Intellectual Property Law Commons^™

The Rcep And Trans-Pacific Intellectual Property Norms, Peter K. Yu

Faculty Scholarship

In the past few years, the Trans-Pacific Partnership has garnered considerable media, policy and scholarly attention. Rarely analyzed and only occasionally mentioned is the Regional Comprehensive Economic Partnership (RCEP). This agreement is currently being negotiated between Australia, China, India, Japan, New Zealand, South Korea and the 10 members of the Association of Southeast Asian Nations (ASEAN). Launched in November 2012 under the ASEAN 6 framework, the RCEP negotiations built on past trade and non-trade discussions between ASEAN and its six major Asia-Pacific neighbors.

This article examines the RCEP with a focus on the intellectual property norms that it seeks to …

The Significance Of The Data Exclusivity And Its Impact On Generic Drugs, Srividhya Ragavan

Faculty Scholarship

The following is a law review interview with Professor Srividhya Ragavan on the issues in interpretation of data exclusivity provisions under the TRIPS Agreement, and the impact of data exclusivity on generic drugs.

The Field Of Invention, Saurabh Vishnubhakat

Faculty Scholarship

Federal courts can ill afford to ignore, assume, or improvise a pervasively important administrative power that the Patent Office exercises regularly and effectively: technology classification. This agency-court asymmetry has persisted for decades but has now become unmanageably problematic for two related reasons. First, Supreme Court guidance, patent reform legislation, and academic commentary have all broadly rejected long-standing patent exceptionalism in administrative law, while making the Patent Office a major substitute for federal courts in resolving patent disputes. Still, patent doctrine has been slow to correct, particularly in judicial deference to agency action. Second, criticisms of the patent system are highly …

The Investment-Related Aspects Of Intellectual Property Rights, Peter K. Yu

Faculty Scholarship

From the debate among presidential candidates on whether the United States should ratify the Trans-Pacific Partnership (TPP) Agreement to the arbitrations Philip Morris and Eli Lilly have sought through the investor-state dispute settlement (ISDS) mechanism, the investment-related aspects of intellectual property rights have recently garnered considerable policy, scholarly and media attention.

This growing attention, to some extent, has brought back memories about the time when the WTO TRIPS Agreement began to transform intellectual property law and policy by redirecting our focus to the trade-related aspects of intellectual property rights. Whether the recent developments on the investment front represent yet another …

Legal Issues In Ip Protection For Additive Manufacturing, Sharon Flank

Texas A&M Journal of Property Law

Additive manufacturing (“AM”) offers the power to design and create in new ways but also brings challenges in intellectual property protection and unauthorized copying, along with potential liability issues. One growing problem is counterfeiting, which is recognized as part of a worldwide industry estimated at over $1 trillion. “There are two basic paths to creating counterfeits with 3D printing.” First, the print instructions, in the form of a software design file, can be stolen, shared, or mocked up. Alternatively, an existing object “(including a genuine branded or licensed product)” can be 3D scanned to create a design file to print …

Printing The Future: The Implications Of 3d Printing, Timothy R. Holbrook

Texas A&M Journal of Property Law

What I am going to talk about today is sort of an aggregation of a lot of things I have already published, or am thinking about, that relates to how 3D printing challenges our patent system and how the patent system could respond doctrinally now and, in other ways, that we could theorize we could do. We should be frightened about some of those steps, however. I will then discuss some of the consequences that flow from these arguments. And so, I will skip through some of the earlier slides as to 3D printing. I think people know what that …

Crossfertilizing Isds With Trips, Peter K. Yu

Faculty Scholarship

In the past few years, investor-state dispute settlement (ISDS) has garnered considerable scholarly, policy and media attention. Such attention can be partly attributed to the negotiation of the Trans-Pacific Partnership and the Transatlantic Trade and Investment Partnership (TTIP). It can also be attributed the growing use of ISDS to address international disputes involving intellectual property investments. Recent examples include Philip Morris’s now-failed attempts to challenge the tobacco control measures in Australia and Uruguay and Eli Lilly's equally unsuccessful effort to invalidate the patentability requirements in Canada.

