Law Commons^™

The Right Not To Use In Property And Patent Law, Oskar Liivak, Eduardo M. Peñalver

Oskar Liivak

In Continental Paper Bag Co. v. Eastern Paper Bag Co., the Supreme Court held (1) that patent owners have an absolute right not to practice their patent and (2) that even these nonpracticing patent owners are entitled to the liberal use of injunctive relief against infringers. Both of these holdings have been very important to the viability of patent assertion entities, the so-called patent trolls. In eBay Inc. v. MercExchange, L.L.C., the Supreme Court softened the injunction rule. In this Article, we argue that Congress or the Court should reconsider Continental Paper Bag’s embrace of an absolute right not to …

Rethinking The Concept Of Exclusion In Patent Law, Oskar Liivak

Oskar Liivak

Patent law’s broad exclusionary rule is one of its defining features. It is unique within intellectual property as it prohibits acts of independent creation. Even if a second inventor had no connection or aid from an initial inventor, patent law allows the first inventor to stop the second. Even though a number of pressing problems can be traced to this rule, it remains untouchable; it is thought to be essential for incentivizing invention. But is it really our only choice? And why is it so different from our otherwise widespread reliance on free entry and competition in markets? The current …

Maturing Patent Theory From Industrial Policy To Intellectual Property, Oskar Liivak

Oskar Liivak

We have always known that technological progress is important and this country has always aimed to promote it. A large part of that responsibility has fallen on the shoulders of the patent system. Embarrassingly, despite over two hundred years of experience, we still do not actually know if the patent system helps or hinders technological progress. This Essay argues that the problem is not the patent system but rather patent theory. Patent theory suffers from three linked problems: exceptionalness, indeterminacy, and animosity. First, patent law is seen as a necessarily unique exception to the overall market economy. By artificially making …

Finding Invention, Oskar Liivak

Oskar Liivak

One of the biggest problems plaguing modern patent law is its inability to provide predictable and clear exclusive rights. We would improve clarity by simply following the patent statute and extending exclusion only to "the patented invention." That suggestion, as reasonable as it may sound, is actually quite radical to the dominant patent law orthodoxy. It is not even clear under the dominant patent law orthodoxy what it would mean to limit patent scope to the invention, but it is generally presumed that it must lead to unacceptably narrow patents. Thus, even if it provides clarity, the invention is thought …

Maintaining Competition In Copying: Narrowing The Scope Of Gene Patents, Oskar Liivak

Oskar Liivak

In supporting gene patents, the patent office, the courts and other supporters have assumed that gene discoveries are identical to traditional inventions and therefore the patent system should treat them as identical. In other words, they have assumed that the relatively broad claims that are used for traditional inventions are also appropriate for encouraging gene discovery. This article examines this assumption and finds that gene discoveries are critically different from traditional inventions and concludes that the patent system cannot treat them as identical.

As a doctrinal matter, this article applies the generally overlooked constitutional requirements of inventorship and originality and …

Establishing An Island Of Patent Sanity, Oskar Liivak

Oskar Liivak

There is a growing, inescapable sense that something has gone terribly wrong with the patent system. The patent system is described as a failure, broken, and dysfunctional. Yet, despite the fact that much of today’s headline-grabbing patent activity appears facially unproductive, we really can’t be sure that the system has failed in its mission. Current patent theory is so indeterminate that it is hard to decisively criticize these activities. In fact, the current narrative cannot conclusively show that patent trolls or any other patent-related activities are or are not economically justified. Though depressing and perhaps embarrassing, this patent indeterminacy is …

The Forgotten Originality Requirement: A Constitutional Hurdle For Gene Patents, Oskar Liivak

Oskar Liivak

Originality has always been a part of patent law. It bars patents that are obtained by copying from someone or from somewhere. Modern judicial interpretations of the patent act have ignored this second element of originality. But as originality is, at least arguably, a constitutional limit of the Patent and Copyright clause, the courts must interpret the patent act consistently to include originality. As a specific example, the paper focuses on patents claiming isolated and purified naturally-occurring gene sequences. The paper concludes that such patents are not original – they are instead just the result of copying – and thus …

Technology And Intellectual Property: New Rules For An Old Game?, Elizabeth A. Rowe

Elizabeth A Rowe

This foreword to the first issue of 2009 for the Journal of Technology Law and Policy discusses the questions presented by the merger of technology and intellectual property and considers how best the two areas should co-exist.

