Intellectual Property Law Commons^™

The Role Of Patents In Exploiting The Genome, Rebecca S. Eisenberg

Book Chapters

The sequencing of the human genome is a great scientific accomplishment that opens the door to further scientific inquiry of a sort that would otherwise be impossible. In addition to being passionately interested in the patent issues this research presents, as a legal scholar I have a long-standing interest in the role of intellectual property in interactions between the public and private senators and between universities and private firms in research science, with a focus on biomedial research. However, although the Human Genome Project has provided a rich terrain for exploring these issues, I am puzzled that intellectual property issues …

"Unitorrial" Marks And The Global Economy, 1 J. Marshall Rev. Intell. Prop. L. 191 (2002), Doris E. Long

UIC Review of Intellectual Property Law

The early decades of the 21st Century may well become known in the annals of intellectual property development as the period when “everything old is new again.” There is one ancient doctrine that has not yet enjoyed a similar renaissance, despite its clear application to today’s new, global, digital economy. It is the old (and currently discredited) view that trademarks and other commercial symbols are universal in nature. First given credence in early US cases regarding the importation of grey market, or parallel imports, the doctrine of universality was gradually replaced by a view of trademarks as creatures of nation …

Trade Dress Protection And The Problem Of Distinctiveness, 1 J. Marshall Rev. Intell. Prop. L. 225 (2002), Mark V.B. Partridge

UIC Review of Intellectual Property Law

The problem of trade dress protection is this: What rules should we apply to trade dress protection to best satisfy the goals of trademark law? The merit of various proposed solutions can be measured by evaluating how effective they are in achieving those goals in various disputes. Both distinctiveness and likelihood of confusion should be understood from the perspective of the relevant public, not from that of the court, the trademark owner or the infringer. The questions we seek to answer only have coherent meaning if we consider the perception of the public. Otherwise, we are unable to determine if …

The Three Stages To Successful Appellate Advocacy Before The Federal Circuit, 1 J. Marshall Rev. Intell. Prop. L. 238 (2002), Charles W. Shifley

UIC Review of Intellectual Property Law

To succeed at the CAFC, the advocate must succeed in three stages of appeal. The first stage of appeal is actually the stage of proceedings in the trial court. The trial court proceedings are the first stage of appeal because in the absence of correct advocacy in the trial court, there is no opportunity for appeal. The action in the trial court need not be the success of winning at trial. It must, however, at least be the success of preserving issues for appeal – preserving critical error that cannot be remedied at the trial level. In the second stage …

An Enzo White Paper: A New Judicial Standard For A Biotechnology "Written Description" Under 35 U.S.C. § 112, ¶ 1, 1 J. Marshall Rev. Intell. Prop. L. 254 (2002), Harold C. Wegner

UIC Review of Intellectual Property Law

The April 2, 2002, Federal Circuit opinion in Enzo Biochem, Inc. v. Gen-Probe Inc., may have the greatest potential impact on a multidimensional basis of any decision from that court in recent years. Far more important than whatever disruption takes place domestically—which may be fixed through Congressional or further judicial action—one must look to the foreign impact of the Enzo opinion. This decision threatens to undermine the patent basis for American protection of biotechnology inventions abroad, once the case is understood and embodied in the several foreign patent laws. Problems with Enzo are not limited to biotechnology. What’s good for …

Go To Jail - Do Not Pass Go, Do Not Pay Civil Damages: The United States’ Hesitation Towards The International Convention On Cybercrime’S Copyright Provisions, 1 J. Marshall Rev. Intell. Prop. L. 364 (2002), Adrienne N. Kitchen

UIC Review of Intellectual Property Law

The problem of combating copyright infringement increases tenfold when considered in light of today’s global and digital environment. As more authors seek copyright protection, others seek to get around it by evading jurisdictional reach. The Council of Europe has developed the world’s first International Convention on Cybercrime, which incorporates harsh substantive copyright provisions but neglects to include effective enforcement protocols. This Comment proposes that the United States not rush to adopt the Council of Europe’s Convention, but rather seek a more definitive and effective solution in a singularly-focused agreement on intellectual property rights in a global economic context.

Prosecution Laches As A Defense To Infringement: Just In Case There Are Any More Submarines Under Water, 1 J. Marshall Rev. Intell. Prop. L. 383 (2002), Gregory F. Sutthiwan

UIC Review of Intellectual Property Law

The comment examines prosecution history laches as an infringement defense in the context of the pending litigation against the Jerome Lemelson Medical Education & Research Foundation. Jerome Lemelson amassed over five hundred patents during his lifetime. Of these, a few key patents have priority based on initial disclosures over forty years ago. Through multiple continuances however, the patents were not issued until decades later and are thus currently enforceable. Lemelson’s foundation has been aggressively seeking royalties based on these, so called “submarine patents,” against bar-code technology users. This comment discusses the problems posed by “submarine patents” and proposes guidelines for …

