Intellectual Property Law Commons^™

Copyright Eligibility For Ai Works Under United States Law, Roger V. Skalbeck

Law Faculty Publications

This article examines copyright eligibility for works that incorporate generative AI elements under United States law, explaining that such works may be protected only to the extent they contain human-authored expression.  This expression can appear as creative selection, arrangement, editing, or other expressive contributions, while unedited or autonomously generated AI output is not copyrightable. The article highlights how the U.S. Copyright Office’s registration and review system, through disclosure requirements, refusals, and public registration records, creates meaningful evidence about boundaries of copyright protection for AI-assisted works. The article contrasts this U.S. registration framework with other legal systems, including European jurisdictions such …

Two Cheers For Cox V. Sony, James Gibson

Law Faculty Publications

There’s a lot to dislike about the Supreme Court’s opinion in Cox Communications, Inc. v. Sony Music Entertainment. It mischaracterizes, oversimplifies, and ignores precedent. It fails to engage with important arguments. It mangles the meaning of “intent.” And it introduces uncertainty into the workings of secondary liability across other intellectual property regimes.

For these reasons, the decision doesn’t deserve three cheers. But it deserves two. Because in two important ways, the Supreme Court has succeeded. First, the opinion fixes some misguided appellate court holdings by articulating a relatively workable standard for future copyright cases involving secondary liability. Second, despite …

Patents Used In Patent Office Rejections As Indicators Of Value, Christopher A. Cotropia, David L. Schwartz

Law Faculty Publications

This paper introduces a novel approach to measure a patent's economic value by examining whether the patent's disclosure leads to rejection of another pending US patent application. This approach considers the use of the patent by the US Patent and Trademark Office (USPTO) in office action rejections on the grounds of novelty or obviousness, as well as its citation as an X or Y reference in a European Patent Office (EPO) search report, which provides analogous information. Unlike conventional citation metrics widely employed by economists, the novel metric is arguably more closely tied to private value, as it is centered …

Ip, At, And Aaas: What Intellectual Property Can Teach Antitrust About The War On Amazon Basics, Kristen Osenga

Law Faculty Publications

Amazon is magical. Search the online marketplace for pretty much anything you can imagine—not to mention all the things you never imagined; you will likely find what you were searching for and be able to have it delivered in two days or less. The magic is not just in Amazon’s vast array of innovative consumer products but also in its providing access to goods that are unavailable locally. An extreme example of Amazon’s ability to supply goods that were not locally available may be found in the pandemic lockdowns of 2020, when neighborhood stores were out of toilet paper and …

The Injunction Function: Is Ip Law Promoting Markets For Innovators And Creators?, Kristen Osenga

Law Faculty Publications

32 Federal Circuit Bar Journal 4 (2024) The Federalist Society hosted this panel on November 11, 2023, as part of their 2023 National Lawyers Convention in Washington, D.C. This panel focuses on the role injunctions play in the facilitation or constraining commercialization of patent technologies and copyright, the current state of the law, and its meaning for next-generation innovations like creative uses of artificial intelligence.

Hit The Road, Jack: The Auto Industry As The Next Vehicle For Predatory Infringement, Kristen Osenga

Law Faculty Publications

While patents, patent litigation, and patent pools have been part of the automotive industry since the late-1800s, the prevalence of technology covered by standards and accompanying standard essential patents (SEPs) is much more recent. Today’s smart cars and the widespread incorporation of telecommunication and Internet of Things standards in vehicles raise concerns about how well the automotive industry will be able to adapt to this new SEP-laden future. This article predicts that predatory infringement of SEPs for two related reasons. First, although some industries, such as telecommunications, have long dealt with SEPs, the incorporation of standardized technology is more recent …

Nonobviousness And Unmotivated, Yet Minor, Inventions, Christopher A. Cotropia

Law Faculty Publications

This brief essay on nonobviousness originates from a series of conversations, emails, and preliminary drafts between Dmitry Karshtedt and myself that, sadly, never got a chance to fully evolve. We were exploring what the law says, and perhaps should say, about inventions that are technologically small advances, yet unmotivated by prior art. As Dmitry so aptly framed it, “The question we’re dealing with is, what if everyone thought that something was really hard or unworkable, but turned out to be a straightforward, minor improvement? Obvious or no?” This essay puts to paper our exploration of this question. The law’s emphasis …

