Law Commons^™

Consequences For Patent Owners If A Patent Is Unconstitutionally Invalidated By The Patent Trial And Appeal Board, Mark Magas

Chicago-Kent Law Review

There have been many constitutional challenges against the Patent Trial and Appeal Board (“PTAB”) since it was created by the America Invents Act in 2011. While the merits of these challenges have been widely debated, there has been little analysis of what would happen if one of these challenges succeeded and patents are found to have been unconstitutionally invalidated. This note examines how issues with waiver, retroactivity, and finality may prevent patent owners from getting their patent rights back, considering the type of constitutional challenge and the different stages of the PTAB process. While the odds are stacked against patent …

Ip Neutrality And Benefit Sharing For Seasonal Flu: An Argument In Favor Of Who Pip Framework Expansion, Arielle Sloan

Chicago-Kent Journal of Intellectual Property

Currently, countries that share samples of influenza viruses with a global WHO network called GISRS can participate in IP and benefitsharing agreements over their samples only if those samples are considered potential pandemic triggers. Some key players in public health want to change that by extending those protections to seasonal flu viruses. Others argue that doing so will be problematic, by, for example, creating too much red tape for vaccine research and development or by destroying the progress that has already been made in creating GISRS. In this battle between WHO stakeholders, expanding the scope of IP and benefits agreements …

Patent Exhaustion Connects Common Law To Equity: Impression Products, Inc. V. Lexmark International, Inc., Kumiko Kitaoka

Chicago-Kent Journal of Intellectual Property

No abstract provided.

May You Live In Interesting Times: Patent Law In The Supreme Court, Seth P. Waxman

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Brexit And Ip: The Great Unraveling?, Graeme Dinwoodie, Rochelle Dreyfuss

All Faculty Scholarship

In theory, exit from Brexit will free the United Kingdom from the constraints and burdens of EU membership. It will transfer sovereignty back to the people from the technocratic rule of Brussels; replace the jurisprudence of the Court of Justice with the adjudicative power of national courts; and allow the UK to tailor its market regulation in the particular exigencies of the UK economy. Whether, as a general matter, the restoration of a classic Westphalian state enhances value either nationally or globally is an issue we leave to others to debate.We ask a different question: we explore how well the …

How Can The Supreme Court Not “Understand” Patent Law?, Gregory Reilly

Chicago-Kent Journal of Intellectual Property

The Supreme Court does understand patent law. This invited Essay responds to Federal Circuit Judge Dyk’s remarks at the Chicago-Kent Supreme Court IP Review, in particular, his observation that the patent “bar and the academy have expressed skepticism that the Supreme Court understands patent law well enough to make the governing rules” (a view Judge Dyk did not endorse). The idea that the Supreme Court does not understand the law of patents is implausible. Even more generous interpretations of this criticism – that the Supreme Court insufficiently understands innovation policy, insufficiently understands the patent system that Congress desired in creating …

Sherlock Holmes & The Case Of The Contested Copyright, Jessica L. Malekos Smith

Chicago-Kent Journal of Intellectual Property

For generations, Sir Arthur Conan Doyle’s novels and short stories on the adventures of Sherlock Holmes have captivated the minds of readers and fueled a lucrative intellectual property market. The historical trajectory of international copyright protections to this literary canon, however, is an equally intriguing, if not mysterious, page-turner. This Note explores the procedural history of Klinger v. Conan Doyle Estate, Ltd., and examines how the literary characters of Sherlock Holmes and Dr. John H. Watson can simultaneously exist in the public domain, while certain story elements still remain under copyright protection in the United States until 2022.

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 …

Recent Trends In The Use Of Surveys In Advertising Law Disputes; An Update On The Case Law, Kenneth Plevan

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Multiple Intellectual Property Damage Complications As In Apple V Samsung? Try Using Excel, W. Lesser

Chicago-Kent Journal of Intellectual Property

No abstract provided.

