Intellectual Property Law Commons^™

Million-Card Monte: Reforming The Markush Claim Post-Aia To Save Synthetic Chemical Innovation, 12 J. Marshall Rev. Intell. Prop. L. 720 (2013), Adam Sussman

UIC Review of Intellectual Property Law

The Markush patent claim arose as a solution to the challenging problem of describing inventions that could not be defined any other way than by a list of the members of a group. The original Markush group, claimed in 1923, listed only three alternatives; in the years since, the populations of these groups have swelled to totals beyond calculation, as pharmaceutical companies took advantage of the opportunity to claim multitudes of alternative chemical compounds by systematically iterating the functional groups at various molecular positions. However, without completing the now-impossible task of synthesizing and testing each of innumerable chemical compounds for …

Reverse Payment Settlements: The U.S. Supreme Court Has Finally Agreed To Resolve The Issue, 12 J. Marshall Rev. Intell. Prop. L. 787 (2013), Tyler Cho

UIC Review of Intellectual Property Law

Paragraph IV of the Hatch-Waxman Act provides a mechanism for litigating pharmaceutical patent infringement disputes. Many of these cases have been settled with “reverse payments” from the brand to the generic in return for delayed generic entry. The U.S. Federal Trade Commission (FTC) has contested a number of these settlements with mixed results. On July 16, 2012, the U.S. Court of Appeals for the Third Circuit issued a decision holding that pharmaceutical patent settlements that restrict generic entry and contain a payment to the generic company are presumptively unlawful under U.S. antitrust laws. By holding that a patent settlement can …

Directed To Or Encompassing A Human Organism: How Section 33 Of The America Invents Act May Threaten The Future Of Biotechnology, 12 J. Marshall Rev. Intell. Prop. L. 768 (2013), Ava Caffarini

UIC Review of Intellectual Property Law

Biotechnology is a rapidly growing field that has pushed the limits of patent eligible subject matter. In response to the expansion of biotechnology, critics have emerged with both economic and moral concerns over the development and patenting of these technologies. On the economic front, critics are wary of the potential development of an“anticommons.” On the moral front, critics are concerned with the potential to erode human dignity and “play God.” Congress has responded to the moral concerns with section 33 of the America Invents Act. Section 33 states that“[n]otwithstanding any other provision of law, no patent may issue on a …

I Like Cabernet And Merlot But I'M Not Drinking Bordeaux: Certified Confusion, 13 J. Marshall Rev. Intell. Prop. L. 203 (2013), Angela Huisingh

UIC Review of Intellectual Property Law

A trademark’s purpose is to help consumers identify a service or product’s source. To this end, trademark owners may prevent others from using their marks on similar goods. But to ensure that a few savvy businesspersons do not monopolize certain terms, the Lanham Act carves out specific exceptions to trademark protection. Some of these exceptions include indications of geographic origin, such as Bordeaux and Napa Valley. Wine, however, has long been identified primarily by the geographic region in which its grapes grow. To ameliorate this fundamental divide, and to preserve the integrity of their Geographical Indications in the eyes of …

How The Internet Has Removed The Historical Rationale For "Non-Analogous Arts", 13 J. Marshall Rev. Intell. Prop. L. 68 (2013), Hal Milton

UIC Review of Intellectual Property Law

The growth of the Internet has affected countless aspects of daily life, including the patent system. Internet-based legal research has grown considerably, given the convenience of general search agents such as Google, legally-focused search agents such as Westlaw and Lexis, and patent-focused search agents such as the PAIR system of the United States Patent and Trademark Office. These legal research tools have not only made it easier to find prior art, they have also expanded the volume of information that is available to one of ordinary skill in the art. Consequently, the traditional rules of so-called “analogous arts” are changing. …

Chinese National Well-Known Trademarks And Local Famous Trademarks In Light Of The 2013 Trademark Law: Status, Effect, And Adequacy, 13 J. Marshall Rev. Intell. Prop. L. 225 (2013), Paul Kossof

