Intellectual Property Law Commons^™

What Is Owed: Obligation’S Relevance In Property And Intellectual Property Theory, Kali Murray

Texas A&M Journal of Property Law

This Essay explores how Gerhart’s theory of social obligation in property law offers us an innovative way to characterize key theories in patent law. Consequently, throughout this Essay, I employ lessons from patent law that provide a concrete example of how obligations may work in various doctrinal subjects. Part I outlines the basic contours of Gerhart’s theory of obligation. Part II outlines the three basic functions of obligation in property and intellectual property theory. It is hoped that this Essay will serve a substantive function by continuing the ongoing dialogue between property law and intellectual property law in ways that …

The Strategic And Discursive Contributions Of The Max Planck Principles For Intellectual Property Provisions In Bilateral And Regional Agreements, Peter K. Yu

Faculty Scholarship

In June 2013, the Max Planck Institute for Intellectual Property and Competition Law released its Principles for Intellectual Property Provisions in Bilateral and Regional Agreements. Drafted by the Institute’s directors and research fellows in collaboration with a team of outside experts, this document seeks to facilitate the development of "international rules and procedures that can achieve a better, mutually advantageous and balanced regulation of international [intellectual property]."

This essay discusses the important contributions the Principles have made at both the strategic and discursive levels. It situates these two sets of contributions in the context of the ongoing challenges confronting the …

Expired Patents, Saurabh Vishnubhakat

Faculty Scholarship

This article presents a comprehensive empirical description of the public domain of technologies that have recently passed out of patent protection. From a new dataset of over 300,000 patents that expired during 2008–2012, the study examines technological, geographical, and procedural traits of newly public inventions as a basis for exploring the social value associated with their competitive use. Moreover, comparing these inventions to inventions newly patented during the same period enables more specific discussion of how the balance of innovation in the United States continues to change.

Justifying India's Patent Position To The United States International Trade Commission And Office Of The United States Trade Representative, Srividhya Ragavan, Sean Flynn, Brook Baker

Faculty Scholarship

The paper below largely is an extract of the testimonial filed by the authors to the Secretary of the ITC in response to the Notice on the Federal Register dated August 29, 2013 titled Trade, Investment, and Industrial Policies in India: Effects on the U.S. Economy. Where required, the paper also draws from the written submissions that the authors made to the United States Trade Representative’s (hereinafter, USTR) office on the related question of whether India deny adequate and effective protection of intellectual property rights or deny fair and equitable market access to U.S. persons who rely on intellectual property …

Intellectual Property, Asian Philosophy And The Yin-Yang School, Peter K. Yu

Faculty Scholarship

As an introduction to a special issue on intellectual property philosophy, this article focuses on insights from Asian thought. Such a focus is needed not only to provide balance within this special issue, which includes articles focusing primarily on Western philosophy, but also to highlight the compatibility between Asian philosophy and the notion of intellectual property rights. More importantly, this article aims to demonstrate that Asian philosophy may suggest new ways to address the ongoing and highly complex intellectual property challenges confronting emerging economies and the digital environment.

This article begins by providing a brief discussion of the many different …

Proposed Secondary Liability Regimes For Trademark Infringement Online: Commentary, Irene Calboli, Jane Ginsburg, Amy Cotton, Bob Weigel, Bruce Rich, Miguel Peguera

Faculty Scholarship

No abstract provided.

How Copyright Law May Affect Pop Music Without Our Knowing It, Peter K. Yu

Faculty Scholarship

Commissioned for a symposium on copyright law and the creation of music, this article explores five questions about popular music that can be illuminated by greater insights into copyright law and the music business. Why do popular songs usually last for fewer than five minutes? Why are professional songwriters dissatisfied with Pandora and Spotify? Why can we bring European CDs back to the United States? Why can't YouTube videos be created with ASCAP/BMI licenses? Are digital downloads sales or licenses? And as a bonus: Why did the royalty rate for sheet music stay at seven cents per copy?