Written for a symposium on investor-state arbitration, this article focuses on the growing use …

The Rcep And Intellectual Property Normsetting In The Asia-Pacific, Peter K. Yu

Faculty Scholarship

Commissioned for the CEIPI-ICTSD Series on Global Perspectives and Challenges for the Intellectual Property System, this article examines the Regional Comprehensive Economic Partnership (RCEP) with a focus on the intellectual property norms it seeks to develop. It begins by briefly discussing the partnership’s historical origins and ongoing negotiations. It then examines the latest leaked draft of the RCEP intellectual property chapter, highlighting the key provisions concerning copyright and related rights, trademarks, patents, trade secrets and undisclosed information, and intellectual property enforcement. This article concludes by exploring three scenarios concerning the future of this chapter--namely, the lack of an intellectual property …

Correlative Obligation In Patent Law: The Role Of Public Good In Defining The Limits Of Patent Exclusivity, Srividhya Ragavan

Faculty Scholarship

In light of the recent outrageous price-spiking of pharmaceuticals, this Article questions the underlying justifications for exclusive rights conferred by the grant of a patent. Traditionally, patents are defined as property rights granted to encourage desirable innovation. This definition is a misfit as treating patents as property rights does a poor job of defining the limits of the patent rights as well as the public benefit goals of the system. This misfit gradually caused an imbalance in the rights versus duties construct within patent law. After a thorough analysis of the historical and philosophical perspectives of patent exclusivity, this Article …

The Quest For A User-Friendly Copyright Regime In Hong Kong, Peter K. Yu

Faculty Scholarship

The quest for a user-friendly copyright regime began a decade ago when the Hong Kong government launched a public consultation on "Copyright Protection in the Digital Environment" in December 2006. Although this consultation initially sought to address Internet-related challenges, such as those caused by peer-to-peer file-sharing technology, the reform effort quickly evolved into a more comprehensive digital upgrade of the Hong Kong copyright regime.

A decade later, however, Hong Kong still has not yet amended its Copyright Ordinance. Thus far, three consultation exercises have been launched in December 2006, April 2008 and July 2013. Two bills have also been introduced …

Session 2: The U.S. Perspective, Peter K. Yu, Allan Adler, Duncan Crabtree-Ireland, Mickey Osterreicher, Michael Wolfe, Aurelia J. Schultz

Faculty Scholarship

This panel provides an overview of the current state of protection of moral rights in the United States, including discussion of the “patchwork” approach of federal and state laws, as well as judicial opinions.

Strategic Decision Making In Dual Ptab And District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, Jay P. Kesan

Faculty Scholarship

The post-grant review proceedings set up at the U.S. Patent and Trademark Office’s Patent and Trial Appeal Board by the America Invents Act of 2011 have transformed the relationship between Article III patent litigation and the administrative state. Not surprisingly, such dramatic change has itself yielded additional litigation possibilities: Cuozzo Speed Technologies v. Lee, a case addressing divergence between the manner in which the PTAB and Article III courts construe patent claims, will soon be decided at the U.S. Supreme Court.

Of the three major new PTAB proceedings, two have proven to be popular as well as controversial: inter partes …

The Mouse That Trolled (Again), Robert Cook-Deegan, Saurabh Vishnubhakat, Tania Bubela

Faculty Scholarship

We welcome the opportunity to respond to the commentaries on our paper-The Mouse that Trolled-by Hardy, Sarnoff, and Cordova and Feldman. Their comments are academic criticism in the very best sense. We also take the opportunity to update on recent legal actions, which we had not predicted. This opportunity enriches our narrative history of the patenting of the APPswe mutation for early onset Alzheimer's disease, and we hope the continued saga is of interest.

The Youngest Patent Validity Proceeding: Evaluating Post-Grant Review, Saurabh Vishnubhakat

Faculty Scholarship

Of the three major ex post patent validity challenge mechanisms that the 2011 Leahy-Smith America Invents Act put into place, the third is beginning to show signs of use. Post-grant review is an administrative proceeding of remarkable breadth as compared both to inter partes review and to the transition program for covered business method patents. Thus far, however, patent challengers have made very limited use of post-grant reviews: in the nearly three years since the procedure became available, the United States Patent and Trademark Office has received only about two dozen petitions for post-grant review. By contrast, the number of …

An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat

Faculty Scholarship

This Article challenges the dogma of U.S. patent law that direct infringement is a strict liability tort. Impermissibly practicing a patented invention does create liability even if the infringer did not intend to infringe or know about the patent. The consensus is that this is a form of strict liability. The flaw in the consensus is that it proves too little, for the same is true of intentional torts: intent to commit the tort is unnecessary, and ignorance of the legal right is no excuse. What is relevant is intent to perform the action that the law deems tortious. So …

