Law Commons^™

Duty To Disclose: Dayco Products V. Total Containment, 7 J. Marshall Rev. Intell. Prop. L. 325 (2008), Tom Brody

UIC Review of Intellectual Property Law

The duty to disclose, as set forth by 37 C.F.R. § 1.56 and case law from the Federal Circuit, should be followed during the prosecution of all patent applications. This duty requires that inventors and their attorneys provide the United States Patent and Trademark Office with a list identifying relevant publications, patent applications, patents, legal proceedings, written rejections from patent examiners, and sales, both public and confidential. “Relevant” means relevant to the claims. The consequences of failing in this duty can be severe, namely, a holding of inequitable conduct. Inequitable conduct, in the patenting context, requires two prongs—materiality of the …

Trademarks And The Beijing Olympics: Gold Medal Challenges, 7 J. Marshall Rev. Intell. Prop. L. 433 (2008), Doris E. Long

UIC Review of Intellectual Property Law

There is no question that the Summer Olympics in Beijing pose a tremendous marketing opportunity. They also pose a great opportunity for the development of effective techniques for enforcing intellectual property rights. China has already enacted special regulations governing the protection of Olympic symbols and has established special regulations governing the enforcement of those regulations. Yet many of the cultural and political issues that impact China’s enforcement activities in other arenas (including counterfeiting and piracy of IP protected goods and services) remain problematic. Furthermore, while the Olympic symbols may be the subject of heightened protection, cultural perceptions of the differences …

The Paradox Of Confucian Determinism: Tracking The Root Causes Of Intellectual Property Rights Problem In China, 7 J. Marshall Rev. Intell. Prop. L. 454 (2008), Wei Shi

UIC Review of Intellectual Property Law

This article attempts to track China’s intellectual property rights (“IPR”) enforcement problem through exploring its fundamental institutional defects that fuels impunity of, or at least fails instilling an ethos hostile to, IPR infringements. By examining China’s philosophical and institutional predisposition, this article argues that counterfeiting and piracy are not problems caused by the Confucian ethics, as the conventional wisdom underscores, but rather, among other things, a unique political phenomenon resulting from the systemic dystrophy fundamental to the institutional development. This article concludes that, to a large extent, the IPR enforcement problems in China are attributed to its unique bureaucracy characterized …

Virtual China, 7 J. Marshall Rev. Intell. Prop. L. 469 (2008), Steven Hetcher

UIC Review of Intellectual Property Law

Although the Chinese government has devoted significant resources to censoring the online activities of its citizens, it may soon be facing a new challenge. Virtual-world computer games in which player controlled personas interact in cyberspace are growing in both sophistication and popularity. In such games, the very actions of the characters may represent banned themes which unfold in real time. These lucrative games do not lend themselves to the traditional text-based censorship techniques and site blocking may not be feasible for economic reasons. A deeper understanding of the threat virtual-world gaming represents to Chinese censorship efforts can be gained by …

Striking The "Rights" Balance Among Private Private Incentives And Public Fair Uses In The United States And China, 7 J. Marshall Rev. Intell. Prop. L. 488 (2008), Llewellyn Joseph Gibbons, Xiao Li Wang

UIC Review of Intellectual Property Law

Any economically efficient intellectual property rights system must contain a balance between the required creativity and innovation needed to obtain the intellectual property rights and the economic investment needed to obtain that level of creativity. Most intellectual property rights systems are uniform across all industries. However, this results in inefficiencies in certain industries that may need more or less intellectual property rights protection than others. Governments that attempt to correct the inefficiencies can create long-term consequences in the quality or quantity of new creative works. On one hand, granting more intellectual property rights to certain industries may result in spoilage …

A Comparison Between The Judicial And Administrative Routes To Enforce Intellectual Property Rights In China, 7 J. Marshall Rev. Intell. Prop. L. 529 (2008), Jeffery M. Duncan, Michelle A. Sherwood, Yuanlin Shen

