Intellectual Property Law Commons^™

Valuation And Assessment Of Patents And Patent Portfolios Through Analytical Techniques, 6 J. Marshall Rev. Intell. Prop. L. 463 (2007), Michael S. Kramer

UIC Review of Intellectual Property Law

Patents today are essential assets for many companies, especially in high technology industries. Valuation of a patent is often essential in reaching an informed business decision on a matter involving technology. However, the inherent uniqueness of a patent typically makes value assessments complex, costly, and susceptible to inaccuracies. This article presents efficient and cost-effective analytical methods for valuing patents and patent portfolios.

A Memoir Of The First Chief Judge By The Fifth Chief Judge, 6 J. Marshall Rev. Intell. Prop. L. 310 (2007), Paul R. Michel

UIC Review of Intellectual Property Law

No abstract provided.

A New Day Yesterday: Benefit As The Foundation And Limit Of Exclusive Rights In Patent Law, 6 J. Marshall Rev. Intell. Prop. L. 373 (2007), N. Scott Pierce

UIC Review of Intellectual Property Law

The exclusive right afforded by patent protection to an inventor is in exchange for contribution to the public domain of an enabling disclosure of the subject matter claimed. The requirement of novelty and the prohibition against infringement are both based on statute, and linked in well-established judicial precedent as “that which infringes, if later, anticipates, if earlier.” See, e.g., Pairpearl Products, Inc. v. Joseph H. Meyer Bros., 58 F.2d 802 (D.C.D.M.S.D. 1932). Grant of a limited period of exclusivity to an inventor and interpretation of the scope of the right given in exchange for complete disclosure have engendered the judicial …

Issues Facing Legal Practitioners In Measuring Substantiality Of Contemporary Musical Expression, 6 J. Marshall Rev. Intell. Prop. L. 489 (2007), Alan Korn

UIC Review of Intellectual Property Law

Modern composers of jazz, avant-garde, hip-hop and world music increasingly rely upon unconventional sounds and advances in recording technology to create new and innovative musical works. As one might expect, courts now face the difficult challenge of applying traditional copyright analysis to these contemporary works to determine whether they embody protectable expression. This article highlights some of the issues specific to innovative musical works and the split among the U.S. Circuit Courts in how to measure the substantiality of these works. Copyright practitioners and composers alike should be aware of these challenges in evaluating the extent of copyright protection for …

A Two-Front Assault On The Stem Cell Patents, 6 J. Marshall Rev. Intell. Prop. L. 501 (2007), Dillon Beardsley

UIC Review of Intellectual Property Law

The recent establishment of human embryonic stem cell lines has inspired a new revolution in therapeutic treatments and cures for injuries or disease. Individual states have begun to circumvent the lack of federal funding by independently raising monetary support for the research. The patentee, The Wisconsin Alumni Research Foundation, has reminded those hoping to benefit from the state funding that the Foundation will require royalties for the commercial use of its patented technology. The loss of state taxpayer money to the patent holder ignited a challenge on the patents themselves. Interest groups requested a reexamination of the stem cell patents …

Will Youtube Sail Into The Dmca's Safe Harbor Or Sink For Internet Piracy?, 6 J. Marshall Rev. Intell. Prop. L. 550 (2007), Michael Driscoll

UIC Review of Intellectual Property Law

Is YouTube, the popular video sharing website, a new revolution in information sharing or a profitable clearing-house for unauthorized distribution of copyrighted material? YouTube’s critics claim that it falls within the latter category, in line with Napster and Grokster. This comment, however, determines that YouTube is fundamentally different from past infringers in that it complies with statutory provisions concerning the removal of copyrighted materials. Furthermore, YouTube’s central server architecture distinguishes it from peer-to-peer file sharing websites. This comment concludes that any comparison to Napster or Grokster issuperficial, and overlooks the potential benefits of YouTube to copyright

A Foreword To: A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 590 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court adhered to its prior views that a constitutional standard applied in determining whether an invention is “obvious.” Further, the Federal Circuit’s teaching-suggestion-motivation (“TSM”) test, which stipulated that an invention is not obvious unless some teaching, suggestion, or motivation to combine the elements of the invention exists, cannot replace or limit the constitutional standard. KSR eliminated the Federal Circuit’s requirement, holding that the TSM test is only one way to find an invention obvious and that a common sense approach should be used. KSR also noted that all persons skilled in …

A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 595 (2007), William T. Mcgrath, Edward D. Manzo, James F. Holderman, Matthew F. Kennelly, Meredith Martin Addy, Patrick G. Burns, Bradford P. Lyerla, George P. Mcandrews, David L. Schwartz, Constantine L. Trela Jr.