UIC Review of Intellectual Property Law

Chinese national well-known trademarks (中国驰名商标) and local famous trademarks (本地著名商标) are two distinct unique intellectual property rights in the People’s Republic of China (“PRC”). Intellectual property attorneys in the PRC, especially foreign consultants, often encounter challenges in understanding these trademark rights including various legislative, administrative, and judicial documents, differences between local regulations, and the general lack of information and translations. The third revision to the Trademark Law, which takes effect on May 1, 2014, will bring widespread domestic attention to this subject because the new law bans the use of national well-known trademarks on products, packaging, and advertising. The author …

Application Of The Hatch-Waxman Act's Safe Harbor Provision Following Momenta, 13 J. Marshall Rev. Intell. Prop. L. 1 (2013), Alfred C. Server

UIC Review of Intellectual Property Law

The Federal Circuit’s recent decision in Momenta v. Amphastar highlights the continuing uncertainty regarding the scope of the statutory exemption from patent infringement provided in 35 U.S.C. § 271(e)(1). The statute states that “[i]t shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.” Since its adoption in 1984 with …

Memetic Theory, Trademarks & The Viral Meme Mark, 13 J. Marshall Rev. Intell. Prop. L. 96 (2013), Shontavia Jackson Johnson

UIC Review of Intellectual Property Law

This Article proposes that memetic theory is a useful lens through which to view trademarks, particularly as there has been a rise in the number of applications for culturally-driven words and catchphrases in the United States Patent and Trademark Office. Memetic theory, or memetics, is a scientific field related to how units of information evolve and replicate. These units of information, called memes, undergo a process of natural selection comparable to that of genes. To survive as trademarks, memes must not only exist in the proper form, but they must also subsist in an environment where replication, variation, and selection …

Comparing Apples And Oranges In Trademark Law: Challenging International And Constitutional Validity Of Plain Packaging Of Tobacco Products, 13 J. Marshall Rev. Intell. Prop. L. 130 (2013), Sarah A. Hinchliffe

UIC Review of Intellectual Property Law

Plain packaging, a new tobacco control tool being considered by a growing number of countries, mandates the removal of all attractive and promotional aspects of tobacco product packages. As a result of plain packaging, the only authorized feature remaining on a tobacco package is the brand name, displayed in a standardized font, size, color, and location on the package. At issue is the meaning of “use” of trademarks on plain packaging, and whether plain packaging amounts to the creation of an invalid encumbrance. The tobacco industry and other regulated sectors (including wine, fast-food, and pharmaceuticals) also believe that plain packaging …

Copyright Trolls, Defining The Line Between Legal Ransom Letters And Defending Digital Rights: Turning Piracy Into A Business Model Or Protecting Creative From Internet Lawlessness?, 13 J. Marshall Rev. Intell. Prop. L. 170 (2013), Luke S. Curran

UIC Review of Intellectual Property Law

The scarlet letter of the term “troll” has long been affixed to the lapel of businesses within the patent context. This pejorative term, however, has had little relevance or widespread public recognition within the domain of copyright law until 2010. Since the awakening of the “copyright troll,” several non-author rights holders have recently adopted and propagated a substantially modified version of this sue-to-settle paradigm within the context of copyright law while introducing it to the scale of mass-litigation. Further, the amorphous term “copyright troll” traditionally characterizes a business practice of acquiring unenforced copyrights that are being infringed upon through various …

Session Iv: Technology And The Future Of Privacy, 29 J. Marshall J. Computer & Info. L. 379 (2012), David E. Sorkin, Ann Bartow, Robert S. Gurwin, Doris E. Long

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

A Need For Clearer Language About Patent Law, 11 J. Marshall Rev. Intell. Prop. L. 457 (2012), Paul M. Janicke

UIC Review of Intellectual Property Law

This article addresses the manner by which the principles and rules of United States ("U.S.") patent law are addressed, especially those that are not controversial. We often seem driven to use labels that are misleading to external observers, making the subject seem more complex than it is. The principal misstatements addressed in this article are: (1) saying that under American Invents Act, the U.S. is moving to a first-to-file system; (2) reciting that U.S. patent law has no extraterritorial reach; (3) characterizing the term of a U.S. patent as twenty years from filing; (4) purporting in patent licenses to grant …

Patent Claim Construction As A Form Of Legal Interpretation, 12 J. Marshall Rev. Intell. Prop. L. 40 (2012), Christian E. Mammen