UIC Review of Intellectual Property Law

Over the past two decades, a sophisticated intellectual property law system has developed in support of China’s transition to economic superpower. In today’s global economy, it is crucial that international marketers understand how to navigate this new system to best protect their intellectual property rights. China allows for two distinct procedures by which intellectual property assets may be protected, one judicial and the other administrative. Each choice holds distinct advantages and disadvantages for a party seeking to enforce its rights. Making the best choice involves familiarization with the particulars of each procedure and gauging the likelihood of a successful outcome. …

The Controversy Surrounding Continuing Applications And Requests For Continued Examination, 7 J. Marshall Rev. Intell. Prop. L. 545 (2008), Scott D. Barnett

UIC Review of Intellectual Property Law

On August 21, 2007, the USPTO published new rules altering the manner in which continuing applications and requests for continued examination could be filed. These new rules represented a drastic departure from traditional practice, and consequently, generated a considerable reaction from the patent community. While some members of the patent community supported the new rules, many others felt that the rules would be insufficient in promoting the USPTO’s goals, and served mainly as an unnecessary roadblock to good-faith patent prosecution. Prior to the rules going into effect, they were challenged in the case Tafas v. Dudas. In Tafas, the district …

Why Pay For What's Free?: Minimizing The Patent Threat To Free And Open Source Software, 7 J. Marshall Rev. Intell. Prop. L. 595 (2008), Kirk D. Rowe

UIC Review of Intellectual Property Law

The growing popularity of free and open source software as a viable alternative to proprietary software has made it an unwitting participant in an inevitable intellectual property law confrontation that will pit patent against copyright. Where proprietary software is primarily protected by patents, which seek to exclude others from the use of specific ideas, open source software utilizes a variation of copyright protection, which seeks to force the inclusion rather than the exclusion of third parties’ access to expression. Because these methods of protection are as different as the software models themselves, it is difficult to predict the outcome of …

Copyright Misuses, Fair Use, And Abuse: How Sports And Media Companies Are Overreaching Their Copyright Protections, 7 J. Marshall Rev. Intell. Prop. L. 621 (2008), Cory Tadlock

UIC Review of Intellectual Property Law

A recent FTC complaint has generated questions about the legality and effects of blanket copyright warnings issued by large sports and media companies. Copyright warnings from the NFL, MLB, and major motion picture studios often assert that no use whatsoever of their materials can be made without express permission, contrary to several provisions of U.S. copyright law. This comment proposes limiting the content and language of such warnings so consumers have a clearer view of what copyright law allows, and are not intimidated into foregoing their rights to use protected works. Exceptions like fair use and the idea-expression dichotomy prevent …

Protection Of U.S. Trade Secret Assets: Critical Amendments To The Economic Espionage Act Of 1996, 7 J. Marshall Rev. Intell. Prop. L. 656 (2008), R. Mark Halligan

UIC Review of Intellectual Property Law

In order to protect the economic interests of the United States, the Economic Espionage Act was enacted in 1996. Although intended to prevent and deter trade secret theft, the EEA is limited to criminal prosecutions. Critical amendments to the EEA are required to create a civil cause of action in the new information-based economy and the international marketplace. The following proposed amendments to the EEA provide a federal civil cause of action, allowing companies to protect trade secret assets and to ensure the continued growth and protection of trade secret assets in the international marketplace.

Post-Quanta, Post-Sale Patentee Controls, 7 J. Marshall Rev. Intell. Prop. L. 682 (2008), Harold C. Wegner

UIC Review of Intellectual Property Law

In Quanta Computer, Inc. v. LG Electronics, Inc., the Supreme Court recalibrated the balance between the rights of a patentee to contractually control the post-sale transfer and the use of patented goods. Specifically, the Court extended the doctrine of patent exhaustion to cover the exhaustion of patents not recited in the license, as well as the practice of technology that does not infringe any patent, but which can only be used in a manner by customers that would infringe a patent. While Quanta arose out of facts concerning computer technology, the implications of this decision will be widespread, permeating diverse …