The Nexus Requirement And The Fatal Injury: Does An Offer To Sell An Infringing Product Give Rise To A Duty To Defend Under A Cgl?, 1 J. Marshall Rev. Intell. Prop. L. 344 (2002), Willard L. Hemsworth Iii

UIC Review of Intellectual Property Law

Case law in the area of patent infringement has held that patent infringement cannot occur in the course of an insured's advertising activities as a matter of law. In 1996, the United States added “offer to sell” as one of the enumerated offenses of direct patent infringement to 35 U.S.C. §271(a). Since that time, there has been little deviation or fluctuation from the above mentioned principle, especially in litigation where a patentee’s search for insurance coverage from their CGL policies “Adverting Injury” provision. This Comment discusses the necessity of the court system to reexamine the modification to 35 U.S.C. §271(a), …

Employee Inventors, The Dual Ladder, And The Useful Arts: From Thomas Paine To The "Dilbert Boycott", 1 J. Marshall Rev. Intell. Prop. L. 310 (2002), Ronald E. Andermann

UIC Review of Intellectual Property Law

To address limitations on the promotion of the progress of the useful arts, the Framers provided a Constitutional grant in the Patent Clause. They did so despite Thomas Jefferson’s concerns. However, limitations on the promotion of the useful arts continue today, often in very subtle ways. The evolution of dual-ladder corporate organizations as described in Martens has given rise to one such limitation—the phenomenon identified as the “Dilbert boycott.” Also, financially lucrative markets can give rise to abusive limitations on the promotion of the useful arts as in Synthroid. Combining these limitations with Thomas Jefferson’s fears of even limited monopolies …

The Genetic Age: Who Owns The Genome?: A Symposium On Intellectual Property And The Human Genome, 2 J. Marshall Rev. Intell. Prop. L. 6 (2002), Scott A. Brown, Q. Todd Dickinson, Stephen P.A. Fodor, Justin Gillis, Lee H. Hamilton, Eric S. Lander, Pilar Ossorio

UIC Review of Intellectual Property Law

A Symposium on Intellectual Property Co-Sponsored by The Woodrow Wilson Center. Featuring the remarks of Scott A. Brown, J.D.; Q. Todd Dickinson, J.D.; Stephen P.A. Fodor, Ph.D.; Justin Gillis; Hon. Lee H. Hamilton; Eric S. Lander, Ph.D.; and Pilar Ossorio, Ph.D., J.D.

"Interpretive Necromancy" Or Prudent Patent Policy? The Supreme Court’S “Arising Under” Blunder In Holmes Group V. Vornado, 2 J. Marshall Rev. Intell. Prop. L. 57 (2002), Janice M. Mueller

UIC Review of Intellectual Property Law

No abstract provided.

An Information Society Approach To Privacy Legislation: How To Enhance Privacy While Maximizing Information Value, 2 J. Marshall Rev. Intell. Prop. L. 71 (2002), Dana Beldiman

UIC Review of Intellectual Property Law

No abstract provided.

Mickey Mouse & Sonny Bono Go To Court: The Copyright Term Extension Act And Its Effect On Current And Future Rights, 2 J. Marshall Rev. Intell. Prop. L. 95 (2002), Victoria A. Grzelak

UIC Review of Intellectual Property Law

No abstract provided.

Has The Reasonable Experimentation Doctrine Become Unreasonable?: Rethinking The Reasonable Experimentation Doctrine In Light Of Automated Experimental Techniques, 2 J. Marshall Rev. Intell. Prop. L. 116 (2002), Mark H. Hopkins

UIC Review of Intellectual Property Law

No abstract provided.

Federal Intellectual Property Law V. State Sovereignty: Can Congress Win?, 2 J. Marshall Rev. Intell. Prop. L. 159 (2002), Himanshu Vyas

UIC Review of Intellectual Property Law

No abstract provided.

Law And Information Platforms, Philip J. Weiser

Publications

No abstract provided.

One Step Forward, Two Steps Back: An Historical Analysis Of Copyright Liability, Matt Jackson

Cardozo Arts & Entertainment Law Journal

No abstract provided.

Digital Copyright And The "Progress Of Science, Jessica D. Litman

Articles

Let me start with a truism: Networked digital technology has transformed information and the way we interact with it. Digital information is dynamic rather than fixed. What we think of as “documents” can change constantly. That’s challenged our notions of what it means to archive material.