The Constitutionality Of Design Patents, Ralph D. Clifford, Richard J. Peltz-Steele

Chicago-Kent Journal of Intellectual Property

Design patents have been part of American law since 1842. In that time, only just over 600,000 design patents have been issued, with more than half of these being granted in the last twenty years. This quantity is dramatically fewer than the number of utility patents issued which is rapidly approaching 9,000,000 issued patents. Possibly because of the low usage of design patents over time, no case law and little literature address the constitutional issues raised by them. This article intends to overcome that shortcoming. Two constitutional aspects of design patents will be examined.

First, congressional authority to adopt the …

When Is A Patent Exhausted? Licensing Patents On A Claim-By-Claim Basis, Lucas Dahlin

Chicago-Kent Law Review

The patent exhaustion doctrine is meant to protect legitimate purchasers of patented items from post-sale restrictions imposed by patent owners. The courts, however, have recently expanded the doctrine of patent exhaustion by holding that the sale of a device which “partially” practices a patent exhausts that patent in its entirety. This holding essentially precludes patent owners from licensing their patents on a claim-by-claim basis. As inventions become more complex and require more parties working in concert to bring an idea to market, the inability to license patents on a claim-by-claim basis will lead to inventors being unable to fully monetize …

Ka Bow! Seventh Circuit Knocks Down Trademark Claim, Sarah B. Virani

Seventh Circuit Review

Integral to the success of a business is its ability to protect its trademark. When another individual or business infringes upon a business's trademark, the infringed user can bring a claim under the Lanham Act, which codifies federal trademark law, in part to protect consumers from confusion as to the source of a product or service. An essential question is whether a trademark holder may, under the Lanham Act, bring a successful claim for trademark infringement against another for a fictional product.

The Seventh Circuit addressed this matter in Fortres Grand Corporation v. Warner Bros. Entertainment, in which the …

Canada's Inadequate Legal Protection Against Industrial Espionage, Emir Crowne, Tasha De Freitas

Chicago-Kent Journal of Intellectual Property

Canadian law provides little protection for individuals and corporations against industrial espionage. Akin to the United States' Economic Espionage Act of 1996-with its broad definition of "trade secret" and accompanying protections and remedies-we propose that Canada enact legislation at the federal level to remedy many of the deficiencies that arise in bringing a claim under the usual breach of confidence action.

Phoenix Rising? On The Fall And Potential New Rise Of State Trademark Rights, Charles Mcmanis, Henry Biggs

Chicago-Kent Journal of Intellectual Property

This article addresses the historical interplay of federal, state and common law trademark rights as they relate to the scope of geographic protection. The article looks closely at the narrow context where federal trademark law may arguably provide for state trademark law to prevail. The article notes, however, that the specific state trademark language necessary for that state trademark right to prevail has slowly vanished from most state trademark statutes. Yet while the door has seemed to be closing in this area, a relatively recent case, National Ass'n for Healthcare Communications, Inc. v. Central Arkansas Area Agency on Aging, Inc, …

Next Generation Copyright Misuse, Rebecca Sundin

Chicago-Kent Journal of Intellectual Property

No abstract provided.

Recognized Stature: Protecting Street Art As Cultural Property, Griffin M. Barnett

Chicago-Kent Journal of Intellectual Property

This Article discusses the current legal regimes in the United States implicated by works of "street art." The Article suggests an amendment to the Visual Artists Rights Act that would protect certain works of street art as "cultural property" - thereby promoting the arts and the preserving important works of art that might otherwise be at the mercy of property owners or others who do not share the interests of artists and the members of communities enhanced by works of street art.

