Intellectual Property Law Commons^™

Patent Aversion: An Empirical Study Of Patents Collateral In Bank Lending, Xuan-Thao Nguyen, Erik Hille

Articles

The most valuable assets of many companies today are patents. If patents are valuable, why do banks operating across the United States refuse to lend against patents in commercial lending to reduce their risks? Lending is the primary function of banks. Yet banks have a strong aversion to accept patents as collateral, rendering the vast number of patents as idle assets. This empirical study is the first to identify the patent aversion problem as contrary to the frequent headlines of how valuable patents are to the economy. By carefully extracting relevant patent and security interest filings data and examining the …

Safeguarding Washington's Trade Secrets: Protecting Businesses From Public Records Requests, John Delaney

Washington Law Review

Lawmakers constantly balance competing interests. They decide where to draw lines so that societal goals are accomplished without ignoring the needs of those who will be affected by their choices. The Washington State Legislature is now in the process of addressing the line between government transparency and the protection of private companies’ trade secrets. Companies who provide technology to the federal government are susceptible to losing their trade secrets through a public records request. The Washington State Legislature is currently reviewing the trade secret exception to the Public Records Act to ensure it is continuing to protect companies from losing …

The Supreme People's Court's Annual Report On Intellectual Property Cases (2016) (China), Tianyi (Tammy) Wu, Xiaoyang Wang

Washington International Law Journal

The Supreme People’s Court of China began publishing its Annual Report on Intellectual Property Cases in 2008. The Annual Report summarizes intellectual property cases, such as patent, trademark, copyright, trade secrets, and unfair competition cases. This 2016 Annual Report examines 27 cases and includes general guidelines for legal application. It reflects the Supreme People’s Court’s thoughts and approaches for ruling on new, difficult, and complex IP and competition cases.

Remarks On The Problem Of Scope In Ip, Mark P. Mckenna

Washington Journal of Law, Technology & Arts

These remarks were given as the keynote talk at The Art and Science of the Deal Conference at the University of Washington School of Law.

Chinese Patent Law's Statutory Damages Provision: The One Size That Fits None, Xiaowu Li, Don Wang

Washington International Law Journal

The concept of statutory damages was first introduced into the Chinese patent regime in 2001 as a “last-resort” approach for damages calculation in infringement cases. Curiously, in the following 15 years, this last-resort approach became so popular among the courts that it is essentially the exclusive approach today. This Article examines the legal and policy implications of the current statutory damages scheme, and concludes that the existence of statutory damages is fundamentally detrimental to the validity of the Chinese patent system. Therefore, we argue that the statutory damages provision in Article 65 of the Patent Law of China should be …

Taking Care Of Article 6BisNess: How Belmora Llc V. Bayer Consumer Care Ag Made The Well-Known Mark Doctrine Inevitable In The U.S., Gwen Wei

Washington Journal of Law, Technology & Arts

In Belmora LLC v. Bayer Consumer Care AG, the Fourth Circuit held that a foreign company with no U.S. federal trademark registration for "FLANAX" could nevertheless demand cancellation of its competitor's U.S. trademark for "FLANAX". This holding circumvented Article 6bis of the Paris Convention, a provision which protects trademark owners in signatory countries by way of the well-known mark doctrine. Following Belmora's precedent would allow foreign trademark owners to bypass the U.S.'s existing trademark registration system and so undermine U.S. trademark law's central principle of territoriality. This Article argues that Article 6bis is critical to asserting substantive rights …

"Let's Go Crazy" With Fair Use: Amending The Digial Millennium Copyright Act, Kiran K. Jassal

Washington Journal of Law, Technology & Arts

In Lenz v. Universal, the United States District Court for the Northern District of California ruled that copyright holders must consider fair use before filing takedown notices for infringing content posted on the internet. In the case, Stephanie Lenz uploaded a home video to YouTube of her children dancing to Prince's song "Let's Go Crazy.” In response, Universal Music Corporation submitted a takedown notice to YouTube pursuant to the Digital Millennium Copyright Act (“DMCA”), claiming that Lenz's home video violated its copyright in the song. Lenz claimed fair use of the copyrighted material and sued Universal for misrepresentation of …

Artistic Control After Death, Eva E. Subotnik

Washington Law Review

To what extent should authors be able to control what happens to their literary, artistic, and musical creations after they die? Viewed through the lens of a number of succession law trends, the evidence might suggest that strong control is warranted. The decline of the Rule Against Perpetuities and rise of incentive trusts reflect a tightening grip of the dead hand. And yet, an unconstrained ability of the dead to determine future uses of literature, art, and music is a fundamentally troubling notion. This Article evaluates the instructions authors give with respect to their authorial works against the backdrop of …