UIC Review of Intellectual Property Law

Since the U.S. Supreme Court’s landmark decision, Markman v. Westview Instruments, Inc., courts have employed a textualist approach when construing patent claims. Claim construction has been held to be purely a matter of law, which leaves no room for deference when the construction is reconsidered on appellate review. But as argued in this article, patent claims are a unique type of legal text, and cannot simply be analogized to statutes or contracts, which courts and scholars occasionally attempt to do. Taking lessons from the general legal theory of interpretation, the textualist approach should only be a starting point for the …

A New Institutional Economics Perspective On Trademarks: Rebuilding Post Conflict Zones In Sierra Leone And Croatia, 11 J. Marshall Rev. Intell. Prop. L. 745 (2012), Roya Ghafele, Benjamin Gibert

UIC Review of Intellectual Property Law

This paper evaluates the role of collective trademarks in enhancing the ability of tourism clusters to stimulate economic growth, local ownership and innovative governance. Illustrating how intellectual property (IP) law can be leveraged to achieve this, we offer a new economic rationale for trademarks in the context of tourism. Two post-conflict case studies of Sierra Leone and Croatia provide a crash test for this approach. By emphasizing the role of law, institutions and infrastructure in stimulating tourism in post-conflict zones, this paper echoes new institutional economics perspectives that highlight the impact of legal structure on development. Despite widespread acknowledgement of …

Fostering Web 2.0 Innovation: The Role Of The Judicial Interpretation Of The Dmca Safe Harbor, Secondary Liability And Fair Use, 12 J. Marshall Rev. Intell. Prop. L. 70 (2012), Susanna Monseau

UIC Review of Intellectual Property Law

Web 2.0 has generated a surplus of creativity, encouraging innovation of new technologies and further creative expansion of the internet. Social media platforms have demonstrated a significant growth during this time and have been used to create and disseminate a wealth of information and cultural material. While it is important that copyright owners receive legal protection of the content they create, it is necessary not to simultaneously stifle the creativity of end-users. Copyright owners have more power in bargaining for their rights, and their rights are well established through statutory protections. However, internet innovators and end-users, who may have a …

Legal Writing, The Remix: Plagiarism And Hip Hop Ethics, 63 Mercer L. Rev. 597 (2012), Kim D. Chanbonpin

UIC Law Open Access Faculty Scholarship

In this Article, I focus on hip hop music and culture as an access point to teach first-year law students about the academic and professional pitfalls of plagiarism. Hip hop provides a good model for comparison because most entering students are immersed in a popular culture that is saturated with allusions to hip hop. As a point of reference for incoming law students, hip hop possesses a valuable currency as it represents something real, experienced, and relatable.

Significant parallels exist between the cultures of United States legal writing and hip hop, although attempting direct analogies would be absurd. Chief among …

Updating The Patent System's Novelty Requirement To Promote Small-Molecule Medicinal Progress, 45 J. Marshall L. Rev. 1151 (2012), Jason Brewer

UIC Law Review

No abstract provided.

Games Are Not Coffee Mugs: Games And The Right Of Publicity, 29 Santa Clara Computer & High Tech. L.J. 1 (2012), William K. Ford, Raizel Liebler

UIC Law Open Access Faculty Scholarship

Are games more like coffee mugs, posters, and T-shirts, or are they more like books, magazines, and films? For purposes of the right of publicity, the answer matters. The critical question is whether games should be treated as merchandise or as expression. Three classic judicial decisions, decided in 1967, 1970, and 1973, held that the defendants needed permission to use the plaintiffs' names in their board games. These decisions judicially confirmed that games are merchandise, not something equivalent to more traditional media of expression. As merchandise, games are not like books; instead, they are akin to celebrity-embossed coffee mugs. To …

Chinese Patents As Copyrights, 34 Campbell L. Rev. 685 (2012), Benjamin Liu

UIC Law Open Access Faculty Scholarship

Although harmonization efforts such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Patent Corporation Treaty regime have brought national patent systems closer, differences among them remain a continuing challenge to innovators in an interconnected global marketplace. The recent development of the Chinese patent system is of particular interest because China is the factory of the world, the most populous market, the home of the patent office that handles the most patent application filings, and the number one source of imports that violate intellectual property rights (IPR). Its patent system affects every company whose supply chain, …