“Owning” What You “Buy”: How Itunes Uses Federal Copyright Law To Limit Inheritability Of Content, And The Need To Expand The First Sale Doctrine To Include Digital Assets, Anthony C. Eichler

Student Scholarship

This article will first discuss the background and history of digital assets, the question of inheritability, and the inherent problems with the iTunes user agreement. Next, this article poses an argument that the iTunes user agreement is an adhesion contract leaving the consumer no choice but to accept, and further that the agreement leads to an unconscionable result that robs people of property rights that they likely (and reasonably) believed they had. Then it will discuss the First Sale Doctrine's applicability to assets generally and how federal copyright law needs to be amended and expanded so that the First Sale …

The Competing Objectives Underlying The Protection Of Intangible Cultural Heritage, Peter K. Yu

Faculty Scholarship

One topic that has received considerable academic and policy attention concerns the key objectives underlying the establishment of this new framework. To help us develop a better and deeper understanding, this article outlines eight most widely documented objectives. While some of these objectives overlap or conflict with each other, others touch on issues that are of only marginal concern to some constituencies. By focusing on each objective in turn, this article aims to underscore the divergent, and at times competing, interests among the many stakeholders involved in the framework.

Although some readers may find the description of all eight underlying …

Drugs, Drugs Everywhere But Just Not For The Poor, Srividhya Ragavan

Faculty Scholarship

The objective for this article is to understand the legitimacy and limitations of US involvement in another country’s sovereign actions taken expressly in the public interest, or to protect public health, such as the compulsory licensing of pharmaceuticals.

Five Decades Of Intellectual Property And Global Development, Peter K. Yu

Faculty Scholarship

The 2016-2017 biennium marks the historical milestones of several major pro-development initiatives relating to intellectual property law and policy. These important milestones include the Intellectual Property Conference of Stockholm in 1967, the adoption of the Declaration on the Right to Development (UNDRD) in 1986 and the establishment of the WIPO Development Agenda in 2007.

On January 1, 2016, the UN Sustainable Development Goals (SDGs) also came into force. Adopted by the UN General Assembly in September 2015, the 2030 Agenda for Sustainable Development featured 17 SDGs and 169 targets. Prominently mentioned in Target 3.b of SDG 3 are the WTO …

The More Copyright Laws Change, The More Digital Challenges Stay The Same, Peter K. Yu

Faculty Scholarship

This essay was a contribution to the Liber Amicorum for Professor Jan Rosén of Stockholm University, a former president of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). Drawing on Professor Rosén's scholarship, the essay shows how today's judges, legislators, policymakers and commentators continue to address questions that copyright and media law scholars have explored in the past decades.

Specifically, this essay focuses on two topics. The first topic concerns the exhaustion of distribution rights in computer software and other digital works, including regional exhaustion within the European Union. The second topic covers the …

The Anatomy Of The Human Rights Framework For Intellectual Property, Peter K. Yu

Faculty Scholarship

Since the U.N. Sub-Commission on the Promotion and Protection of Human Rights adopted Resolution 2000/7 on "Intellectual Property Rights and Human Rights" more than fifteen years ago, a growing volume of literature has been devoted to the debates on the human rights limits to intellectual property rights, intellectual property and human rights, and intellectual property as human rights. Commentators, myself included, have also called for the development of a human rights framework for intellectual property. Thus far, very few commentators have explored the place of patent rights in this framework. Very little research, if any, has also been devoted to …

Frand V. Compulsory Licensing: The Lesser Of The Two Evils, Srividhya Ragavan, Brendan Murphy, Raj Davé

Faculty Scholarship

This paper focuses on two types of licenses that can best be describes as outlier - FRAND and compulsory licenses. Overall, these two specific forms of licenses share the objective of producing a fair and reasonable license of a technology protected by intellectual property. The comparable objective notwithstanding, each type of license achieves this end using different mechanisms. The FRAND license emphasizes providing the licensee with reasonable terms, e.g., by preventing a standard patent holder from extracting unreasonably high royalty rates. By contrast, compulsory liceses emphasize the public benefit that flows from enabling access to an otherwise inaccessible invention. Ultimately, …

Nsfw: An Empirical Study Of Scandalous Trademarks, Megan Carpenter, Mary Garner

Student Scholarship

This project is an empirical analysis of trademarks that have received rejections based on their “scandalous” nature. It is the first of its kind.