The Story Of A Character: Establishing The Limits Of Independent Copyright Protection For Literary Characters, Samuel J. Coe

Chicago-Kent Law Review

Copyright law provides writers with a way to protect their original works of authorship, but courts often disagree over the scope of this protection and how far it can be extended for the fictional characters appearing within literary works. Characters like Holden Caulfield and James Bond have become extremely valuable forms of intellectual property, but even for such iconic figures it can be difficult to separate the character from the story to determine where one work ends and the other begins. To address this issue, the Second Circuit follows the "distinctly delineated" test, which asks whether a character has been …

"Open Source" And Private Ordering: A Commentary On Dusollier, Arti K. Rai

Chicago-Kent Law Review

No abstract provided.

Policy-Making Dynamics In Intergovernmental Organizations: A Comment On The Remarks Of Geoffrey Yu, Coenraad Visser

Chicago-Kent Law Review

No abstract provided.

The Demise And Rebirth Of Plant Variety Protection: A Comment On Technological Change And The Design Of Plant Variety Protection Regimes, Laurence R. Helfer

Chicago-Kent Law Review

No abstract provided.

Technological Change And The Design Of Plant Variety Protection Regimes, Mark D. Janis, Stephen Smith

Chicago-Kent Law Review

In this paper, we examine the potential for plant variety protection ("PVP") regimes—that is, sui generis, industry-specific intellectual property regimes—to become compromised as a result of technological change. In particular, we analyze the shift in plant breeding from phenotypic selection to genotypic selection, and consider the impact of that shift on existing plant variety protection. We also lay out an alternative structure for plant intellectual property protection based on unfair competition, a model that differs radically in some respects from current PVP schemes. We offer our model as a starting point for debate on adaptations that might improve PVP …

The Role Of International Ngos In The Intellectual Property Policy-Making And Norm-Setting Activities Of Multilateral Institutions, Duncan Matthews

Chicago-Kent Law Review

International NGOs play a significant role in relation to intellectual property policy-making and norm-setting in the following multilateral institutions: the World Trade Organization ("WTO"); the World Intellectual Property Organization ("WIPO"); the World Health Organization ("WHO"); the Convention on Biological Diversity Conference of the Party ("CBD-COP"); and the Food and Agriculture Organization ("FAO') of the United Nations. International NGOs enhance the capacity of developing country delegates to multilateral institutions to negotiate on intellectual property issues. Although there are limits to the relationship between developing country delegates and international NGOs, relative to the resources available, international NGOs have had a considerable impact, …

Sharing Access To Intellectual Property Through Private Ordering, Severine Dusollier

Chicago-Kent Law Review

Private ordering mechanisms, such as contracts or technological measures, have increasingly been used to shift the balance between exclusive property and free access to intellectual creation embedded in all IP regimes. Most surprising is the use of private ordering mechanisms, mainly licensing schemes. This article aims at assessing the nature of norm-making operated by open-access initiatives, as well as its normative sustainability as a project to enlarge the public domain within intellectual property. My conclusion is that public ordering still has a crucial role to play to moderate the expansion of intellectual property and to ensure that intellectual creations remain …

The Structure And Process Of Negotiations At The World Intellectual Property Organization, Geoffrey Yu

Chicago-Kent Law Review

On October 13, 2006, the Deputy Director General of the World Intellectual Property Organization, Geoffrey Yu, spoke at the Chicago-Kent Symposium Intellectual Property, Trade and Development: Reconciling and Accommodating Different National Levels of Protection. Included here is a transcript of his remarks, which outlined the organizational structure of the Organization and the management and process of international discussions within the Organization.

Still Adjusting To Markman: A Prescription For The Timing Of Claim Construction Hearings, William Lee, Anita Krug

All Faculty Scholarship

In Markman v. Westview Instruments, Inc., the Supreme Court held that the interpretation of patent claims is a question of law to be determined by the court rather than a question of fact to be decided by the jury. The Court based its holding on the belief that judges are better suited than juries to address claim interpretation issues and that claim interpretation by the court would result in greater uniformity in the treatment of patents. The Markman decision, however, has confronted the district courts with a host of thorny questions, such as what evidence they may consider in their …