It is …

Overlapping Copyright And Trademark Protection: A Call For Concern And Action, Irene Calboli

Faculty Scholarship

In this Article, I tackle a controversial topic-the overlapping trademark and copyright protection that can apply to creative works such as fictional characters, pictures, video clips, and songs. In particular, I highlight the possible negative consequences that granting trademark protection to these works-concurrently or after the expiration of copyright protection- can have on the societal bargain upon which copyright protection is built and justified. To date, scholars have only limitedly addressed these consequences, and more academic attention is needed in this area. In contrast, the advantages of trademark rights in creative works (in their entirety or in separated features of …

Gender Diversity In The Patent Bar, Saurabh Vishnubhakat

Faculty Scholarship

This article describes the state of gender diversity across technology and geography within the U.S. patent bar. The findings rely on a new gender-matched dataset, the first public dataset of its kind, not only of all attorneys and agents registered to practice before the United States Patent and Trademark Office, but also of attorneys and agents on patents granted by the USPTO. To enable follow-on research, the article describes all data and methodology and offers suggestions for refinement. This study is timely in view of renewed interest about the participation of women in the U.S. innovation ecosystem, notably the provision …

Copyright’S Mercantilist Turn, Glynn S. Lunney Jr

Faculty Scholarship

Over the last twenty years, arguments for broader copyright have taken an increasingly mercantilist turn. Unable to establish that broader copyright will lead to more or better original works, as the Constitution and the traditional economic framework require, proponents have begun arguing for broader copyright on the basis of revenue and jobs. Rampant unauthorized copying is theft or piracy, proponents insist, depriving copyright owners of revenue and destroying jobs. Whether or not it leads to more or better works, broader copyright will increase revenue to copyright owners and thus increase employment in the copyright industries. This increased employment, on its …

Cognitive Economy And The Trespass Fallacy: A Response To Professor Mossoff, Saurabh Vishnubhakat

Faculty Scholarship

In his recent essay The Trespass Fallacy in Patent Law, Professor Adam Mossoff argues cogently that the metaphor of trespass has become a misused basis for patent indeterminacy critiques that it cannot conceptually or empirically support. While sharing his caution that metaphors are not to be trifled with, this reply suggests that trespass has both a smaller role and a larger potential benefit in the debate on patent indeterminacy, and advances an opposite solution.

What Patent Attorney Fee Awards Really Look Like, Saurabh Vishnubhakat

Faculty Scholarship

This essay gives an empirical account of attorney fee awards over the last decade of patent litigation. Given the current attention in legislative proposals and on the Supreme Court’s docket to more liberal fee shifting as a check on abusive patent litigation, a fuller descriptive understanding of the current regime is of utmost importance to forming sound patent litigation policy. Following a brief overview of judicial experience in patent cases and trends in patent case filing, this study presents analysis of over 200 attorney fee award orders during 2003-2013.

The study confirms the commonsense view that plaintiffs have tended to …

The Growing Public Domain In Medicine, Saurabh Vishnubhakat

Faculty Scholarship

This essay describes the growing public domain of inventions associated with drugs and medicine, and geographies associated with identifiable shifts in the balance of innovation that may be especially favorable for promoting wider access to socially useful technologies. To do so, it departs from the largely ex ante perspective that currently informs the intersectional debate regarding human rights and patent rights and, instead, looks backward to inquire what innovations from past patents have already become publicly available in service of the human rights objective of greater access to technology. Ex post analysis of this kind may help public and private …

In Territorio Veritas? Bringing Geographical Coherence Into The Ambiguous Definition Of Geographical Indications Of Origin, Irene Calboli

Faculty Scholarship

In this article, I touch upon a topic that remains highly controversial in international intellectual property law—the legal protection of geographical indications of origin (GIs): Chianti wine, Champagne sparkling wine, Gorgonzola cheese, Parma ham, Darjeeling tea, Colombian coffee, and other terms that indicate (or are supposed to indicate, as I will develop in this article) the geographical origin of the products they identify. In line with the theme of this special issue of the WIPO Journal, I focus on the requirement of “geographical origin” upon which the protection of GIs has been historically built and is generally justified. In particular, …

Betty Boop And The Return Of Aesthetic Functionality: A Bitter Medicine Against "Mutant Copyrights"?, Irene Calboli

Faculty Scholarship

This article offers a brief overview of the history and developments of the doctrine of aesthetic functionality in the United States and examines the recent decisions in Fleischer Studios, Inc v AVELA, Inc . In particular, the article argues that the courts in Fleischer added an important element to the interpretation of the doctrine, namely the fact that the courts seemed willing to resort to aesthetic functionality to counter the consequences resulting from the practice of using trade mark law as an additional form of protection for copyrighted, or once copyrighted, creative works.

