Intellectual Property Law Commons^™

Improving Patent Quality Through Post-Grant Claim Amendments: A Comparison Of European Opposition Proceedings And U.S. Post-Grant Proceedings, Jennifer Turchyn

Michigan Law Review

Congress enacted the Leahy-Smith America Invents Act to encourage innovation, strengthen U.S. patents, and achieve greater uniformity with foreign patent systems. The America Invents Act introduced two new post-grant patent validity proceedings: inter partes review and post-grant review. The new U.S. proceedings are similar to European opposition proceedings, but there are significant differences in the extent of the patent owner’s ability to amend claims, the patent’s claim construction, the patent owner’s evidentiary burden, and the procedural requirements. The U.S. proceedings result in a very limited opportunity for amendment and a high percentage of invalidated patents. In contrast, European opposition proceedings …

An Administrative Meter Maid: Using Inter Partes Review And Post-Grant Review To Curb Exclusivity Parking Via The "Failure To Market" Provision Of The Hatch-Waxman Act, Brian T. Apel

Michigan Law Review

Congress created the unique Hatch-Waxman framework in 1984 to increase the availability of low-cost generic drugs while preserving patent incentives for new drug development. The Hatch-Waxman Act rewards generic drug companies that successfully challenge a pharmaceutical patent: 180 days of market exclusivity before any other generic firm can enter the market. When a generic firm obtains this reward, sometimes drug developers agree to pay generic firms to delay entering the market. These pay-for-delay agreements give rise to exclusivity parking and run counter to congressional intent by delaying full generic drug competition. The Medicare Prescription Drug, Improvement, and Modernization Act created …

Using Public Disclosure As The Vesting Point For Moral Rights Under The Visual Artists Rights Act, Elizabeth M. Bock

Michigan Law Review

In 2010, the Court of Appeals for the First Circuit confronted the novel question of when moral rights protections vest under the Visual Artists Rights Act. In Massachusetts Museum of Contemporary Art Foundation, Inc. v. Bichel, the First Circuit determined that the protections of the Visual Artists Rights Act begin when a work is "created" under the Copyright Act. This Note argues that this decision harms moral rights conceptually and is likely to result in unpredictable and inconsistent decisions. This Note proposes instead that these statutory protections should vest when an artist determines that his work is complete and presents …

Unsettling Drug Patent Settlements: A Framework For Presumptive Illegality, Michael A. Carrier

Michigan Law Review

A tidal wave of high drug prices has recently crashed across the U.S. economy. One of the primary culprits has been the increase in agreements by which brand-name drug manufacturers and generic firms have settled patent litigation. The framework for such agreements has been the Hatch-Waxman Act, which Congress enacted in 1984. One of the Act's goals was to provide incentives for generics to challenge brand-name patents. But brand firms have recently paid generics millions of dollars to drop their lawsuits and refrain from entering the market. These reverse-payment settlements threaten significant harm. Courts nonetheless have recently blessed them, explaining …

Pathological Patenting: The Pto As Cause Or Cure, Rochelle Dreyfuss

Michigan Law Review

The Patent Act was last revised in 1952. The hydrogen bomb was exploded that year, vividly demonstrating the power of the nucleus; in the ensuing postwar period, the Next Big Thing was clearly the molecule. Novel compounds were synthesized in the hopes of finding new medicines; solid-state devices exploited the special characteristics of germanium and other semiconductors; as investments in polymer chemistry soared, advice to the college graduate soon boiled down to "one word ... just one word[:] ... Plastics." Over the next half-century, things changed dramatically. "Better living through chemistry" has begun to sound dated (if not sinister). Genomics …

Copyright's Communications Policy, Timothy Wu

Michigan Law Review

There is something for everyone to dislike about early twenty-first century copyright. Owners of content say that newer and better technologies have made it too easy to be a pirate. Easy copying, they say, threatens the basic incentive to create new works; new rights and remedies are needed to restore the balance. Academic critics instead complain that a growing copyright gives content owners dangerous levels of control over expressive works. In one version of this argument, this growth threatens the creativity and progress that copyright is supposed to foster; in another, it represents an "enclosure movement" that threatens basic freedoms …

Toward A "New Deal" For Copyright In The Information Age, Pamela Samuelson

Michigan Law Review

Jessica Litman believes the public needs a very good copyright lawyer, and if I have not mistaken her intentions, she is volunteering for the job (pp. 70-73). A century of Congressional deference to industry-negotiated compromises has produced, she argues, a copyright law that is both incomprehensible and unfair. This incomprehensibility might be tolerable if copyright law governed only commercial relations among industry participants, all of whom have copyright counsel. To the extent that copyright law applies to the conduct of ordinary persons, its incomprehensibility presents serious difficulties. Moreover, to the extent that copyright law makes illegal many ordinary activities of …