Honoring Trademarks: The Battle To Preserve Native American Imagery In The National Collegiate Athletic Association, 7 J. Marshall Rev. Intell. Prop. L. 735 (2008), Ian Botnick

UIC Review of Intellectual Property Law

On August 5, 2005, the National Collegiate Athletic Association introduced its plan to end the use of Native American mascots, nicknames and imagery. Schools were required to change their offensive nicknames and mascots and were forced to stop using trademarks bearing Native American imagery. The NCAA ban presents the question of whether schools affected by the ban can bring a trademark action against the NCAA. One interpretation of trademark law provides a school with no redress because the NCAA has not created a competing mark. However, the other interpretation of trademark law provides a school with a valid trademark claim …

Must The Jury Reach A Verdict? The Constitutionality Of Eliminating Juries In Patent Trials By Creating An Article I Tribunal, 7 J. Marshall Rev. Intell. Prop. L. 754 (2008), Daniel P. Sullivan

UIC Review of Intellectual Property Law

The February 2007 jury verdict against Microsoft totaling $1.52 billion marked the largest in a patent case ever, following the prevailing trend of juries awarding extraordinarily high damages. Because patent law deals with complex technology and complicated issues of fact and law, and because empirical evidence concludes that juries have significant biases in favor of patentees and against alleged infringers, this comment calls into question whether or not twelve lay persons are sufficiently equipped to handle patent trials. In lieu of juries rendering verdicts in patent trials – and even in lieu of U.S. District Court judges adjudicating patent trials …

Ksr And Standards Of Inventive Step: A European View, 8 J. Marshall Rev. Intell. Prop. L. 14 (2008), Paul Cole

UIC Review of Intellectual Property Law

The United States Supreme Court decision in KSR International Co. v. Teleflex Inc. raises many questions, most importantly, how the test for obviousness applied in the United States (“U.S.”) now compares with that applied in the United Kingdom (“U.K.”) and by the European Patent Office (“EPO”). In seeking to answer those questions, this article explores the history of obviousness and the tests for inventive step in the United States, the U.K. and the European Patent Office. A comparison of the United States Patent and Trademark Office and EPO examination guidelines, suggests that it would have been a good idea to …

Intellectual Property Enforcement: A Reality Gap (Insufficient Assistance, Ineffective Implementation)?, 8 J. Marshall Rev. Intell. Prop. L. 47 (2008), Timothy P. Trainer

UIC Review of Intellectual Property Law

The World Trade Organization’s (“WTO”) Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) promised to standardize world-wide intellectual property rights (“IPR”) enforcement procedures, and thus, facilitate trade and commerce between member nations. However, the TRIPS implementation transition of many less developed and developing nations has resulted in a much lower IPR enforcement standard than the drafters of TRIPS envisioned. This, coupled with increased world-wide trade in counterfeit goods, has created friction between the developing nations with lower IPR enforcement and the developed nations with higher IPR enforcement. Consequently, many nations, including the United States, have entered into Free Trade …

What The Story Of The Invention Of The Transistor Teaches Us About 21st Century Patent Practice, 8 J. Marshall Rev. Intell. Prop. L. 80 (2008), Lawrence B. Ebert

UIC Review of Intellectual Property Law

In 1947, scientists at Bell Laboratories internally disclosed a remarkable new invention that would later become known as the “transistor.” Following the initial disclosure, Bell Labs methodically planned and facilitated the patenting, publication, and licensing of this new technology. The manner in which Bell Labs handled the disclosure and licensing of this pioneering invention provides a template that present-day inventors would be well-advised to emulate.