Patents As Signals Of Quality In Crowdfunding, Christopher A. Cotropia

Law Faculty Publications

Patents and crowdfunding both attempt to foster early stage innova-tions. In theory, patents signal quality and value to attract investment and buyers and ultimately facilitate commercialization. Crowdfunding allows multiple individuals to make small contributions to finance start-up ven-tures. This Article reports on two related studies investigating the interac-tion between these two innovation tools by determining the impact of a crowdfunding campaign’s patent status on the campaign’s success and de-livery. The first study examines 9,184 Kickstarter campaigns in patent-eli-gible categories to determine whether patented or patent-pending labeled projects are more likely to reach their funding goal and in turn achieve actual, …

Striking The Right Balance: Following The Doj's Lead For Innovation In Standardized Technology, Kristen Osenga

Law Faculty Publications

Today’s technology standards are the result of an extraordinary amount of innovation, collaboration and competition. These concepts are interrelated, and each is enhanced or enabled by intellectual property. Where these three concepts come together in standards development, it is unsurprising that antitrust concerns are also present. Specifically, the interests of contributors, participants, and implementers must be fairly balanced to ensure that the appropriate types and levels of innovation, collaboration, and competition can occur—and that the public will benefit. It is important that antitrust enforcement involving standards development organizations and owners of standards essential patents recognize the careful balance of these …

Patents As Signal Of Quality In Crowdfunding, Christopher A. Cotropia

Law Faculty Publications

Patents and crowdfunding both attempt to foster early stage innovations. In theory, patents signal quality and value to attract investment and buyers and ultimately facilitate commercialization. Crowdfunding allows multiple individuals to make small contributions to finance start-up ventures. This Article reports on two related studies investigating the interaction between these two innovation tools by determining the impact of a crowdfunding campaign’s patent status on the campaign’s success and delivery. The first study examines 9,184 Kickstarter campaigns in patent-eligible categories to determine whether patented or patent-pending labeled projects are more likely to reach their funding goal and in turn achieve actual, …

The Hidden Value Of Abandoned Applications To The Patent System, Christopher A. Cotropia, David L. Schwartz

Law Faculty Publications

Some inventors abandon their patent applications without ever receiving a patent. Although patent scholars view such abandoned applications as essentially worthless, we question that conventional wisdom. In conducting an empirical analysis of a recently released patent application dataset (in light of a 1999 change requiring publication of most abandoned applications), we find that the United States Patent and Trademark Office (USPTO) often uses abandoned applications as prior art when examining future patent applications. Abandoned applications thus generate an administrative disclosure that prevents the issuance of broader patent rights to later applicants. By narrowing the scope of new patents, abandoned applications …

Policy Advocacy And Organizational Change At The Association Of University Technology Managers (Autm), Jacob H. Rooksby

Law Faculty Publications

Since its founding, the Association of University Technology Managers, Inc. (now preferentially called “AUTM” after a February 2018 rebranding) has played a critical role in national policy discussions relating to technology transfer, intellectual property (“IP”), federal research support, entrepreneurship, and innovation. The nonprofit association is comprised of individuals responsible for the management of technology portfolios and an increasing variety of related support programs. AUTM’s mission is “to support and advance academic technology transfer globally” by:

(1) providing members with knowledge, tools, and training for professional development,

(2) helping stakeholders understand the value and impact of technology transfer,

(3) developing partnerships …

The Hidden Value Of Abandoned Applications To The Patent System, Christopher A. Cotropia, David L. Schwartz

Law Faculty Publications

Some inventors abandon their patent applications without ever receiving a patent. Although patent scholars view such abandoned patent applications as essentially worthless, we question that conventional wisdom. Conducting an empirical analysis of a recently released patent application dataset in light of a 1999 change that requires publication of most abandoned applications, we find that the United States Patent and Trademark Office (USPTO) often uses abandoned applications as “prior art” when examining future patent applications. Abandoned applications thus generate an “administrative disclosure” that prevents the issuance of broader patent rights to later applicants. By narrowing the scope of new patents, abandoned …

Patent-Eligible Subject Matter... Still Wielding The Wrong Weapon - 12 Years Later, Kristen Osenga

Law Faculty Publications

I am delighted to have participated in the Second Annual Intellectual Property Redux Conference and to publish this essay. I rarely look back at my older articles, but in Fall 2018 I was asked to give a keynote address at a conference held by the Biotechnology Innovation Organization (BIO), where the organizers asked me to speak about 35 U.S.C. § 101 and patent-eligible subject matter. In preparing my remarks, I had the opportunity to refer back to one of my earliest scholarly pieces—a 2007 article entitled Ants, Elephant Guns, and Statutory Subject Matter, published in the Arizona State Law Journal.1 …

Introduction To The Research Handbook On Intellectual Property And Technology Transfer, Jacob H. Rooksby

Law Faculty Publications

University researchers help improve lives by solving problems that impact health, happiness, and societal wellbeing. Universities harness the power of faculty innovations and disseminate them to the public, using intellectual property to create protections and provide rewards. This process of technology transfer has been vibrant in US universities since at least the Second World War and has grown in importance everywhere since then. The Bayh-Dole Act of 1980 helped spark formalized attention to technology transfer in the US and has inspired similar legislation in countries across the globe. ...