The Lanham Act bars registration for trademarks that are “scandalous” and “immoral.” While much has been written on the morality provisions in the Lanham Act, this piece is the first scholarly project that engages an empirical analysis of the Section 2(a) rejections based on scandalousness; it contains a look behind the scenes at how the morality provisions are applied throughout the trademark registration process. This study analyzes which marks are being rejected, what evidence is being …

When Biopharma Meets Software: Bioinformatics At The Patent Office, Saurabh Vishnubhakat, Arti K. Rai

Faculty Scholarship

Scholars have spilled much ink questioning patent quality. Complaints encompass concern about incoming applications, examination by the U.S. Patent and Trademark Office (“USPTO”), and the USPTO’s ultimate output. The literature and some empirical data also suggest, however, that applications, examination, and output may differ considerably based on technology. Most notably, although definitions of patent quality are contested, quality in the biopharmaceutical industry is often considered substantially higher than that in information and communications technology (ICT) industries.

This Article presents the first empirical examination of what happens when the two fields are combined. Specifically, it analyzes the creation and early history …

The Uspto Patent Pro Bono Program, Jennifer M. Mcdowell, Saurabh Vishnubhakat

Faculty Scholarship

In recent years, the United States Patent and Trademark Office has systematically been engaging the legal community with inventor assistance beyond the agency’s usual business of examining applications for patents and trademarks. The purpose of the USPTO’s effort has been to support innovators who are constrained by a lack of resources to pay for patent counsel necessary to protect the full scope of their inventions. This Article describes the brief history, flexible structure, and ongoing growth of that effort, embodied in the USPTO Patent Pro Bono Program. The Patent Pro Bono Program is a national network coordinated by the USPTO …

The Mouse That Trolled: The Long And Tortuous History Of A Gene Mutation Patent That Became An Expensive Impediment To Alzheimer's Research, Tania Bubela, Saurabh Vishnubhakat, Robert Cook-Deegan

Faculty Scholarship

This case study presents the tale of the academic discovery of a rare mutation for early-onset Alzheimer's disease that was patented by a sole inventor and licensed to a non-practicing entity (NPE), the Alzheimer's Institute of America (AIA). Our aims are (1) to relate this story about patents, research tools, and impediments to medical progress, and (2) to inform ongoing debates about how patents affect research, disposition of university inventions, and the distribution of benefits from publicly funded research. We present an account of the hunt for Alzheimer's genes, their patenting, assignment, and enforcement based on literature, litigation records and …

Trade Secret Hacking, Online Data Breaches, And China's Cyberthreats, Peter K. Yu

Faculty Scholarship

Online hacking from China, Iran, North Korea, Russia, and other parts of the world has caught the attention of U.S. policymakers, commentators, and the American public. For example, the discussion of the systematic attacks launched by potentially government-sponsored Chinese hackers reinforces the view that China is using all means necessary to compete against the United States. Most recently, the unprecedented cyberattack on Sony's movie studio also delayed and scaled back the nationwide theatrical release of the film The Interview. This attack led President Obama to call for greater cooperation between the government and the private sector to protect cybersecurity and …

What's It Worth To Keep A Secret?, Gavin C. Reid, Nicola Searle, Saurabh Vishnubhakat

Faculty Scholarship

This article is the first major study of protection and valuation of trade secrets under federal criminal law. Trade secrecy is more important than ever as an economic complement and substitute for other intellectual property protections, particularly patents. Accordingly, U.S. public policy correctly places a growing emphasis on characterizing the scope of trade secrets, creating incentives for their productive use, and imposing penalties for their theft. Yet amid this complex ecosystem of legal doctrine, economic policy, commercial strategy, and enforcement, there is little research or consensus on how to assign value to trade secrets. One reason for this gap is …

Frand And Compulsory Licenses: Analysis And Comparison, Srividhya Ragavan, Raj S. Davé

Faculty Scholarship

This section compares two different forms of licenses being FRAND and complusory license. Both forms of licenses are critical to achieve access to otherwise difficult to access technologies. The FRAND licenses have been widely embraced, especially in the software, mobile phones, and communications sectors. Compulsory licenses have been sparingly used by Governments where the public's need for the invention was considered to over-weigh the needs of the patentee, essentially for pharmaceuticals. Compulsory licenses have been universally criticized for being an imposed burden on the patentee. In comparing these two forms of licenses, this section outlines that despite the obvious differences …

Commercializing And Protecting Intellectual Property In An Increasingly Open And Fluid World, Terri Lynn Helge, Deborah L. Lively

Faculty Scholarship

For all non-profit organizations, intellectual property is important whether it is intellectual property created by the organization or instead is intellectual property used by the organization in the operation of its business.