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court considered what test applies to determine whether an invention is “obvious.” The Court ruled that the teaching-suggestion- motivation (“TSM”) test, developed over the years by the Federal Circuit to defend against hindsight reconstruction, is only one method a court or patent examiner may use when addressing obviousness. The Court’s holding overturned Federal Circuit precedent, which required a finding of non-obviousness unless a teaching, suggestion, or motivation to combine was established. The panel discussion brings together leadings jurists; former law clerks of the Supreme Court, the Federal Circuit, and other courts; …

Leveling The Patent Playing Field, 6 J. Marshall Rev. Intell. Prop. L. 636 (2007), Peter N. Detkin

UIC Review of Intellectual Property Law

While large companies continue to thrive on pervasive technological advancements, small inventors have been limited by their inability to exploit their patents. Patent portfolio licensing created a pioneering way to increase the utility of patents; however, in practice this business model has typically favored powerful players in the technology industry. A new market has emerged based on innovative business models which favor small inventors. This market seeks to aggregate and distribute patents to companies that infringe on intellectual property or that want to draw on it as a source. By matching patent owners with patent users, this market may enable …

Avoiding The "Fifth Beatle" Syndrome: Practical Solutions To Minimizing Joint Inventorship Exposure, 6 J. Marshall Rev. Intell. Prop. L. 645 (2007), Andrew B. Dzeguze

UIC Review of Intellectual Property Law

Inventorship disputes appear to be proliferating. This is not surprising in light of the 1993 relaxation of the standards for joint inventorship. Although the vast majority of claims fail, the handful of cases indicating successful inventorship claims can be quite lucrative, which makes it reasonable to expect the upward trend in number of cases to continue. Moreover, the lack of clarity on certain key aspects of inventorship law is apt to encourage further claims. This article begins, as a cautionary tale of sorts: an analysis of the unclear aspects of inventorship law. This includes the as yet unresolved variations in …

Patent Reform, Injunctions, And Equitable Principles: A Triangle Of Changes For The Future, 6 J. Marshall Rev. Intell. Prop. L. 671 (2007), Matthew J. May

UIC Review of Intellectual Property Law

In eBay v. MercExchange, the Supreme Court held the Federal Circuit could no longer utilize their long-standing “general rule” that an injunction should follow the finding of patent infringement. The Supreme Court held that courts should utilize a set of rules known as the four-factor test, which utilizes traditional principals of equity. Concurrently, Congress has been debating patent reform with one of the topics being the use of injunctive relief as a remedy for patent infringement. These two changes could potentially have a significant effect on the technological and economic landscape of patents in the future. It now may be …

What The Pct Can Learn From Two African Systems, 6 J. Marshall Rev. Intell. Prop. L. 693 (2007), Zion H. Park

UIC Review of Intellectual Property Law

The purpose and goal of patent law is to help society by encouraging innovation. While the Patent Cooperation Treaty (“PCT”) has made international patent procurement easier and more accessible, the current system is still plagued with redundancies and inefficiencies. These flaws are barriers to patent offices and individual patentees, hindering innovation and the growth of developing nations. Ultimately, these problems are hindrance to society, contradicting the goal of patent law. This comment compares the PCT to two similar but less prominent African regional patent systems: African Regional Industrial Property Organization (“ARIPO”) and African Industrial Property Convention (“OAPI”). ARIPO and OAPI …

Injunctions In Patent Cases After Ebay, 7 J. Marshall Rev. Intell. Prop. L. 44 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

The United States Constitution gives Congress the power to grant to inventors exclusive rights to their inventions. Accordingly, 35 U.S.C. § 154(a) states that every patent grants to the patentee exclusive rights to make and use their inventions, and 35 U.S.C. § 283 provides that a court may grant injunctions in accordance with the principles of equity. The Federal Circuit developed a general standard that a permanent injunction should issue, except in extraordinary standards, after a patent is judicially declared valid. However, in May 2006, the Supreme Court overruled that standard in eBay Inc. v. MercExchange, L.L.C., declaring that the …

Painstaking Semantics: Selecting Website Trade Dress Elements To Survive A Copyright Preemption Challenge, 7 J. Marshall Rev. Intell. Prop. L. 97 (2007), J. Scott Anderson

UIC Review of Intellectual Property Law

The intersection between trade dress law and copyright law must be understood when seeking trade dress protection for elements that may fall within the subject matter of copyright. The technological elements that create the look and feel of a website may include both trade dress elements and copyrightable works. Website owners are beginning to rely on the protections of trade dress law instead of or in addition to copyright law when the look and feel of a website is imitated by a competitor. Asserting trade dress protection for website look and feel requires careful pleading and will provoke a variety …