The Copyright Act Of 1976 And Prejudgment Interest, Jon M. Powers

Michigan Law Review

This Note argues that prejudgment interest should be presumptively available on damages-plus-profits awards under section 504(b) but should not be available for statutory damages under section 504(c). Part I argues that Supreme Court precedent suggests that the explicit reference to interest found in the Patent Act does not prevent courts from awarding prejudgment interest under the 1976 Copyright Act. Part II asserts that the 1976 Copyright Act's silence regarding prejudgment interest does not represent a congressional choice to exclude this remedy and that, in the face of this silence, the underlying purposes of section 504 should determine the propriety of …

Rhetoric And Reality In Copyright Law, Stewart E. Sterk

Michigan Law Review

My first objective in this article is to explore the gulf between copyright rhetoric and copyright reality. After examining copyright rhetoric, the article demonstrates how neither the need to generate creative activity nor the desire to reward deserving authors provides a plausible justification for current copyright doctrine.

Why, then, does copyright doctrine continue to expand? The concluding section suggests some answers. Interest-group politics provides an obvious answer and one well-substantiated by the history of copyright legislation. But the story does not end with interest-group politics. Instead, I suggest that the nation's elite, including its lawmakers, has a stake in believing …

Does A Copyright Coowner's Duty To Account Arise Under Federal Law?, Craig Y. Allison

Michigan Law Review

This Note discusses both the source of the accounting rule and the proper forum for applying the rule. Part I provides a general history of joint ownership and the duty to account and suggests that the number of litigants presenting joint ownership claims will probably increase. Part II discusses joint ownership case law chronologically. This Part shows that the case law is consistent with the view that the duty to account was a creation of the federal courts. Part III argues that the accounting rule is federal common law and that federal jurisdiction necessarily follows for all copyright accounting cases. …

Copyright, Computer Software, And Work Made For Hire, Matthew R. Harris

Michigan Law Review

Prior to the Supreme Court's 1989 decision in Community for Creative Non-Violence v. Reid, the Circuits had disagreed over the question of whether independent contractors could qualify as "employees" under the doctrine. The Fifth, Ninth, and D.C. Circuits defined "employee" narrowly, thereby excluding the majority of commissioned works from potential work for hire status. Applying a much broader definition of the term, the Second and Seventh Circuits included virtually all commissioned works as work for hire. The disagreement was not surprising, since the copyright statute does not include a definition of the term, and the legislative history fails to …

The Availability Of Jury Trials In Copyright Infringement Cases: Limiting The Scope Of The Seventh Amendment, Andrew W. Stumpff

Michigan Law Review

This Note argues that statutory copyright damages are properly regarded as equitable and hence that no right to a jury trial exists in cases brought to recover such damages. More generally, the Note maintains that the seventh amendment's distinction between equitable and legal causes of action has produced irrational consequences, and proposes that "legal" issues be defined narrowly so as to limit the scope of the seventh amendment. Part I analyzes the debate over statutory copyright damages, concluding that historical and statutory construction arguments require these damages to be construed as legal. Part II examines some of the problems that …

Patents - Standard Of Invention - Effects Of Sections 103 And 282 Of Patent Act Of 1952, John F. Powell S.Ed.

Michigan Law Review

Defendant counterclaimed for patent infringement in a declaratory judgment action. The trial court, holding the patent invalid for lack of "invention," dismissed the counterclaim. On appeal, held, reversed. The patent in question was valid, this conclusion being based on an independent study of the pertinent prior art and on the additional factors of industry acquiescence, commercial success, and the statutory presumption of validity of a duly issued patent. Georgia-Pacific Corp. v. United States Plywood Corp., (2d Cir. 1958) 258 F. (2d) 124, cert. den. 27 U.S. LAW WEEK 3147 (1958).

Atomic Energy - Patents - Patent Aspects Of Domestic Law, Euratom, And The International Atomic Energy Agency, Peter H. Hay

Michigan Law Review

With the growing importance of atomic energy, conventional legal concepts must be adapted and remodeled to fit new situations. In the area of patent law, the traditional notion that the inventor's reward should be a legal monopoly in the invention, in the form of a patent, has to be reconciled with the need for wide dissemination of technical information. The need for secrecy, for government control over weapons, and for cooperation with other countries affects the atomic patent system. These factors are reflected in the Atomic Energy Act of 1954 and in the agreements establishing two international organizations concerned with …

Federal Employee Invention Rights - Time To Legislate, Marcus B. Finnegan, Richard W. Pogue

Michigan Law Review

It is the purpose of this article to review judicial standards applicable to the determination of rights in inventions made by employees of the federal government, to note statutory provisions affecting the problem, to examine the content and effect of the present Executive program for determining such rights, to review and evaluate two fundamental and conflicting theories in this field, and to propose legislation establishing appropriate standards and procedures. This topic is believed to have general interest because, in addition to the urgencies suggested above, the problem touches some of the basic legal philosophy underlying the United States patent system.

