Intellectual Property Law Commons^™

Medimmune V. Genentech: A Game-Theoretic Analysis Of The Supreme Court’S Continued Assault On The Patentee, Nicholas G. Smith

Marquette Intellectual Property Law Review

In 2007, the Supreme Court decided MedImmune v. Genentech. This decision changed the landscape of the patent licensing field by holding that a licensee in good standing may challenge the validity of a patent in a declaratory judgment action. By adding to the cost of entering a license agreement, MedImmune erodes one characteristic of a patent from which it derives its worth—the patent’s ability to be licensed. Unfortunately, this has decreased the incentive to innovate by decreasing the value of a patent. This Comment seeks to illustrate, using a game theoretic model, how MedImmune will increase litigation against patent …

I'M Still Your Baby: Canada's Continuing Support Of U.S. Linkage Regulations For Pharmaceuticals, Ron A. Bouchard

Marquette Intellectual Property Law Review

Canada's linkage regime for pharmaceuticals, modeled after the originating U.S. Hatch-Waxman regime, was brought in under intense political pressure to balance effective patent enforcement over new and innovative drugs with the timely market entry of lower-priced generic competitors. It has been almost two decades since the regulations were enacted, and to date, there has been little objective assessment as to whether the regulations have, in fact, stimulated innovation and timely generic entry. We recently completed three empirical studies on the linkage between drug approval and drug patenting under the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations). Of particular interest …

Living With Patents: Insights From Patent Misuse, Vincent Chiapetta

Marquette Intellectual Property Law Review

The Author argues that the patent misuse doctrine should be eliminated. Created almost a century ago as a response to patent power, it has now not only outlived its purpose but causes affirmative harm. Other more nuanced approaches, including antitrust law, produce superior results. Although the Federal Circuit has contained the doctrine, it cannot overrule Supreme Court misuse precedent. Accordingly, the Court should abolish the doctrine at the earliest opportunity or, failing prompt action, Congress should add the matter to its ongoing patent reform agenda. The misuse experience also provides valuable insights regarding how we can appropriately live with our …

Emerging Scholars Series: A Sui Generis Regime For Traditional Knowledge: The Cultural Divide In Intellectual Property Law, J. Janewa Oseitutu

Marquette Intellectual Property Law Review

Traditional knowledge can be protected, to some extent, under various intellectual property laws. However, for the most part, there is no effective international legal protection for this subject matter. This has led to proposals for a sui generis regime to protect traditional knowledge. The precise contours of the right are yet to be determined, but a sui generis right could include perpetual protection. It could also result in protection for historical communal works and for knowledge that may be useful but that is not inventive according to the standards of intellectual property law. Developing countries have been more supportive of …

Twitter Or Tweeter: Who Should Be Liable For A Right Of Publicity Violation Under The Cda?, Kristina M. Sesek

Marquette Intellectual Property Law Review

The Communications Decency Act (CDA), passed in 1996, immunized Internet service providers (ISPs) from being treated as the publisher or speaker of any information posted on their website by another person and from possible subsequent liability. The CDA also carved out an exemption for violations of intellectual property‹meaning an ISP could still be liable for information posted on their website by another person that violates an intellectual property right. However, the CDA did not spell out whether it intended to include only federal intellectual property rights or both federal and state intellectual property rights.

This Comment proposes two possible reasons …

The Performance Rights Act: A Lack Of Impact On A Transitioning Music Industry, Michael C. Yeh

Marquette Intellectual Property Law Review

The music industry is in a decline. Music sales are not creating the same profits as before, and rather than change or adapt, record labels are petitioning the legislature to create new modes of revenue. One way the music industry is petitioning the legislature to add a new source of revenue, without changing its archaic business model, is by pushing Congress to pass the Performance Rights Act. This Act proposes that analog radio stations pay musicians and artists royalties to play their songs on the air, just like on digital radio. While the Performance Rights Act looks great on the …

Can The Patent Office Be Fixed?, Mark A. Lemley

Marquette Intellectual Property Law Review

The Patent and Trademark Office (PTO) finds itself caught in a vise. On the one hand, it has been issuing a large number of dubious patents over the past twenty years, particularly in the software and electronic commerce space. It issues many more patents than its counterparts in Europe and Japan; roughly three-fourths of applicants ultimately get one or more patents, a higher percentage than in other countries. Complaints about those bad patents are legion, and indeed, when they make it to litigation, they are quite often held invalid. Even the ones that turn out to be valid are often …

