questions remain, which this comment asks and analyzes. First, can the Federal Government unilaterally take a patent owner’s patent reasoning the taking benefits the economy, public safety, …

Champagne, Feta, And Bourbon: The Spirited Debate About Geographical Indications, Justin Hughes

Articles

Geographical Indications (GIs) are terms for foodstuffs that are associated with certain geographical areas. The law of GIs is currently in a state of flux. Legal protection for GIs mandated in the TRIPS Agreement is implemented through appellations law in France and through certification mark systems in the United States and Canada. This Article first examines the state of GIs throughout the world. The author then turns to the continuing debate between the European Union and other industrialized economies over this unique form of intellectual property. The European Union claims that increasing GI protection would aid developing countries, but, in …

Peer To Patent: Collective Intelligence And Intellectual Property Reform, Beth Simone Noveck

Articles & Chapters

No abstract provided.

Estimates Of Patent Rents From Firm Market Value, James Bessen

Faculty Scholarship

The value of patent rents is an important quantity for policy analysis. However, estimates in the literature based on patent renewals might be understated. Market value regressions could provide validation, but they have not had clear theoretical foundations for estimating patent rents. I develop a simple model to make upper bound estimates of patent rents using regressions on Tobin's Q. I test this on a sample of US firms and find it robust to a variety of considerations. My estimates correspond well with estimates based on patentee behavior outside the pharmaceutical industry, but renewal estimates might be understated for pharmaceuticals.

Refusals To Deal With Competitors By Owners Of Patents And Copyrights: Reflections On The Image Technical And Xerox Decisions, Joseph P. Bauer

Journal Articles

Under the patent and copyright laws, the owner of a patent for an invention or of a copyright for a work has the right to sell, license or transfer it, to exploit it individually and exclusively, or even to decide to withhold it from the public. By contrast, under the antitrust laws, a unilateral refusal to deal may constitute an element of a violation of Section 2 of the Sherman Act, and the courts may then impose a duty on the violator to deal with others, including possibly with its actual or would-be competitors.

The central question addressed by this …

Inducement As Contributory Copyright Infringement: Metro-Goldwyn-Mayer Studios Inc. V. Grokster, Ltd., Laura A. Heymann

Faculty Publications

No abstract provided.

The Rehnquist Court And The Groundwork For Greater First Amendment Scrutiny Of Intellectual Property, Mark P. Mckenna

Journal Articles

This contribution to the Washington University School of Law conference on the Rehnquist Court and the First Amendment addresses the Rehnquist Court's view of the role of the First Amendment in intellectual property cases. It argues that, while the Rehnquist Court was not eager to find a conflict between intellectual property laws and the First Amendment, there is reason to believe that it set the stage for greater First Amendment scrutiny of intellectual property protections. At the very least, the Court left that road open to future courts, which might be inclined to view intellectual property more skeptically.

"A Teaching, Suggestion, Or Motivation To Combine": Bringing Structure And Clarity To The Obviousness Analysis, R. Polk Wagner

All Faculty Scholarship

No abstract provided.

Intellectual Property, Privatization And Democracy: A Response To Professor Rose, Mark P. Mckenna

Journal Articles

The broad thesis of Professor Rose's article Privatization: The Road to Democracy? is an important reminder that no institution deserves all the credit for democratization, and that the success of any particular institution in promoting democracy depends to a greater or lesser extent on the existence and functioning of other political institutions. While protection of private property has proven quite important to successful democratic reform, we should not be lulled into thinking private property can carry the whole weight of reform. That lesson has particular significance in the context of intellectual property, given proponents general tendency to overstate the significance …

Tax Strategies Are Not Patentable Inventions, Andrew A. Schwartz

Publications

No abstract provided.

Why We Are Confused About The Trademark Dilution Law, Christine Farley

Articles in Law Reviews & Other Academic Journals

In the decade following passage of a federal right of anti-dilution, the biggest question in trademark law was how to prove dilution. This is a clear sign of something. Can no smart attorney, judge, or social scientist figure out what dilution is in order to prove it? Dilution has proven to be a "dauntingly elusive concept" for the courts. Even in the Supreme Court, nearly all of the questions from the Justices In oral argument in Moseley v. V. Secret Catalog were seeking to simply understand what dilution is.Unless they simply know it when they see it, other courts either …

Metaphor, Objects, And Commodities, George H. Taylor, Michael J. Madison

Articles

This Article is a contribution to a Symposium that focuses on the ideas of Margaret Jane Radin as a point of departure, and particularly on her analyses of propertization and commodification. While Radin focuses on the harms associated with commodification of the person, relying on Hegel's idea of alienation, we argue that objectification, and in particular objectification of various features of the digital environment, may have important system benefits. We present an extended critique of Radin's analysis, basing the critique in part on Gadamer's argument that meaning and application are interrelated and that meaning changes with application. Central to this …

Copyright And Trademark Legal Research, Terrance K. Manion, Colleen C. Williams

Faculty Publications By Year

No abstract provided.