Intellectual Property Geographies, Peter K. Yu

Faculty Scholarship

Written for a special issue on intellectual property and geography, this article outlines three sets of mismatches that demonstrate the vitality, utility and richness of analyzing intellectual property developments through a geographical lens. The article begins by examining economic geography, focusing on the tensions and conflicts between territorial borders and sub-national innovation (including those relating to obligations under the WTO TRIPS Agreement). This article then examines the oft-found mismatch between political geography and cultural geography. Illustrating this mismatch is the challenge of protecting traditional knowledge and traditional cultural expressions. The article concludes by exploring the growing mismatch between legal geography …

Virotech Patents, Viropiracy, And Viral Sovereignty, Peter K. Yu

Faculty Scholarship

Although there are many important intellectual property and public health developments in the United States, the domestic debate remains surprisingly disconnected from the international debate. To help bridge this disconnect, this Article discusses the interrelationship between intellectual property and public health in the context of communicable diseases. This type of disease is intentionally picked to highlight how developments abroad could easily affect what happens at home, and vice versa.

The first half of this Article recounts three distinct stories about viruses responsible for AIDS, SARS, and the avian influenza (H5N1). The first story focuses on the ongoing developments within the …

Reverse Payments, Perverse Incentives, Murat C. Mungan

Faculty Scholarship

Issuing and enforcing prescription drug patents requires courts and legislatures to strike a delicate balance. A patent gives drug manufacturers a legal, if temporary, monopoly on sales of a drug; this encourages manufacturers to engage in costly research and development of new medicines. But not all patents issued by the Patent Office are ultimately deemed valid – generic drug manufacturers can infringe the patent, and, when sued, attack its validity in court on a variety of grounds, including obviousness. In recent years, patent holders have begun to settle these suits (which they initiated) by paying the alleged infringer. Not surprisingly, …

Five Oft-Repeated Questions About China's Recent Rise As A Patent Power, Peter K. Yu

Faculty Scholarship

Policymakers, industries, commentators and the media have widely criticized China for its failure to adequately protect intellectual property rights. In recent years, however, the discourse on intellectual property developments in China has slowly begun to change. Such a change is the most notable in the patent area. Today, China is already among the top five countries filing patent applications through the Patent Cooperation Treaty (PCT). In 2011, the number of PCT applications increased by 33.4% to 16,406, earning China the fourth spot, behind only the United States, Japan and Germany. Among all the applicants, ZTE Corp. and Huawei Technologies had …

Of Smart Phone Wars And Software Patents, Stuart Graham, Saurabh Vishnubhakat

Faculty Scholarship

Among the main criticisms currently confronting the US Patent and Trademark Office are concerns about software patents and what role they play in the web of litigation now proceeding in the smart phone industry. We will examine the evidence on the litigation and the treatment by the Patent Office of patents that include software elements. We present specific empirical evidence regarding the examination by the Patent Office of software patents, their validity, and their role in the smart phone wars. More broadly, this article discusses the competing values at work in the patent system and how the system has dealt …

Certain Patents, Alan C. Marco, Saurabh Vishnubhakat

Faculty Scholarship

This Article presents the first in a series of studies of stock market reactions to the legal outcomes of patent cases. From a sample of patents litigated during a 20-year period, we estimate market reactions to patent litigation decisions and to patent grants. These estimates reveal that the resolution of legal uncertainty over patent validity and patent infringement is, on average, worth as much to a firm as is the initial grant of the patent right. Each is worth about 1.0-1.5% excess returns on investment. There are significant differences between such market reactions before and after the establishment in 1982 …

Building The Ladder: Three Decades Of Development Of The Chinese Patent System, Peter K. Yu

Faculty Scholarship

In the past three decades, China has been very successful in developing its patent system. In 2012, the country is among the top five countries filing patent applications through the Patent Cooperation Treaty, behind only the United States, Japan and Germany. Among all the applicants, ZTE Corp. and Huawei Technologies had the largest and fourth largest number of PCT applications, respectively. With significant backing from the Chinese government and the anticipated involvement of the world's largest public sector, China will likely catch up with the existing intellectual property powers more quickly than many have anticipated.

Written for a special issue …

Taking Atrip Down Memory Lane, Peter K. Yu

Faculty Scholarship

The International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP) was founded in Geneva in July 1981, with the support and assistance of the World Intellectual Property Organization. This professional academic association now includes hundreds of intellectual property professors and researchers from around the world. As the final contribution to the "ATRIP Passes 30" Symposium, which collects the reminiscences of the past and current ATRIP presidents, this short essay provides, in chronological order, some key information about all the pre-ATRIP Round Tables and ATRIP Congresses. This short history not only documents the historical origins, rapid growth …

Intellectual Property Training And Education For Development, Peter K. Yu

Faculty Scholarship

Written for a symposium addressing the need to construct a positive policy and research agenda for international intellectual property law, this article explores ways to improve the design and delivery of intellectual property training and educational programs. The article draws on the author's experience as the rapporteur for the International Roundtable on WIPO Development Agenda for Academics.