Beyond Formal University Technology Transfer: Innovative Pathways For Knowledge Exchange, Jacob H. Rooksby

Law Faculty Publications

University technology transfer is often associated with formal transmission of science-based inventions, for instance through the licensing of patented technology to a firm. Formal conceptions of technology transfer limit our ability to understand fully how scientific knowledge evolves into industrial and social application. In this introductory article, we discuss how knowledge is shared and accessed across boundaries, and argue for a broader conceptualization including the transfer, translation, and transformation of knowledge. This view underlies a necessary conceptual shift from formal technology transfer to a more encompassing conception of pathways for knowledge exchange. We discuss promising avenues for extending research on …

Institutional Design For Innovation: A Radical Proposal For Addressing § 101 Patent Eligible Subject Matter, Kristen Osenga

Law Faculty Publications

The doctrine of patent-eligible subject matter is a mess, and it is weakening patent rights in this country. Nearly everyone, from the bar to the bench and from academia to industry, has called for reform. Multiple proposals to amend 35 U.S.C. § 101 have been drafted, each aimed at trying to make the doctrine more workable. Although offered with the best intentions, the proposals to fix patent-eligible subject matter are doomed to fail because none of the proposals address which institution is best suited to determine patent eligibility.

This Article takes a different, and perhaps radical, tactic. Specifically, patent-eligible subject …

Patents, Disclosure, And Biopiracy, Aman Gebru

Law Faculty Publications

No abstract provided.

Rights Accretion Redux, James Gibson

Law Faculty Publications

When the Intellectual Property Redux conference was first announced two or so years ago, I remember having both a positive and negative reaction. The positive reaction was, "Wow, what a great idea for a conference." The negative reaction was, "Oh man, why didn't I think of it first?" But now that I have been included, all negative thoughts have washed away.

The article I am here to revisit is Risk Aversion and Rights Accretion in Intellectual Property Law, which was published in 2007. I'm going to give a brief recap of the thesis and then tum to a few …

Convergence And Conflation In Online Copyright, Christopher A. Cotropia, James Gibson

Law Faculty Publications

The Digital Millennium Copyright Act is showing its age. Enacted in 1998, the DMCA succeeded in its initial goal of bringing clarity to wildly inconsistent judicial standards for online copyright infringement. But as time has passed, the Act has been overtaken—not by developments in technology, but by developments in copyright’s case law. Those cases are no longer as divergent as they were in the last millennium. Instead, over time the judicial standards and the statutory standards have converged, to the point where the differences between them are few.

At first glance, this convergence seems unproblematic. After all, uniformity was the …

Copyrights In Higher Education: Motivating A Research Agenda, Jacob H. Rooksby

Law Faculty Publications

The Bayh–Dole Act of 1980 enabled American universities to engage in technology transfer. Thirty years of research has investigated the legislation’s effectiveness and derivative university practices, such as the establishment of technology transfer offices. Unfortunately, the technology transfer literature has focused primarily on patenting as the primary transfer vehicle for protecting intellectual property in universities, overlooking other forms of IP ownership, such as copyrights. Legal scholarship shows, however, that universities are increasingly using copyrights to protect their intellectual property and that the number of university-held copyrights exceeds patents. This paper examines the use of copyrights to protect and transfer university …

The Problem With Ptab's Power Over Section 101, Kristen Osenga

Law Faculty Publications

The doctrine of patent eligible subject matter under 35 U.S.C. § 101 is a “real mess.” Other apt terms to describe this doctrine, and the jurisprudence surrounding it, include “chaos” and “crisis.” Few question whether patent eligible subject matter is a problem; however, many do not realize how high the stakes are and how dire the consequences. The erosion of patent protection, in part due to the “chaos,” impacts the willingness of companies to invest in innovation. This is especially true in today’s most important technologies where innovations occur in the spaces most likely to be flagged as ineligible subject …

Ignorance Over Innovation: Why Misunderstanding Standard Setting Organizations Will Hinder Technological Progress, Kristen Osenga

