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 …

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.

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.

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.

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 …

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.

Ntp V. Rim: The Diverging Law Between System And Method Claim Infringement, Stephen P. Cole

The University of New Hampshire Law Review

[Excerpt] “Almost thirty years after the landmark decision of Decca Ltd. v. United States, the Federal Circuit had an opportunity to reevaluate the extraterritorial limits of U.S. patent law in NTP, Inc. v. Research in Motion, Ltd. After withdrawing its initial opinion (“NTP I”) and issuing a second opinion (“NTP II”), the court held that a system having a component located outside U.S. jurisdiction could be subject to U.S. patent law. The court held as a matter of law, however, that a process in which a step is performed outside U.S. jurisdiction could not be subject to U.S. patent law. …

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 …

Antitrust Issues In The Settlement Of Patent Disputes, Part Iii, Thomas B. Leary

Seattle University Law Review

Once again, I will address the issue of litigation settlements between companies that hold patents on pharmaceutical products (sometimes "pioneers") and would-be generic entrants ("generics") who challenge the validity of the patent and/or a claim of infringement. This discussion will focus on the Tamoxifen opinion, with passing reference to other decisions. Obviously, reasonable people can disagree on these issues, but I still believe the Commission's approach in Schering was correct.

Patent Ships Sail An Antitrust Sea, Joseph Scott Miller

Seattle University Law Review

The deeper truths evoked by patent ships sailing an antitrust sea are three. First, free competition is the pervasive, baseline reality, the background norm; patent protection is the temporary, partial exception. Second, we grasp both patent and antitrust policy with a common science: economics. Third, although neither patent nor antitrust law doctrines are good tools for fixing fundamental problems in the other body of law, both bodies of law help us better understand the shortcomings of the other. I explore these ideas in turn, below.

Independent Ink At The Crossroads Of Antitrust And Intellectual Property Law: The Court's Holding Regarding Market Power In Cases Involving Patents And Implications In Cases Involving Copyrights, Leonard J. Feldman, Rima J. Alaily, Chad D. Farrell

Seattle University Law Review

By eliminating the market power presumption for patent holders, Independent Ink calls into question the presumption's continued validity for tying arrangements involving copyrights. While the Court's holding directly applies only to patents, we present three reasons why, after Independent Ink, the presumption can no longer be viable in antitrust lawsuits challenging a tying arrangement involving a copyrighted product. First, the Court's rationale for eliminating the presumption including citations to extensive academic writings, agency guidelines, and legislative amendments precludes the presumption's continued application in any other context. Second, copyrights are significantly less likely than patents to confer market power because …

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.

The Existing Legal Infrastructure Of Brics: Where Have We Been And Where Are We Going?, Robert B. Ahdieh, Zhu (Julie) Lee, Srividhya Ragavan, Kevin Noonan, Clinton W. Francis

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Patent Ships Sail An Antitrust Sea, Joseph S. Miller

Scholarly Works

This brief essay arises from my participation in an April 2006 conference at Seattle University Law School, entitled At the Intersection of Antitrust and Intellectual Property Law: Looking Both Ways to Avoid a Collision. This intersection metaphor is a common one for describing antitrust law's relationship with intellectual property law, among both courts and commentators. This essay explores a different metaphor: patent ships sail an antitrust sea, protecting those aboard from competition's harshest dangers - but only for a time. The nautical metaphor evokes three ideas that the crossroads metaphor does not. First, vigorous competition is the pervasive, baseline reality; …

Harmonization Through Condemnation: Is New London The Key To World Patent Harmony?, Max Oppenheimer

All Faculty Scholarship

Since 1790, when two U.S. patent applicants have claimed the same invention, the patent has been awarded to the first inventor. Today, the United States stands alone in the industrialized world, and many argue that the United States should, in the interest of world patent harmony, change its system so as to award a contested patent to the first applicant. Of the arguments advanced to justify the change, the only ones that withstand scrutiny are that "all the other countries are doing it" and the hope that some concessions in other aspects of intellectual property or trade might be obtained …

Peer To Peer Meets The World Of Legal Information: Encountering A New Paradigm, Ethan Katsh, Beth Simone Noveck

Articles & Chapters

The authors describe a proposed system for patent application reviews that uses new technologies to access information-community peer reviews. By allowing examiners to "mine for data" in the heads of experts rather than in libraries or databases, the proposal illustrates how new technology could change the boundaries of legally authoritative and relevant information and make it possible to identify legitimate authority from new sources.

The Patent Office Meets The Poison Pill: Why Legal Methods Cannot Be Patented, Andrew A. Schwartz

Publications

In 2003, for the first time in its 170-year history, the United States Patent Office began awarding patents for novel legal innovations, in addition to traditional inventions such as the telephone or airplane. Commentators have accepted the Patent Office's power to grant legal method patents, but at the same time have criticized this new type of patent on policy grounds. But no one has suggested that the Patent Office exceeded its authority by awarding patents for legal methods, until now.

In the Patent Act of 1952, which is still in effect today, Congress established certain requirements for patentability, including a …

Patents On Legal Methods? No Way!, Andrew A. Schwartz

Publications

An “invention,” as used in the United States patent laws, refers to anything made by man that employs or harnesses a law of nature or a naturally occurring substance for human benefit. A watermill, for instance, harnesses the power of gravity to run machinery. But legal methods, such as tax strategies, are not inventions in this sense, because they employ “laws of man” — not laws of nature to produce a useful result.

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 …

The Failure Of Public Notice In Patent Prosecution, Michael Risch

Michael Risch

Patents often contain technical information intertwined with legal meaning, and inventions are often difficult to describe in words. Despite complex interpretive rules, patent law has failed in one of its essential missions - giving those who need to read patents the ability to understand the scope of a patent's claims in a consistent and predictable manner. As a result, those who rely on patents - patentees, potential and actual licensees, potential and actual defendants, future patent applicants, courts, and even the Patent and Trademark Office - may find it difficult or impossible to discern the metes and bounds of any …

Why Do We Have Trade Secrets?, Michael Risch

Michael Risch

Trade secrets are arguably the most important and most litigated form of intellectual property, yet very little has been written that justifies their existence, perhaps because they differ so much from other forms of intellectual property. This article explores the history of trade secret law in the United States and examines why it is that every state has opted to protect secret information, even though such protection is antithetical to the policies of access associated with patent law and non-protection of 'facts' associated with copyright law. In this article, I examine four potential ways to justify trade secret law. First, …