Intellectual Property Colloquium Series: Canada And The Three-Step Test: A Step In Which Direction?, Ysolde Gendreau

Marquette Intellectual Property Law Review

In her lecture, Prof. Gendreau discusses the relationship between Canada and the United States when it comes to Copyright law. More specifically, Prof. Gendreau discusses the concept of fair dealing in education in Canada, and then discusses the Canadian provision in the context of international treaties, in particular the TRIPS Agreement and the Berne Convention.

Coercion Will Not Protect Trademark Owners In China, But An Understanding Of China's Culture Will: A Lesson The United States Has To Learn, Dalila Hoover

Marquette Intellectual Property Law Review

China remains the single largest producer of pirated and counterfeit goods in the world. The purpose of this article is to explore the different factors that have impeded effective trademark protection in China. In particular, this article analyzes the cultural barriers between the United States and China, and in doing so, helps one understand the climate of hostility between the two nations when it comes to trademark enforcement. This article further analyzes the constant pressure exercised by the United States against China, which has led to the adoption of trademark laws by the Chinese government at the national and international …

Acta Fool Or: How Rights Holders Learned To Stop Worrying And Love 512’S Subpoena Provisions, Colin E. Shanahan

Marquette Intellectual Property Law Review

This comment argues against the adoption of the proposed Anti-Counterfeiting Trade Agreement. Specifically, that the ACTA provision establishing “[p]rocedures enabling right holders who have given effective notification of a claimed infringement to expeditiously obtain information identifying the alleged infringer” should not extend the current subpoena provisions of 17 USC § 512(h) to encompass p2p networks. The Comment discusses the current U.S. law and cases, why the rights holders want the ACTA Agreeement and argues why the ACTA agreement should not be adopted.

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Marquette Intellectual Property Law Review

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Intellectual Property Rights And Exclusive (Subject Matter) Jurisdiction: Between Private And Public International Law, Benedetta Ubertazzi

Marquette Intellectual Property Law Review

In the recent past, prestigious courts around the world have refused to adjudicate cases relating to foreign registered or unregistered intellectual property rights (hereinafter: IPRs), where the proceedings concerned an IPR infringement claim or where the defendant in an IPR infringement action or the claimant in a declaratory action to establish that the IPR is not infringed pleaded that the IPR is invalid or void and that there is also no infringement of that right for that reason (so called validity issues incidentally raised). In these cases the refusal to adjudicate the foreign IPRs infringement and validity claims was grounded …

The Time And Place For "Technology-Shifting" Rights, Max Stul Oppenheimer

Marquette Intellectual Property Law Review

Intellectual property policy requires balance between the goal of motivating innovation and the need to prevent that motivation from stifling further innovation. The constitutional grant of congressional power to motivate innovation by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries is qualified by the requirement that congressional enactments under the Intellectual Property Clause promote progress. The Supreme Court has already recognized a time-shifting exception to the intellectual property rights of innovators and lower courts have recognized a place-shifting exception. It is now the time and place for a general technology-shifting exception …

Possessing Trademarks: Can Blackstone Or Locke Apply To Fast Food, Grocery Stores, And Virtual Sex Toys?, Jesse R. Dill

Marquette Intellectual Property Law Review

Trademark law has evolved extensively over time and is justified today for different reasons than when American law first recognized it. Scholars today question whether trademarks should now be accepted as a form of real property. Two examples of trademark problems in the global economy demonstrate that the time has come for marks to be recognized as property. Whether business entities are entering new territories or consumers are crossing borders to new jurisdictions with greater ease than ever before, trademark must adapt to the demands of modern commercial competitors. This Comment takes the position that these demands require treating trademarks …

Innovation And Recovery, John F. Duffy

Marquette Intellectual Property Law Review

Crisis inevitably brings hope for recovery. The recent past has seen a great economic crisis and a crisis in the patent system. Precisely because crisis reveals the flaws in the old, recovery demands the new; it demands innovation. Economic crisis thus makes recovery in the patent system especially urgent because it reveals the degree to which continuing prosperity depends on society's ability to reorganize itself, to change, to innovate. Towards that end, society should reconsider how our patent system makes judgments about invention. More specifically, Professor Duffy will seek to show through this lecture that the change most necessary for …