The article begins by reflecting on WIPO’s changing orientation, outlining the principles and goals recognized in its Development Agenda. It emphasizes the need for an expansion of coverage in intellectual property training and educational programs. It also offers guidelines on ways to redesign …

Not So Obvious After All: Patent Law's Nonobviousness Requirement, Ksr, And The Fear Of Hindsight Bias, Glynn S. Lunney Jr, Christian T. Johnson

Faculty Scholarship

Before the creation of the Federal Circuit in 1982, nonobviousness served as the primary gatekeeper for patents. When patent holders sued for infringement and lost, more than sixty percent of the time, they lost on the grounds that their patent was obvious. With the advent of the Federal Circuit, nonobviousness became a much less difficult hurdle to surmount. From 1982 until 2005, when patent holders sued for infringement and lost, obviousness was the reason in less than fifteen percent of the cases. While obviousness remained formally a requirement of patent protection, there can be little doubt that the Federal Circuit …

Intellectual Property And Human Rights In The Nonmultilateral Era, Peter K. Yu

Faculty Scholarship

In the past decade, countries have actively established bilateral, plurilateral and regional trade and investment agreements, such as the Anti-Counterfeiting Trade Agreement and the Trans-Pacific Partnership Agreement. Although commentators have examined the conflict and tension between intellectual property and human rights in the past, the arrival of these agreements has ushered in a new era of nonmultilateralism that warrants a reexamination of the complex interrelationship between intellectual property and human rights.

This article closely examines the human rights impact of the intellectual property provisions in TRIPS-plus nonmultilateral agreements. It begins by outlining the challenges inherent in any analysis of the …

Intellectual Property And Asian Values, Peter K. Yu

Faculty Scholarship

From Niall Ferguson to Fareed Zakaria, commentators have paid growing attention to the rise of Asia and its implications for the West. Recent years have also seen the emergence of a growing volume of literature on intellectual property developments in Asia, in particular China and India. Few commentators, however, have explored whether Asian countries will take unified positions on international intellectual property law and policy.

Commissioned for the Inaugural International Intellectual Property Scholars Series, this article fills the void by examining intellectual property developments in relation to the decades-old 'Asian values' debate. Drawing on the region's diversity in economic and …

The Alphabet Soup Of Transborder Intellectual Property Enforcement, Peter K. Yu

Faculty Scholarship

n the past few years, policymakers, academic commentators, consumer advocates, civil liberties groups, and user communities have expressed grave concerns about the steadily increasing levels of enforcement of intellectual property rights. Many of these concerns relate to the "alphabet soup" of transborder intellectual property enforcement, which consists of the following: SECURE, IMPACT, ACTA, TPP, COICA, PIPA, SOPA, and OPEN.

Published in the inaugural issue of Drake Law Review Discourse, this short essay identifies six different concerns and challenges the Anti-Counterfeiting Trade Agreement (ACTA) poses to U.S. consumers, technology developers, and small and midsize firms. It then explores the ongoing negotiation …

The Rise And Decline Of The Intellectual Property Powers, Peter K. Yu

Faculty Scholarship

In the past decade, China has experienced many impressive economic and technological developments. Intriguingly, the narrative about piracy and counterfeiting there is rarely linked to the narrative about the China's technological rise. To provide a more comprehensive picture, this article brings together these two different narratives to explore what their combination would mean for the United States and its intellectual property industries.

Delivered as the keynote luncheon address at the Symposium on "Applications of Intellectual Property Law in China," this article begins with the good news that China is at the cusp of crossing over from a pirating nation to …

The Middle Kingdom And The Intellectual Property World, Peter K. Yu

Faculty Scholarship

Delivered as the keynote opening address at the Symposium on "China's Role in Regulating the Global Information Economy," this Article scrutinizes China's participation in the international intellectual property regime and its role in both the WTO and WIPO. It begins by discussing China's engagement with international intellectual property norms before its accession to the WTO in December 2001. It points out that China is not a "norm breaker" one typically infers from its disappointing record of intellectual property protection. Instead, the country should be viewed as a "norm taker," having accepted most of the WIPO-administered intellectual property treaties available for …