Patent Injunctions On Appeal: An Empirical Study Of The Federal Circuit's Application Of Ebay, Ryan T. Holte, Christopher B. Seaman

Washington Law Review

More than ten years after the United States Supreme Court’s landmark decision in eBay v. MercExchange, the availability of injunctive relief in patent cases remains hotly contested. For example, in a recent decision in the long-running litigation between Apple and Samsung, members of the United States Court of Appeals for the Federal Circuit divided sharply on whether an injunction was warranted to prevent Samsung from continuing to infringe several smartphone features patented by Apple. To date, however, nearly all empirical scholarship regarding eBay has focused on trial court decisions, rather than the Federal Circuit. This Article represents the first …

Future Of Innovation In Medicine: Incentives For New Medical Treatments And Global Health, Robin Jacob

Washington Journal of Law, Technology & Arts

The Future of Innovation in Medicine Conference (“Conference”) proceedings contained in this Symposium Issue are about the problem of incentivizing research into new uses for established medicines. Putting the problem into the wider context of financing pharma research generally gives an important perspective.

The Patent And Non-Patent Incentives For Research And Development Of New Uses Of Known Pharmaceuticals In Japan, Toshiko Takenaka

Washington Journal of Law, Technology & Arts

Japan is one of most innovative drug manufacturer-friendly countries because it revised its patent and drug regulation systems for providing patent and non-patent incentives for new use and treatment R&D based on its pro-patent and pro-medical science policies. This article provides an overview of the pharmaceutical industry and examines patent and non-patent incentives for drug R&D in focusing on incentives for developing new uses of and treatments for known drugs from a comparative law perspective. After discussing the difficulties in establishing infringement and in obtaining injunctions against generic drug manufacturers who infringe new use product patents, the article reviews measure …

Infringement Of Swiss-Type Second Medical Use Patent Claims In Germany—Recent Developments In Case Law, Matthias Zigann

Washington Journal of Law, Technology & Arts

Following recent regional court decisions on the infringement of second medical use patent claims, the German concept of manifest arrangement—previously believed to provide a safe harbor for generic pharmaceutical companies as long as they skinny-labeled their products—may be subject to a new interpretation. The German decisions are part of a Europe wide series of decisions on the same or similar subject matter and prove to be patent owner friendly.

Innovation In Known Drugs—The European Angle, Galit Gonen

Washington Journal of Law, Technology & Arts

Research into new uses for known drugs should be encouraged because the “repurposing” of known drug molecules can be a highly effective route of innovation for pharmaceutical companies. Investment in the development of these products should be rewarded. However, incentives that are designed to reward innovation must be in line with the size and value of the innovation in order to maintain a sustainable balance between incentivizing research and developing and encouraging a competitive market. In the context of encouraging innovation of new uses for known drugs, factors that facilitate access to drug development and innovation should also be considered …

Future Of Innovation In Medicine: Incentives For New Medical Treatments And Global Health, Anon

Washington Journal of Law, Technology & Arts

A transcript of the symposium's proceedings.

Zombie Patents And Zombie Companies With Patents, Xuan-Thao Nguyen

Articles

While a zombie is the undead and has no expiration, patents do. A patent comes into existence the moment the government, through the United States Patent and Trademark Office (USPTO), examines the invention application and issues a grant of patent. From that birth, a patent will have a lifetime of only twenty years from the date of filing the application. Patents expire and have no life after the twenty-year period.

Some patents die when the patentees abandon them by not paying maintenance fees. Dead patents must remain dead and become part of the public domain. Unfortunately, this Essay observes that …

A Transactional Theory Of The Reader In Copyright Law, Zahr K. Said

Articles

Copyright doctrine requires judges and juries to engage in some form of experiencing or “reading” artistic works to determine whether these works have been infringed. Despite the central role that this reading—or viewing, or listening—plays in copyright disputes, copyright law lacks a robust theory of reading, and of the proper role for the “reader.” Reading matters in copyright cases, first, because many courts rely on the “ordinary observer” standard to determine infringement, which requires figuring out or assuming how an ordinary observer would read the works at issue. Second, most courts characterize a key part of infringement analysis as a …

From Monkey Selfies To Open Source: The Essential Interplay Of Creative Culture, Technology, Copyright Office Practice, And The Law, Maria A. Pallante

Washington Journal of Law, Technology & Arts

The 2016 Distinguished Roger L. Shidler Lecture was delivered on July 22, 2016 at the University of Washington School of Law, Center for Advanced Study & Research on Innovation Policy during the 2016 Global Innovation Law Summit.