The Preserve Access To Affordable Generics Act: Will Congress's Response To Reverse Payment Patent Settlements Enhance Competition In The Pharmaceutical Market?, 7 J. Marshall Rev. Intell. Prop. L. 150 (2007), Reza Bagherian

UIC Review of Intellectual Property Law

In response to the Supreme Court’s failure to grant writ of certiorari to Federal Trade Commission v. Schering-Plough Corp., Congress proposed the Preserve Access to Affordable Generics Act to once again amend the Hatch-Waxman Act of 1984. Traditionally, the courts have used two antitrust standards, the rule of reason and the per se illegal rule, to determine whether a reverse payment patent settlement restrains trade. In Schering-Plough, the Eleventh Circuit articulated a third standard and held the reverse payment settlements between a pioneer drug company and two generic drug companies valid. This article proposes that traditional analysis of the rule …

Step-Plus-Function: Just What Have We Stepped Into?, 7 J. Marshall Rev. Intell. Prop. L. 117 (2007), Paul R. Kitch

UIC Review of Intellectual Property Law

While most attorneys have heard of means-plus-function, most have not heard of or given much thought to its sibling, step-plus-function. Both claims arise under the same section of the patent laws, namely 35 U.S.C. § 112, ¶ 6. While means-plus-function limitations are directed to structural limitations and most often appear in apparatus claims, step-plus-function limitations are directed to steps and most often appear in method claims. Means-plus-function limitations generally arise when the patentee chooses to recite a “means for” performing a specified or recited function rather than reciting the structure or material that performs that function. Step-plus-function limitations, on the …

Yesterday's Technology, Tomorrow: How The Government's Treatment Of Intellectual Property Prevents Soldiers From Receiving The Best Tools To Complete Their Mission, 7 J. Marshall Rev. Intell. Prop. L. 171 (2007), Daniel Larson

UIC Review of Intellectual Property Law

The Department of Defense is currently entrenched in a procurement system that does not respect the intellectual property of its contractors. This, in turn, has led to research and development firms’ increasing reluctance to contract with the Department of Defense. As a result of this reluctance, the United States has increasingly relied upon weapons systems that, in many cases, have not significantly evolved since the Vietnam War. In order to revive the United States’ flagging military technology sector Congress should look to 28 U.S.C. § 1498 and provisions of the Bayh-Dole Act in order to encourage the private sector’s creation …

The Crossroads Of Patentability & Validity: Why Resolving Congressional Intent Will Not Fix Functional Claims, 7 J. Marshall Rev. Intell. Prop. L. 218 (2007), Nathaniel V. Riley

UIC Review of Intellectual Property Law

Functional claims have caused many headaches for academics, judges and practitioners who have struggled to define precisely what constitutes “functional” claim language and to determine the proper scope afforded to broad means-plus-function claim elements. The debate between academics and judges regarding functional claim interpretation has typically focused on Congressional intent behind the statute, specifically whether 35 U.S.C. § 112, ¶ 6 was intended solely as a claim interpretation tool or only as means for narrowing functional claims during an infringement analysis. The Federal Circuit famously adopted a hybrid approach in In re Donaldson, but since then several authors have levied …

The Teach Act: Recognizing Its Challenges And Overcoming Its Limitations, Oren R. Griffin, Stephana I. Colbert

Articles, Chapters in Books and Other Contributions to Scholarly Works

Technological advancements centered on the Internet, distance education, and digitally transmitted information have created tremendous opportunities for educational institutions. Congress enacted the Technology, Education, and Copyright Harmonization Act (TEACH Act) to exploit these opportunities and provide educators with an important tool to take advantage of the information super-highway. While the Congressional intent of the Act has merit, its provisions arguably create troubling obligations and potential liability for colleges and universities. This article discusses challenges presented by the TEACH Act and proposes modifications intended to address some of the most troubling aspects of the Act.

Layered Rights: Robertson V. Thomson, Gregory R. Hagen

Canadian Journal of Law and Technology

In Robertson v. Thomson Corp., the Supreme Court of Canada (‘‘ the Court ’’) considered ‘‘ whether newspaper publishers are entitled as a matter of law to republish in electronic databases freelance articles they have acquired for publication in their newspapers — without compensation to the authors and without their consent’’. Curiously, while deciding that publishers are not entitled to reproduce the individual articles without the consent of the freelancers, it also held that the publishers do have a right to reproduce the articles in a CD- ROM database ‘‘as a part of those collective works — their newspapers . …

Patent Reform And Differential Impact, Matthew Sag, Kurt W. Rohde

Faculty Articles

The structure of the article is as follows. Part I provides an introduction to the problems created by bad patents and introduces the differential impact test for evaluating patent reform proposals.