The Experimental Use Exception To Patent Infringement: Do Universities Deserve Special Treatment?, Elizabeth A. Rowe

Elizabeth A Rowe

The experimental use exception is a common law exception to the patent-holder's exclusive right of use. It permits the use of another's patented device when such use is for philosophical inquiry, curiosity, or amusement. It has recently come under attack by many who consider it too narrow. They fear that the courts' "narrowing" of the experimental use exception will stifle research and innovation. Much of the discontent with the doctrine has been spurred by a relatively recent Federal Circuit opinion, Madey v. Duke University, which makes clear that a research university does not receive immunity under the experimental use exception …

Patents, Genetically Modified Foods, And Ip Overreaching, Elizabeth A. Rowe

Elizabeth A Rowe

Genetically engineered plants and animals have become and will continue to constitute a large part of the food we consume. The United States is the world's largest producer of genetically modified foods, making American consumers the most exposed population to these products. Agricultural biotechnology patents spur and support innovation. Accordingly, patent law is one of the main contributors to this phenomenon that has changed not only the kinds of food we eat, but the nature of the agri-business industry that produces these foods. This Article takes on an area of concern involving the patenting of food that has remained unexplored: …

Trade Secret Litigation And Free Speech: Is It Time To Restrain The Plaintiffs?, Elizabeth A. Rowe

Elizabeth A Rowe

Trade secret misappropriation litigation is often criticized for its negative effects on competition and speech. In particular, some accuse plaintiff trade secret owners of filing complaints for the purpose of running competitors out of business, or restraining individuals from discussing matters which are unfavorable. This Article enters the discussion to critically assess whether there is reason to consider restricting these actions. It concludes that trade secret litigation on the whole does not inappropriately impinge on speech rights. Even if certain cases come closer to offending defendants' free speech rights, these occasions and the concerns they raise are not unique to …

Saving Trade Secret Disclosures On The Internet Through Sequential Preservation, Elizabeth A. Rowe

Elizabeth A Rowe

When an employee discloses an employer's trade secrets to the public over the Internet, does our current trade secret framework appropriately address the consequences of that disclosure? What ought to be the rule that governs whether the trade secret owner has lost not only the protection status for the secret, but also any remedies against use by third parties? Should the ease with which the Internet permits instant and mass disclosure of secrets be taken into consideration in assessing the fairness of a rule that calls for immediate loss of the trade secret upon disclosure? Given that trade secret law …

A Positive Externalities Approach To Copyright Law: Theory And Application, Jeffrey L. Harrison

Jeffrey L Harrison

The basic goal of copyright law is, at a general level, fairly well understood, yet the law itself seems untethered to any consistent analytical approach designed to achieve that goal. This Article has two goals. The first is to explain in some detail what copyright law might look like if it reflected economic reasoning. The second is to put to the test the question of whether copyright law is as far out of sync with economic guidelines as White-Smith Music and Eldred suggest. In order to understand the economic approach and the inconsistency of copyright law, as well as the …

Rationalizing The Allocative/Distributive Relationship In Copyright, Jeffrey L. Harrison

Jeffrey L Harrison

It is the position of this article that the benefits of a regime of copyright law can be maintained while shedding at least some of the wastefulness of monopolistic competition. This article cuts against the grain of modem copyright law by making the case that a more substantive approach to the issues of creativity and authorship would lower costs, streamline the system, and raise the level of socially beneficial creativity. In Section II, I will elaborate on the allocative/distributive distinction and their interconnectedness. In Section III, I will focus on an enhanced creativity standard and argue that an elevated standard …

Deconstructing And Reconstructing Hot News: Toward A Functional Approach, Jeffrey L. Harrison, Robyn Shelton

Jeffrey L Harrison

Hot news is factual, time-sensitive information ranging from baseball scores to the outbreak of war. In recent years, hot news has found its own niche among legal scholars and courts. When deconstructed, though, hot news is simply information and, like most information, it has a public good character. The problem ultimately is that news is non-excludable and non-rivalrous – discoverers or creators of hot news cannot exclude others from using the news and hot news is not destroyed when used. This means it may be produced at levels that are less than optimal.The critical element in hot news is lead …

Trademark Law And Status Signaling: Tattoos For The Privileged, Jeffrey L. Harrison

Jeffrey L Harrison

The motivations for buying a good or service are highly complex. At the most basic level, people buy goods because of what the goods do or because of the aesthetic elements they embody. More technically, buyers derive utility from the "functional" quality of these goods. Another motivation relates to what the goods "say" about the buyer. Here, the good is a signaling device. Signaling is not new, of course, and can indicate anything from social class to political leanings. This Essay addresses the issue of whether it should be public policy to subsidize this type of person-to-person status signaling. This …

The Right Not To Use In Property And Patent Law, Oskar Liivak, Eduardo M. Peñalver

Eduardo M. Peñalver

In Continental Paper Bag Co. v. Eastern Paper Bag Co., the Supreme Court held (1) that patent owners have an absolute right not to practice their patent and (2) that even these nonpracticing patent owners are entitled to the liberal use of injunctive relief against infringers. Both of these holdings have been very important to the viability of patent assertion entities, the so-called patent trolls. In eBay Inc. v. MercExchange, L.L.C., the Supreme Court softened the injunction rule. In this Article, we argue that Congress or the Court should reconsider Continental Paper Bag’s embrace of an absolute right not to …

Teoría General De Los Signos Distintivos, Juan Carlos Riofrío Martínez-Villalba

Juan Carlos Riofrío Martínez-Villalba

La presente investigación delinea de forma sistemática una teoría general para todo género de signos distintivos. Para este propósito se vale de las investigaciones parciales que la propiedad industrial y otras ramas del derecho han realizado de algunos signos distintivos particulares, como las marcas, las indicaciones geográficas, los sellos de calidad, los nombres de pila, los nombres comerciales, entre otros. Se usa un método inductivo que recoge leyes, jurisprudencia y doctrina de varios lugares del mundo. En cuanto a la estructura, luego de una introducción, se determinar cuál es el conjunto de los signos distintivos que será el universo a …