Chinese Patent Quality: Running The Numbers And Possible Remedies, 11 J. Marshall Rev. Intell. Prop. L. 478 (2012), Mark Liang

UIC Review of Intellectual Property Law

In an effort to improve its economic and technological prowess, China in recent years has promulgated measures that encourage patenting activity. These measures have had their intended effect. Over a million patent applications were filed at China’s State Intellectual Property Office ("SIPO") in 2010, making it the busiest patent office in the world—by comparison, a mere 600,000 were filed at the United States Patent and Trademark Office, placing it a distant second. The disparity and trend is expected to grow in the coming years. But looking behind the headline numbers raises doubts about the quality of China’s patents and the …

Extraterritorial Protection Of Trade Secret Rights In China: Do Section 337 Actions At The Itc Really Prevent Trade Secret Theft Abroad?, 11 J. Marshall Rev. Intell. Prop. L. 523 (2012), Steven E. Feldman, Sherry L. Rollo

UIC Review of Intellectual Property Law

With an ever increasing number of United States ("U.S.") companies conducting business abroad or conducting business with foreign entities there is more need than ever for the U.S. companies to consider how they can protect their intellectual property assets. The Federal Circuit‘s recent TianRui Grp.Co. v. Int’l Trade Comm’n and Amsted Indus. decision highlights the potential of section 337 of the U.S. Patent Act as a tool to prevent the exploitation of misappropriated trade secrets embodied in products that are imported into the United States. This article explores the potential impact of the TianRui decision on business practices abroad, particularly …

Comparison Of Chinese And U.S. Patent Reform Legislation: Which, If Either, Got It Right?, 11 J. Marshall Rev. Intell. Prop. L. 567 (2012), Wayne C. Jaeschke, Zhun Lu, Paul Crawford

UIC Review of Intellectual Property Law

Chinese patent law has a short history whereas the United States ("U.S.") system has a more robust history. This article chronicles important remaining differences between Chinese and U.S. patent laws including the utility model successfully employed at State Intellectual Property Office of the People’s Republic of China ("SIPO") and in the Chinese courts, but not available under U.S. law. Some differences are discussed in regard of patent appeals, reexaminations for invalidity, China’s lack of a reissue process to correct major errors, China’s inventors remuneration process and compulsory licensing of patents, and China’s unique requirement of post termination compensation to support …

Fighting Poison With Poison? The Chinese Experience With Pharmaceutical Patent Linkage, 11 J. Marshall Rev. Intell. Prop. L. 623 (2012), Benjamin Liu

UIC Review of Intellectual Property Law

Countries after countries are adopting a controversial regulatory system of linking the market approval for pharmaceuticals to the status of potentially blocking patents as part of their bilateral and multilateral trade agreement package with the United States. Surprisingly, China took up pharmaceutical patent linkage in the absence of any treaty obligations and became the first country to adopt this regulatory regime outside of North America, despite the presence of a flourishing generics pharmaceutical industry and its developing country status. In fact, the Chinese regulation promised more intellectual property ("IP") protection than what even the United States FDA is capable of …

Managing Peer-To-Peer Traffic In Mainland China And Hong Kong, 11 J. Marshall Rev. Intell. Prop. L. 548 (2012), Ke Steven Wan

UIC Review of Intellectual Property Law

For over a decade, copyright infringement using peer-to-peer ("P2P") file sharing has plagued the content industries. Response came in the form of massive lawsuits against file sharers and the use of technologies including digital rights management and technical protection measures. However, illegal P2P file sharing is still rampant. Increasingly, internet service providers ("ISPs") have begun to monitor network traffic with deep packet inspection. Under the Digital Millennium Copyright Act ("DMCA"), ISPs are usually only responsible for their own direct copyright infringing acts. To mitigate potential liability, some ISPs have agreed to partner with copyright owners to serve warnings to subscribers …

Rights Of Joint Patent Owners In China, 11 J. Marshall Rev. Intell. Prop. L. 601 (2012), Yunling Ren, Yan Hong