Trademarks - Extraterritorial Application Of The Lanham Act, William R. Luney S.Ed.

Michigan Law Review

Plaintiff, an American corporation, had manufactured and sold women's undergarments in the United States and Canada since 1917, under a U.S. registered trademark, "Vanity Fair." Defendant, a Canadian corporation, had registered the same trademark in Canada in 1915, and for this reason plaintiff's application for a Canadian trademark was denied in 1919. From 1945 to 1953, defendant purchased plaintiff's trademarked goods for resale in Canada. In 1953, defendant began selling goods of Canadian manufacture with its own Vanity Fair trademark, and threatened its competitors in Canada with infringement suits if they continued to sell plaintiff's trademarked goods. In an action …

Constitutional Law - Commerce Clause - Federal Jurisdiction In Trade-Mark Infringement Proceedings Under The Lanham Act, Richard R. Dailey

Michigan Law Review

Plaintiff's trade-mark, "Minute Maid," had been registered under the Lanham Act in 1952 and had been used in interstate commerce in connection with the sale of frozen fruit juice concentrates since that time. Defendant's trade-mark consisted in part of the words "Minute Made." Defendant used its mark wholly within the State of Florida in the processing and sale of frozen meat products. Both plaintiff and defendant were Florida corporations. In a suit for trade-mark infringement, jurisdiction of the federal district court depended. on the provisions of the Lanham Act. The complaint alleged damage to plaintiff's good will established in interstate …

Borderland - Where Copyright And Design Patent Meet, Richard W. Pogue

Michigan Law Review

Copyright law and design patent law contemplate basically different objects of protection. Yet at the outer fringes of these types of protection certain concepts overlap to form a rather undefined borderland in which it is difficult to say what law is applicable-copyright law, patent law, neither, or both. It is the purpose of this paper to explore this borderland area in the light of traditional copyright and patent law principles, with attention given to policy considerations involved, and to offer suggestions toward drawing a sharper boundary between the two.

Woe Unto You Trade-Mark Owners, Julius R. Lunsford, Jr.

Michigan Law Review

THE new Trade-Mark Act,1 widely heralded as giving added protection to trade-mark owners, has in its nearly four years of operation resulted, in several spectacular instances, in narrowing the rights conferred by the registration and use of trade-marks. Text author Rudolph Callmann remarked after the act's first birthday: "Despite all the efforts of the bar, our courts still cling to the familiar anachronisms."2 Where do trade-mark owners stand today? The Supreme Court has to date failed to answer this question, and the federal courts have refused to consider the import of the new legislation. Many commentators, attorneys and scholars thought …

The Compulsory Manufacturing Provision-An Anachronism In The Copyright Act, Clinton R. Ashford S. Ed.

Michigan Law Review

The protection afforded foreign authors under the United States Copyright Act at the present time is subject to stringent restrictions. Copyright will not be granted to a person who is neither a citizen nor a resident of the United States unless he complies with a great many formalities, and, in addition, conforms with the compulsory manufacturing requirement. It is the object of this comment to examine the manufacturing provision, section 16 of the Copyright Law, and to show why it should be deleted from the act.

Compulsory Licensing By Judicial Action: A Remedy For Misuse Of Patents, Neal Seegert

Michigan Law Review

Having viewed the fundamental problems, it is pertinent to outline some of the alleged abuses of the American patent system as it operates in our modern business and industrial economy and to canvass some of the proposed remedies. First are abuses that might be termed attempts to extend the duration of the patent monopoly. These stem mainly from the procedural aspects of the patent laws. Foremost among them is the problem of long pendency of applications, particularly the dilatory tactics that are possible under the law, which postpone issuance of the patent, thus extending the time duration of the patent …

A Review Of The New Trade-Mark Manual, Lenore B. Stoughton

Michigan Law Review

The United States Trade-Mark Act of July 5, 1946, is a statute designed to be of far-reaching effect. The appraisal of the statute must be made in the light of that fact rather than in the light of the confusion and disputation which have arisen as to the proper interpretation of many of its provisions.

One might have supposed that an act which had been subjected to intensive study and extensive revision over so many years before its final enactment would emerge in complete clarity. Such has not proved to be the case; and it should not have been expected. …