Deepsouth Will Rise Again—The Argument In Favor Of The Federal Circuit's Holding In Promega Corp. V. Life Technologies, Christopher Ainscough

Washington Journal of Law, Technology & Arts

Two recent holdings from the United States Court of Appeals for the Federal Circuit in Promega Corp. v. Life Technologies Corp. have come under fire from members of the patent community. In Promega, the Federal Circuit held that i) 35 U.S.C. § 271(f)(1) does not require a third party to "actively induce the combination" of a patented invention, and ii) that a single component can be a "substantial portion" of the components of patented invention. In this Article, I argue that the Federal Circuit decided these issues correctly in light of the policy considerations that went into Congress's enactment …

Supreme People's Court Annual Report On Intellectual Property Cases (2015) (China), Xiaohan Lou, Mingyuan Song, Chao Yu

Washington International Law Journal

The Supreme People’s Court of China began publishing its Annual Report on Intellectual Property Cases in 2008. The annual reports, published in April each year, summarize and review new intellectual property cases. This translation includes all 32 cases and 38 legal issues of the 2015 Annual Report. It addresses various areas of law related to intellectual property, including patent law, trademark law, copyright law, unfair competition law, antitrust law, new plant product patent law, and laws related to procedural and evidentiary issues in intellectual property cases. While China is not a common law country, these cases serve as guidelines for …

Regulating Secrecy, W. Nicholson Price Ii

Washington Law Review

Inventors face a stark choice between two intellectual property systems of protecting innovative ideas: patents and trade secrecy. But accounts of this choice underexplore the role of the regulators that dominate some areas of innovation. Regulation interacts with intellectual property exclusivity in socially problematic ways by encouraging secrecy at the expense of innovation, efficiency, and competition. This Article theorizes how regulation empowers intellectual property generally, explains why this strengthening is problematic for trade secrecy but not for patents, and offers the solution of regulator-enforced disclosure. When a regulator defines a product or a process, it becomes much harder to successfully …

The Influence Of Special Interest Groups On Copyright Law And Policy—A Comparison Of The Legislative Processes In The United States And Switzerland, Michael P. Kunz

Washington Journal of Law, Technology & Arts

In April 2016, the Office of the United States Trade Representative placed Switzerland on the Watch List of its 2016 Special 301 Report, which contains an annual review of the state of intellectual property rights protection and enforcement in U.S. trading partners around the world. According to the Report, the decision to put Switzerland on the Watch List was premised on U.S. concerns regarding specific difficulties in Switzerland’s system of online copyright protection and enforcement, particularly the “Logistep” ruling issued by the Federal Supreme Court of Switzerland in 2010. Although the Swiss authorities have acknowledged the difficulties mentioned in the …

General Public License Version 2: The Risk Of Direct Patent Infringement, Chike Eze

Washington Journal of Law, Technology & Arts

The GNU General Public License Version 2 (“GPLv2”) is a popular license for open source software. Despite its importance, only a few GPLv2 cases have been litigated in the courts. In these litigated cases, the plaintiffs claimed breach of contract or copyright infringement against defendants. However, in XimpleWare v. Ameriprise, the plaintiff explored a novel patent-related avenue for open source software authors to attack vendors and customers of open source software. Specifically, XimpleWare alleged direct patent infringement against Versaware, a software vendor, and Ameriprise, Versaware’s customer, for distributing XimpleWare’s GPLv2-licensed software in violation of GPLv2’s copyleft provisions in section …

Sugar High, Andrew H. Fuller

Washington Journal of Law, Technology & Arts

Edible marijuana products in commercial marijuana markets, or “edibles,” pose a new challenge to our existing regulatory infrastructure. Marijuana has acquired increasing social and legal acceptance as a form of treatment for a variety of serious illnesses; as such, some states have been challenged to balance the availability and affordability of these treatments with the risk they pose in terms of consumer confusion. Edibles that take the shape of traditional retail candies offer the greatest risk of consumer confusion, especially to children. Consequently, this Article proposes that courts—or, alternately, legislators—should interpret and apply the Lanham Act in a way that …

Supreme People's Court Annual Report On Intellectual Property Cases (2015) (China), Xiaohan Lou, Mingyuan Song, Chao Yu