Law Faculty Publications

On January 17, 2017, the Federal Trade Commission (FTC) sued Qualcomm Inc. in federal district court, alleging antitrust violations in the company's licensing of semiconductor chips used in cell phones and more. The suit alleges, in part, that Qualcomm refuses to license its patents that cover innovations incorporated in technology standards (standard-essential patents, or SEPs), in contradiction of the company's promise to license this intellectual property on fair, reasonable, and nondiscriminatory (FRAND) terms. According to the FTC, Qualcomm's behavior reduces competitors' ability to participate in the market, raises prices paid by consumers for products incorporating the standardized technology, and at …

What Happened To The Public’S Interest In Patent Law?, Kristen Jakobsen Osenga

Law Faculty Publications

Protecting intellectual property is the government’s most important tool to encourage innovation, as our country has understood since its founding. The Constitution provides for the grant of exclusive patent rights to “promote the progress of science and the useful arts.” Thomas Jefferson, who was initially skeptical of the value of patents, later remarked, “An Act of Congress authorising [sic] the issuing patents for new discoveries has given a spring to invention beyond my conception.” From the very first patent, issued in 1790, to the 10 millionth patent, issued in June 2018,4 the United States has seen remarkable amounts of invention …

Heterogeneity Among Patent Plaintiffs: An Empirical Analysis Of Patent Case Progression, Settlement, And Adjudication, Christopher A. Cotropia

Law Faculty Publications

This article empirically studies current claims that patent trolls, also known as patent assertion entities (PAEs) or non-practicing entities (NPEs), behave badly in litigation by bringing frivolous patent infringement suits and seeking nuisance fee settlements. The study explores these claims by examining the relationship between the type of patenteeplaintiffs and litigation outcomes (e.g., settlement, grant of summary judgment, trial, and procedural dispositions), while taking into account, among other factors, the technology of the patents being asserted and the identity of the lawyers and judges. The study finds significant heterogeneity among different patent holder entity types. Individual inventors, failed operating companies, …

Higher Education And The Dmca, James Gibson, Christopher A. Cotropia

Law Faculty Publications

The nearly twenty-year history of the Digital Millennium Copyright Act’s safe harbor provisions has been marked by criticism from content owners, online service providers, and end users. Content owners complain about the cost of monitoring online content and sending takedown notices. Online service providers complain about the cost of receiving and processing the notices. And end users complain about their legitimate use of copyrighted works being subject to DMCA takedown. Colleges and universities have been at the forefront of this controversy; as providers of online services to their students, they have been a focus of both Congress and copyright owners. …

Finding And Using Images, While Respecting Copyright, Roger V. Skalbeck

Law Faculty Publications

Text plays a central role in nearly every lawyer’s life. From cases to codes to contracts, words matter tremendously. At times, words alone are insufficient. A well-selected image can evoke emotion and attract attention. While there are literally millions of images online available for use without cost, a well sourced and properly referenced image should recognize and respect the creator’s intellectual property rights. Here are tips for finding and using images, while respecting copyright.

Physicalism And Patent Theory, Christopher A. Cotropia

Law Faculty Publications

United States patent law’s view on the need for a physical embodiment of the invention, and the continued production and use of an embodiment, has varied over the last two centuries. In the early days, the requirement for “physicalism” was high, with the inventor being required to actually reduce the invention to practice prior to patenting, and enforceability was tied to “working” the claimed invention. By the early 1900s, these requirements of physicalism disappeared. This changing view on physicalism speaks volumes as to which major patent theory the law emphasizes, with physicalism supporting the incentive to invent theory and the …

The Ftc’S Pae Study: Doing More Harm Than Good, Kristen Osenga

Law Faculty Publications

Recently, the Federal Trade Commission (FTC) released a report of its study of patent assertion entities (PAEs). The report was long anticipated and could have gone a long way to shining some light on patent licensing firms – who they are, how they operate, and so on. After all, patent licensing firms are misunderstood, partially because so much of their activity is not visible to the public. In theory, because the FTC has the power to obtain this invisible information, the study could have provided the data and insight needed to better understand these firms and improve the policy dialogue …

Why The Ftc Study On Paes Is Destined To Produce Incomplete And Inaccurate Results, Kristen Osenga

Law Faculty Publications

In the near future, the Federal Trade Commission is going to release the results of its study on patent assertion entities (PAEs). While it is very clear that we need additional information to understand the many complex business models that exist in the patent licensing world, the FTC’s study is unlikely to produce that information because of a few very critical flaws. What follows is an executive summary of my article, Sticks and Stones: How the FTC’s Name-Calling Misses the Complexity of Licensing-Based Business Models, published in the George Mason Law Review.