What About Know-How: Heightened Obviousness And Lowered Disclosure Is Not A Panacea To The American Patent System For Biotechnology Medication And Pharmaceutical Inventions In The Post-Ksr Era, Yi-Chen Su

Marquette Intellectual Property Law Review

In KSR International Co. v. Teleflex, Inc., the Supreme Court rejected the Federal Circuit's rigid application of the teaching, suggestion, or motivation test (TSM test), and replaced it with an expansive and flexible approach, in determining the question of obviousness. Nevertheless, an expansive and flexible approach to obviousness may not be consistent with the international norms of practice if it is applied literally. The U.S. Patent and Trademark Office's literal application of the decision has essentially created another set of inflexible rules, which is contrary to the Supreme Court's intent. The Federal Circuit's recent decision in In re Kubin cautiously …

Quilt Artists: Left Out In The Cold By The Visual Artists Rights Act Of 1990, Michelle Moran

Marquette Intellectual Property Law Review

The United States Copyright Act with the inclusion of the Visual Artists Rights Act of 1990 (VARA) gives sculptors, painters, and photographers a bundle of rights that include the moral rights of attribution and integrity. However, the artistic efforts of artists who create quilts, whether the original purpose was to hang the quilt on the wall or to provide warmth and comfort on a bed, are not included in VARA due to the exclusion of applied art from VARA. This Comment contends that the Congressional intent to protect the highly personal connection artists have to their creations supports extending the …

Actual Or Hypothetical: Determining The Proper Test For Trademark Licensee Rights In Bankruptcy, Laura D. Steele

Marquette Intellectual Property Law Review

As trademark rights become an increasingly valuable asset in Chapter 11 reorganizations, it is critical for Congress and the courts to clarify how trademarks will be treated in bankruptcy, particularly where the debtor is a trademark licensee. Without clarity, Chapter 11 reorganization may not be a viable option. This Comment urges that trademark licensees should not be stripped of a license simply because the licensee enters bankruptcy. Rather, where a licensee intends only to continue using an existing license under the terms of the existing agreement with the licensor, the licensee's use of that license should be uninterrupted during reorganization. …

An Uncomfortable Fit?: Intellectual Property Policy And The Administrative State, Kali Murray, Sapna Kumar, Jason Mazzone, Hannibal Travis

Marquette Intellectual Property Law Review

The Southeastern Association of Law Schools (SEALS) panel responds to the considerable scholarship on the increasing integration of administrative law into intellectual property policy. The discussion was conducted August 4, 2009, as part of SEALS' day-long Intellectual Property Workshop in West Palm Beach, Florida. Kali Murray moderated the panel, which included Sapna Kumar, Jason Mazzone, Hannibal Travis, and Jasmine Abdel-khalik.

Lessons Learned From Fifteen Years In The Trenches Of Patent Litigation , Rick Mcdermott

Marquette Intellectual Property Law Review

Marquette Law alum and partner with Alston+Bird, LLP, offers insights into patent litigation. In his speech, given March 5, 2010, McDermott examines how patent law developments such as Markman v. Westview Instruments, Cybor Corp. v. FAS Technologies, Inc., and In re Seagate have impacted the practice of patent infringement litigation.

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Marquette Intellectual Property Law Review

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Utilitarian Information Works - Is Originality The Proper Lens?, Dana Beldiman

Marquette Intellectual Property Law Review

As the information society advances, vastly increased numbers of utilitarian information works (UIW) are being produced. In general, these works are deemed protected by copyright law, even though the philosophical underpinnings of copyright law clash with the attributes of UIW. This Article examines the cause for the uneasy relationship between UIW and the concept of originality. Part I discusses the role of information and UIW as one of the core wealth-producing assets of the knowledge-based economy. This economy is characterized by a rapid pace of innovation, which in turn, requires unrestricted access to information. Part II examines copyright law as …