Washington International Law Journal

The Supreme People’s Court of China began publishing its Annual Report on Intellectual Property Cases in 2008. The annual reports, published in April each year, summarize and review new intellectual property cases. This translation includes all 32 cases and 38 legal issues of the 2015 Annual Report. It addresses various areas of law related to intellectual property, including patent law, trademark law, copyright law, unfair competition law, antitrust law, new plant product patent law, and laws related to procedural and evidentiary issues in intellectual property cases. While China is not a common law country, these cases serve as guidelines for …

Branding Taxation, Xuan-Thao Nguyen, Jeffrey A. Maine

Articles

Branding is important not only to businesses,but also to the economy. The intellectual property laws and tax laws should thus further the legitimate goals of encouraging and protecting brand investments while maintaining a sound tax base. Intellectual property protections for branding depend on advertisement and enforcement, both of which demand significant amounts of private investment by firms. Although one would expect similar tax treatments of both categories of investment, the categories are actually treated as vastly different for federal income tax purposes. Additionally, tax distinctions also exist within each category. The result is that some branding investments are expensed and …

Copyright's Illogical Exclusion Of Conceptual Art That Changes Over Time, Zahr K. Said

Articles

This Essay argues that copyright illogically excludes conceptual art from protection on the basis of fixation, given that well-settled case law has interpreted the fixation requirement to reach works that contain certain kinds of change so long as they are sufficiently repetitive to be deemed permanent. While conceptual art may perhaps be better left outside the scope of copyright protection on the basis of its failure to meet copyright’s other requirements, this Essay concludes that fixation should not be the basis on which to exclude conceptual art from protection.

There are of course both normative and descriptive questions around the …

Patented Electric Guitar Pickups And The Creation Of Modern Music Genres, Sean M. O'Connor

Articles

This Essay provides an overview of how patents played a core role in developing world-changing musical genres. This may be surprising, as normally copyright law is associated with incentivizing advances in the creative arts. But as this Conference’s theme [The IP Platform: Supporting Invention and Inspiration] and presentations emphasize, the whole range of intellectual property (“IP”), especially when viewed as a platform, supports innovation across the spectrum of human ingenuity and creativity.

This Essay is also intended to be read in conjunction with a viewing of the live-music demonstration of how pickups transformed popular music, delivered at the Conference and …

Much Ado About Transformativeness: The Seventh Circuit And Market-Centered Fair Use, Aaron B. Wicker

Washington Journal of Law, Technology & Arts

In Kienitz v. Sconnie Nation LLC, the U.S. Court of Appeals for the Seventh Circuit ultimately rejected the concept of transformative use having a central role within the doctrine of fair use. In doing so, the Seventh Circuit broke with judicial precedent, namely the Supreme Court’s holding in Campbell v. Acuff-Rose Music, Inc., where the Court unanimously held that the inquiry for the first factor of fair use is whether, and to what extent, the work is transformative. The Seventh Circuit’s 2014 decision raises questions about the scope of the holding in Campbell and about whether this holding …

End Of The Parallel Between Patent Law's § 284 Willfullness And § 285 Exceptional Case Analysis, Don Zhe Nan Wang

Washington Journal of Law, Technology & Arts

Patent law’s “willful infringement” analysis under 35 U.S.C. § 284 and the “exceptional case” analysis under 35 U.S.C. § 285 are largely considered parallel, and essentially identical. In 2014, the Supreme Court of the United States drastically changed the standards for the § 285 exceptional case analysis in its Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc. decisions. This prompted two federal circuit judges to call for similar changes to the § 284 willful infringement analysis. On October 19, 2015, the Supreme Court granted certiorari to review whether such a …

Judicial Wisdom Or Patent Envy? The Eleventh, Seventh And Federal Circuits’ Patent Jurisdictional Battle, Xuan-Thao Nguyen

Articles

This article observes a startling new appellate jurisdictional battle waged by regional circuit courts to chip away the Federal Circuit's exclusive jurisdiction in patent cases. The Eleventh Circuit took an unprecedented step by engaging in patent claim construction and infringement under literal infringement analysis and the doctrine of equivalents analysis. In a case of first impression, the Eleventh Circuit asserted that it legitimately has appellate jurisdiction to decide cases involving substantive patent law. Instead of grabbing jurisdiction, the Seventh Circuit, through its Chief Judge, grabbed public attention by advocating for the abolishment of the Federal Circuit's exclusive jurisdiction over patent …