UIC Review of Intellectual Property Law

In the past decade, Chinese courts began to recognize joint patent owners’ rights and obligations that are distinguishable from other proprietary property rights, but the law did not reflect these concerns. It was not until the Third Revision of the Chinese Patent Act in 2009 that the law recognized the existence of joint-ownership rights in patents. Part of the reason for this change was not only to conform to the standards of the international intellectual property community, but also to promote the commercialization of patented inventions and technology transfer. Article 15 of the Patent Act was added to allow joint-owners …

The Paradox That Wasn't: Federal Preemption Of State-Law Voice Misappropriation Claims, 11 J. Marshall Rev. Intell. Prop. L. 694 (2012), Zachary M. Vaughan

UIC Review of Intellectual Property Law

There exists in the law of copyright preemption what some have identified as a paradox: that in certain cases involving claims for voice misappropriation in which a plaintiff’s voice has merely been imitated, claims have been allowed to proceed, while other cases that involve actual uses of a plaintiff’s voice—that is, samples from sound recordings—have been held to be preempted by the federal Copyright Act. This article argues that this apparent paradox is actually no conflict at all. After a brief background section, this article collects and explains cases, discusses the strengths and weaknesses of one possible harmonization of the …

“There’S A Hole In The Bucket:” The Effective Elimination Of The Inequitable Conduct Doctrine,11 J. Marshall Rev. Intell. Prop. L. 717 (2012), Katherine E. White

UIC Review of Intellectual Property Law

The year 2011 proved to be a momentous year in patent law. The doctrine of inequitable conduct was particularly rocked by changes to the law. Both the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson and Co. and the America Invents Act effectively gutted the inequitable conduct cause of action. Therasense tightened the materiality and intent standards, thus lowering the duty of candor standard that will be enforced in the courts. The America Invents Act created an escape clause for those who fail to disclose adequately during initial examination through the supplemental examination process. Did Congress and the Federal …

Exploring Apple’S Ipad Trademark Blunder: Chinese Trademark Approval Procedure Is A Trademark Protection Safeguard Or Another National Protectionism?, 11 J. Marshall Rev. Intell. Prop. L. 777 (2012), Arthur Tan-Chi Yuan

UIC Review of Intellectual Property Law

It is well-reported that Apple’s iPad® product embodies technological advances that are protected by U.S. and foreign patents. One would also assume that it is protected by trademarks in various jurisdictions, including China. However, to this day, Apple struggles to prefect its iPad trademark rights in China, the second largest economy in the world. While the Chinese trademark registration approval process is different from that in the U.S. practice, such approval step is essential to every international corporation doing business in China. This article explains where Apple may have overlooked this step in the overall trademark registration process in China …

Cloud Computing And The Doctrine Of Joint Infringement: ‘Current Impact’ And Future Possibilities, 11 J. Marshall Rev. Intell. Prop. L. 673 (2012), Nicole D. Galli, Edward Gecovich

UIC Review of Intellectual Property Law

The computing landscape is changing in that businesses – and individuals – are increasingly turning to “the cloud” for computing solutions. In an attempt to maintain patent portfolios that keep pace with the changing computing landscape, an increasing number of corporations are filing for patent protection on cloud computing related technologies. Cloud computing patents, however, may be difficult to enforce in light of current Federal Circuit case law relating to the Joint Infringement Doctrine. Two cases, Akamai Technologies, Inc. v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp., decided by the Federal Circuit in 2010 and in …

Cybersex: Protecting Sexual Content In The Digital Age, 11 J. Marshall Rev. Intell. Prop. L. 815 (2012), Nicole Chaney

UIC Review of Intellectual Property Law

Advertisers employ bare-skinned models and sex appeal to seduce American consumers with every magazine, billboard, and television advertisement. The ubiquity of sexual gratification has reached a tangible quality in American culture, but sex is still somehow taboo in our legal system. Despite the vast market for online adult entertainment, obscenity laws have been used to strike down claims for adult content copyright owners. These content owners are producing creative sexual expression for the public benefit, but they are being denied the same economic incentives granted to their mainstream counterparts. Ironically, Playboy Co. is an outlier in the adult entertainment industry …