Fixing Our Broken Patent System, Jay Dratler

Marquette Intellectual Property Law Review

This short Article digests what the Author see as the most important substantive criticism and proposes specific solutions in the form of the "guts" of a new patent statute. Its statutory proposal tracks the current statute's organization and has numerous annotations explaining what is the same, what is changed and why, and what never-before-codified principles of judge-made law are explicitly codified. Among the proposed statute's fundamental changes are: (1) explicit restrictions on patentable subject matter to avoid patents on bare abstractions; (2) adoption of a first-to-file system requiring worldwide novelty; (3) abolition of the doctrine of constructive reduction to practice …

Generic Entry In A Rough Economy - Proposed Legislation May Ease Health Care Costs, Laura J. Grebe

Marquette Intellectual Property Law Review

When generic drugs seek FDA approval, the pharmaceutical company files an Abbreviated New Drug Application (ANDA), in which the generic company establishes bioequivalence to its usually patented counterpart. The ANDA filer must also certify that, to the best of the filer's knowledge, the generic will not infringe on a current patent-holder's rights. This can be done by showing (1) no patent on the product exists, (2) the patent is expired, (3) the patent will expire by the time the generic is marketed, or (4) the ANDA filer believes the patent is invalid - called a Paragraph IV certification. A Paragraph …

Complimentary Creation: Protecting Fan Fiction As Fair Use, Rachel L. Stroude

Marquette Intellectual Property Law Review

This Comment discusses, by focusing on the treatment of fan fiction, the tension a court faces each time it encounters a fair use doctrine analysis. First, this Comment describes the nature of fan fiction, the two types of fan fiction referential works and participatory works, and the potential commerciality of fan fiction. Second, this Comment analyzes courts' treatment of referential works and explains why courts have not encountered participatory works. Next, this Comment discusses that while courts have guided authors of referential works regarding how to create a non-infringing work, courts have yet to consider how to protect participatory works. …

Emerging Scholars Series: A Re-Examination Of The Original Foundations Of Anglo-American Trademark Law, Cesar Ramirez-Montes

Marquette Intellectual Property Law Review

Contemporary accounts of the normative basis of Anglo-American trademark law frequently describe the purpose of the legal doctrine as having developed to protect primarily the consumers from being misled. Recently, some commentators have offered a different account of the law, as having developed to protect mainly the interests of the traders in not having their trade diverted. Under this account, early trademark law served one master only, the producer, with any additional benefit or protection to consumers being unintended. In this Article, the Author challenges both accounts and suggest that early trademark law was not driven by any judicial desire …

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Marquette Intellectual Property Law Review

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Online Auction House Liability For The Sale Of Trademark Infringing Products, Allison N. Ziegler

Marquette Intellectual Property Law Review

With the rise of the Internet, trademark owners have seen an increase in online trademark infringement. This Comment examines online auction house liability for the sale of trademark infringing products and the methodology used by courts in making this determination. The author outlines contributory trademark jurisprudence in the United States and France and the application of this jurisprudence in Tiffany v. EBay and LVMH v. EBay, respectively. The article then evaluates the implications of the two approaches to determine which approach is more practical and effective. The author concludes that online auction houses should not be liable for trademark infringement …

The Copyright Revision Act Of 2026, Jessica Litman

Marquette Intellectual Property Law Review

American copyright law is broken. In fact, its failings are leading lawyers and scholars to find resourceful strategies to work around the deficiencies in the current state of the law. These strategies, the lecturer argues, indicate that a fundamental overhaul of copyright law is imminent. After lamenting the disconnect between academia and the practicing bar and examining the present laws' shortcomings felt by authors, distributors, and consumers alike, the lecturer provides three goals a new copyright regime should meet. First, copyright law should be more easily accessible and, likewise, understandable for non-lawyers. Second, the new copyright laws should reduce the …

Rethinking Patent Fraud Enforcement In A Reform Era, Kali Murray, Dmitriy Vinarov

Marquette Intellectual Property Law Review

This Article contends that, while the defense of inequitable conduct offers an avenue to combat fraudulent patent applications, the doctrine suffers from shortcomings that spring from two compromises. First, the amorphous nature of the equitable defense prompts institutional conflict between the United States Patent and Trademark Office and the Federal Circuit. Second, by relegating enforcement solely to a patentee's market competitors, the defense fails to protect the public interest adequately. In light of these compromises, the authors propose two goals to guide current reform efforts in Congress. Initially, Congress's attempt to reform patent fraud enforcement should relieve the aforementioned institutional …