Sacking Super Sack: Using Existing Rules To Prevent Patentees From Fleeing An Improvident Patent Infringement Lawsuit, 8 J. Marshall Rev. Intell. Prop. L. 90 (2008), Vangelis Economou

UIC Review of Intellectual Property Law

The Federal Circuit’s Super Sack decision is striking: a patentee’s covenant-not-to-sue for infringement divested the court of subject-matter jurisdiction in deciding the invalidity counterclaim. However, the intent and spirit of the Declaratory Judgment Act and of Federal Rule of Civil Procedure 41(a)(2) suggest that Super Sack may have missed the mark. An in-depth analysis of the Declaratory Judgment Act, Federal Rule of Civil Procedure 41(a)(2), and post-Super Sack patent cases reveals numerous policy reasons for the Federal Circuit to overturn Super Sack.

State Sovereign Immunity: States Use The Federal Patent Law System As Both A Shield And A Sword, 8 J. Marshall Rev. Intell. Prop. L. 134 (2008), Nicholas Dernik

UIC Review of Intellectual Property Law

A number of states currently rely on Eleventh Amendment immunity to defend against infringement actions by the patentees during research and development of new technologies. Some of these states then evoke the federal patent system to exclude private parties from infringing state patented subject matter. Ultimately, states enjoy all of the benefits of the federal patent system but states are not limited by any of its restrictions. This comment proposes a remedy to the states’ unfair tactical advantage of using the federal patent system as both a shield and a sword.

An Immoral Fight: Shielding Moral Rights With First Amendment Jurisprudence When Fair Use Battles With Actual Malice, 8 J. Marshall Rev. Intell. Prop. L. 190 (2008), Mark A. Petrolis

UIC Review of Intellectual Property Law

Moral rights give an artist personal rights to her work. Because an artist puts her personality, spirit, and soul into the creation of her work, her honor and reputation may be harmed if her works are mistreated. In 1990, the Visual Artists Rights Act incorporated moral rights into U.S. copyright law. However, fair use became an absolute defense to moral rights violations. This comment proposes that fair use should not be an absolute defense, and applies First Amendment jurisprudence developed from defamation law to both fair use and moral rights. Defamation shares similarities with both. Like moral rights, defamation law …

Freedom Of The Press 2.0, Edward Lee

Edward Lee

No abstract provided.

Freedom Of Expression® Als Eingetragenes Markenzeichen/Trademarking Freedom Of Expression®, Kembrew Mcleod

Kembrew McLeod

No abstract provided.

Introduction: The Future Of Patent Reform (Symposium), Edward Lee

Edward Lee

No abstract provided.

Trademarking Nanotechnology: Nano-Lies & Federal Trademark Registration, Jason Du Mont

Jason John Du Mont

No abstract provided.

Freedom Of The Press 2.0, Edward Lee

Edward Lee

No abstract provided.

Practice Makes Perfect? An Empirical Study Of Claim Construction Reversal Rates In Patent Cases, David Schwartz

David L. Schwartz

No abstract provided.

Humor In Music, Kembrew Mcleod

Kembrew McLeod

No abstract provided.

Warming Up To User-Generated Content, Edward Lee

Edward Lee

The most significant copyright development of the twenty first century has not arisen through any law enacted by Congress or opinion rendered by the Supreme Court. Instead, it has come from the unorganized, informal practices of various, unrelated users of copyrighted works, many of whom probably know next to nothing about copyright law. In order to comprehend this paradox, one must look at what is popularly known as "Web 2.0," and the growth of user-generated content in blogs, wikis, podcasts, "mashup" videos, and social networking sites like Facebook and MySpace. Although users often create new works of their own, sometimes …

Everything Is Patentable, Michael Risch

Michael Risch

The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule - that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentability - namely category, utility, novelty, non-obviousness, and specification - then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena. The primary virtue of the proposed rule is that it provides a more rigorous and consistent doctrinal framework for determining patentability. …

Debunking The Top Three Myths Of Digital Sampling: An Endorsement Of The Bridgeport Music Court's Attempt To Afford "Sound" Copyright Protection To Sound Recordings, Tracy Reilly

Tracy Reilly

Two-Factor Fair Use?, Joseph P. Liu

Joseph P. Liu