The Rule Of Reason And The Scope Of The Patent, Herbert Hovenkamp

Herbert Hovenkamp

For a century and a half the Supreme Court has described perceived patent abuses as conduct that reaches "beyond the scope of the patent." That phrase, which evokes an image of boundary lines in real property, has been applied to both government and private activity and has many different meanings. It has been used offensively to conclude that certain patent uses are unlawful because they extend beyond the scope of the patent. It is also used defensively, however, to characterize activities as lawful if they do not extend beyond the patent's scope. In the first half of the twentieth century …

Patents V. Statutory Exclusivities In Biological Pharmaceuticals - Do We Really Need Both, Yaniv Heled

Yaniv Heled

Over the past decade or so, the United States has been the arena of a boisterous debate regarding the creation of a new regulatory framework for the approval of generic versions of biologics-based pharmaceutical products (also known as "biological products" and "biologics")--an important and increasingly growing class of drugs. The basic purpose of such a framework is to create a fast and less-costly route to FDA approval for biologics that would be similar or identical to already-approved biological products--typically ones that are sold on the market at monopoly rates--thereby allowing cheaper versions of such medicines to enter the market. One …

Drugged Out: How Cognitive Bias Hurts Drug Innovation, Cynthia M. Ho

Cynthia M Ho

No abstract provided.

Patent Case Filings: Trends In The Uspto Since The America Invents Act, Jodi Benassi

Jodi Benassi

No abstract provided.

Who Cares About The 85 Percent? Reconsidering Survey Evidence Of Online Confusion In Trademark Cases, Daniel Gervais, Julie M. Latsko

Daniel J Gervais

There is an assumption in US trademark law that the protection of consumer interests—a traditional normative pillar of trademark law--is best achieved by enjoining use by a defendant of a mark that creates a likelihood of confusion (with the plaintiff’s mark) for 15% or more (sometimes less) of relevant consumers. Courts often use survey evidence to determined existence of the likelihood of confusion. This article argues that the interests of all consumers are relevant in that determination. This means that determining the costs, if any, imposed on nonconfused consumers should also be part of the equation. This can be accomplished …

One Hundred Nos: An Empirical Analysis Of The First 100 Denials Of Institution For Inter Partes And Covered Business Method Patent Reviews, Jonathan R. K. Stroud, Jarrad Wood

Jonathan R. K. Stroud

Tasked in 2011 with creating three powerful new patent review trial regimes, the U.S. Patent and Trademark Office—through the efforts of their freshly empowered quasi-judicial body, the Patent Trial and Appeals Board—set to creating a fast-paced trial with minimal discovery and maximum efficiency. In the first two years of existence, the proceedings have proved potent, holding unpatentable many of the claims that reach decisions on the merits. Yet a small subsection of petitions never make it past the starting gate, resulting in wasted time and effort on the parts of petitioners—and likely sighs of relief from the rights-holders. Parties on …

Patents, Antitrust, And The Rule Of Reason, Herbert Hovenkamp

Herbert Hovenkamp

Antitrust law has historically immunized many patent agreements if they fell within the "scope of the patent." Three dissenting Justices in the Actavis case advocated this test: a pharmaceutical pay-for-delay settlement falls within the scope of the patent if it delays a competitor's entry no longer than the remaining life of the patent. In that case the patentee will not be obtaining any more than it would from a valid patent -- namely, the right to exclude infringers for the full patent term.

The "scope of the patent" test is not useful for defining the boundaries of antitrust immunity in …

Patent Litigation: Trends By Patent Assertion Entities, Jodi Benassi

Jodi Benassi

No abstract provided.

Intellectual Property, Marathons, And Other Running Events, John C. Zwisler

John C Zwisler

No abstract provided.

Investor-State Dispute Settlement In The Context Of ‘21st Century Trade Agreement’ Intellectual Property Chapters, Kimberlee G. Weatherall

Kimberlee G Weatherall

This background paper explains for an international trade and trade law audience why intellectual property lawyers are worried about the impact of investor-state dispute settlement on intellectual property law in particular.

기술이전 합의에 대한 Eu 및 한국의 경쟁법 집행, Hee-Eun Kim, Il Kang

Hee-Eun Kim

No abstract provided.

Inventing The Classical Constitution, Herbert Hovenkamp

Herbert Hovenkamp

One recurring call over a century of American constitutional thought is for return to a “classical” understanding of American federal and state Constitutions. “Classical” does not necessarily mean “originalist” or “interpretivist." Some classical views, such as the attempt to revitalize Lochner-style economic due process, find little support in the text of the federal Constitution or any of the contemporary state constitutions. Rather, constitutional meaning is thought to lie in a background link between constitution formation and classical statecraft. The core theory rests on the assumption of a social contract to which everyone in some initial position agreed. Like any …