Part II examines the origin of bad patents and applies two different economic models to explain their persistence. The first model focuses on a potential infringer’s incentives to challenge a bad patent; the second model focuses on a patent holder’s incentive to assert a patent. We explain bad patents as an emergent phenomenon: they are the product of the apparently low quality of patent examination and the complex, uncertain, …

Race-Ing Patents/Patenting Race: An Emerging Political Geography Of Intellectual Property In Biotechnology, Jonathan Kahn

Faculty Scholarship

This article applies insights from critical race theory to examine an emerging phenomenon in biotechnology research and product development. The strategic use of race as a genetic category to obtain patent protection and drug approval. A dramatic rise in the use of race in biotechnology patents indicates that researchers and affiliated commercial enterprises are coming to see social categories of race as presenting opportunities for gaining, extending, or protecting monopoly market protection for an array of biotechnological products and services. Racialized patents are also providing the basis for similarly race-based clinical trial designs, drug development, capital raising and marketing strategies …

Structural Rights In Privacy, Harry Surden

Publications

This Essay challenges the view that privacy interests are protected primarily by law. Based upon the understanding that society relies upon nonlegal devices such as markets, norms, and structure to regulate human behavior, this Essay calls attention to a class of regulatory devices known as latent structural constraints and provides a positive account of their role in regulating privacy. Structural constraints are physical or technological barriers which regulate conduct; they can be either explicit or latent. An example of an explicit structural constraint is a fence which is designed to prevent entry onto real property, thereby effectively enforcing property rights. …

Should Scientific Research In The Lead-Up To Invention Vitiate Obviousness Under The Patented Medicines (Notice Of Compliance) Regulations: To Test Or Not To Test?, Ron A. Bouchard

Canadian Journal of Law and Technology

This article is an analysis of case law pertaining to whether scientific research in the lead-up to invention should vitiate a finding of obviousness in pharmaceutical litigation under the Patented Medicines (Notice of Compliance) Regulations (the ‘‘NOC Regulations’’). The NOC Regulations belong to a class of legal instruments referred to as ‘‘linkage regulations’’ that tie patent protection for marketed pharmaceuticals to the Canadian drug approval process. Therefore, the NOC Regulations control entry of generic drugs into the market and access by the public to affordable medication. The issue of testing arises out of the complex and inverse relationship between inventiveness …

Global Reach, Local Grasp: Constructing Extraterritorial Jurisdiction In The Age Of Globalization, Stephen Coughlan, Robert Currie, Hugh Kindred, Teresa Scassa

Canadian Journal of Law and Technology

The reach of national law is often greater than its grasp. Although Canada has effective legal power over its territory and all within it, Canadian interests are no longer confined exclusively within Canadian borders. Canada thus finds it increasingly necessary to consider asserting its legal jurisdiction beyond its frontiers. Such extraterritorial assertion of Canadian legal authority may run into strong opposition from other countries, who might view Canada as attempting to intervene in their own national territories and domestic affairs. Likewise, other states, under the same pressures of globalization, may try to extend their legal reach into Canadian territory, where …

Privacy, Crime And Terror: Legal Rights And Security In A Time Of Peril By Stanley A. Cohen (Markham: Lexisnexis Butterworths, 2005), Teresa Scassa

Canadian Journal of Law and Technology

It is now trite to say that the events of September 11, 2001 have had a profound impact on our national security, in terms of its institutional and normative dimensions, and also in terms of a more general public anxiety. The hastily enacted Anti-terrorism Act of 2001 brought about significant changes to a wide range of statutes including, among others, the Criminal Code, the Official Secrets Act, the Canada Evidence Act, and the Proceeds of Crime (Money Laundering) Act. An early conference and resultant book on the Anti-terrorism Act raised serious concerns about the potential impact of the changes on …

Oysters And Oligonucleotides: Concerns And Proposals For Patenting Research Tools, Cara Koss

Cardozo Arts & Entertainment Law Journal

No abstract provided.

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.

Standard Setting, Patents, And Access Lock-In: Rand Licensing And The Theory Of The Firm, Joseph S. Miller

Scholarly Works

Many leading voluntary standard-setting organizations (SSOs) have adopted intellectual property (IP) policies under which participants must promise to license any patents on technology that they contribute to a standard, and to do so on reasonable and nondiscriminatory terms (RAND). The standard setting literature includes a substantial focus on the widespread use of this RAND promise. A common refrain in these analyses of the RAND promise is that its meaning is dysfunctionally uncertain. We know more about the RAND promise, however, than the existing literature suggests. I show that we already know the RAND promise's core meaning, and why it remains …

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 …