The Uniform Domain Name Dispute Resolution Policy: A Practical Guide, Bradley J. Freedman, Robert J.C. Deane

Canadian Journal of Law and Technology

Disputes involving alleged bad faith registration and use of certain Internet domain names may be arbitrated pursuant to the Uniform Domain Name Dispute Resolution Policy (the Policy) mandated by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Policy is the first attempt to establish a global set of substantive rules regarding certain kinds of Internet-related trademark disputes, and a single, international system for the arbitration of those disputes. In many respects, the Policy has fulfilled its objective of providing an efficient and cost effective means of resolving certain domain name disputes. In other respects, however, the experience with …

Who Was That Masked Man? Online Defamation, Freedom Of Expression, And The Right To Speak Anonymously, Jonathon T. Feasby

Canadian Journal of Law and Technology

As the internet continues to reach into the lives of people around the world, it facilitates interaction and the exchange of ideas between far-flung individuals and groups to an extent unprecedented in communications history. However, with this positive effect, the potential of the internet as a forum for defamation and other malfeasance has increased as well. Words online can be heard or read in places conventional forms of speech might never reach. As the United States Supreme Court put it, with the aid of the internet ". . . any person with a phone line can become a town crier …

Is Internet Gaming Legal In Canada: A Look At Starnet, C. Ian Kyer, Danielle Hough

Canadian Journal of Law and Technology

The development of the Internet has kindled many new business opportunities in the online environment. Despite the recent slump in online business growth and popularity, one line of online business is generating profit and growing at a rapid rate: the business of online gaming.

The legality of such businesses is questionable in Canada and there are few gaming cases to assist Canadian lawyers. The following analysis must be considered in light of the dearth of jurisprudence in this area and should not be considered legal advice. This area of the law is in flux and developments may be unpredictable.

When …

Book Review: A Guide To Electronic Legal Research By A. Zivanovic (Markham Ont.: Butterworths Canada, 2001), David H. Michels

Canadian Journal of Law and Technology

No abstract provided.

Book Review: The Personal Information Protection And Electronic Documents Act: An Annotated Guide By Stephanie Perrin, Heather H. Black, David H. Flaherty And T. Murray Rankin, Q.C. (Concord, Ont.: Irwin Law, 2001), Teresa Scassa

Canadian Journal of Law and Technology

In April 2000, the Personal Information Protection and Electronic Documents Act was passed by the House of Commons. The legislation dealt with both personal information privacy and the use and validity of electronic documents in areas governed by federal law. On January 1, 2001, the portion of the Act dealing with electronic documents took effect, as did the privacy provisions, to the extent that they related to the collection use or disclosure of personal information inter-provincially, or in connection with a federal work, undertaking or business. The Act applied to personal health information as of January 1, 2002, and will …

Inventions, Industry Standards, And Intellectual Property, Mark R. Patterson

Faculty Scholarship

When an industry standard incorporates a patented invention, the demand for products that comply with the standard has two components. Some of the demand may be for the inherent technical advantages of the invention; the patentee is generally entitled to revenues attributable to this demand. But some of the demand is for the benefits of standardization, such as interoperability, and the patentee is not entitled to revenues attributable to this demand. From this point, the article draws two conclusions. First, the amounts to which a patentee is entitled, either in litigation or in licensing negotiations, should be calculated by determining …

Innovating Copyright, Lawrence Lessig

Cardozo Arts & Entertainment Law Journal

No abstract provided.

Public Vs. Proprietary Science: A Fruitful Tension?, Rebecca S. Eisenberg, Richard R. Nelson

Articles

What should be public and what should be private in scientific research? The competitive sprint of public and private laboratories to complete the sequence of the human genome has brought this question to the fore. The same question frames the developing struggle over terms of access to human embryonic stem cell lines and the conflict between Microsoft and the open source movement over how best to promote software development. We expect such conflicts to become more widespread as the role of for-profit research expands in a broader range of scientific fields. Will science progress more swiftly and fruitfully if its …

Facilitating Access Of Aids Drugs While Maintaining Strong Patent Protection, Dana Ziker

Duke Law & Technology Review

The AIDS pandemic has thrust the subject of patent protection into the spotlight, a spotlight that has attracted the attention of broad audience including interested parties from the political, legal, and medical communities. Can the United States' scheme of strong patent protection for pharmaceutical products withstand the increased attention?

Cybernetic Implications For The U.C.C., Stephen Dirksen, Kyle Grimshaw

Duke Law & Technology Review

In the following iBrief, the authors assess the impact of recent a recent decision from the 9th Circuit assessing whether the patent system's filing mechanism preempts the U.C.C. Article 9 requirement that creditors perfect their security interests in patents offered as collateral by their debtors.

A Victory For The Student Researcher: Chou V. University Of Chicago, Kyle Grimshaw

Duke Law & Technology Review

For years, graduate and other student researchers at universities have alleged that the hierarchical system in academic research allows supervising PhDs to steal and patent inventions that were rightfully discovered by students. In July 2001, the Federal Circuit finally addressed these concerns by interpreting the law in a way that strictly protects the rights of student researchers. This article examines this long-overdue change in the law and discusses its potential implications.

Patents And Traditional Knowledge Of The Uses Of Plants: Is A Communal Patent Regime Part Of The Solution To The Scourge Of Bio Piracy, Ikechi Mgbeoji

Indiana Journal of Global Legal Studies

No abstract provided.