Intellectual Property Law Commons^™

Zurko, Gartside, And Lee: How Might They Affect Patent Prosecution?, Thomas G. Field Jr

Law Faculty Scholarship

Interactions between the PTO and the courts are more complex than for most agencies. PTO decisions may be challenged not only directly but also collaterally. In the latter context, the Supreme Court has sometimes been critical of the lax standards applied when issuing patents.

While being upheld in collateral review is the ultimate issue of concern to patentees, patents must first be obtained. Thus, this paper focuses on direct challenges to PTO actions--and more specifically, on the review arising under 35 U.S.C. §§ 141-44 as addressed in Zurko, Gartside, and Lee.

Since the Supreme Court reversed the …

The Hegemony Of The Copyright Treatise, Ann Bartow

Law Faculty Scholarship

This Article asserts that major conceptions about the appropriate structure, texture, and span of copyright protections and privileges have been fashioned by copyright treatises, particularly the various editions of Nimmer on Copyright. Copyright treatises function in concert with the machinations of Congress, the courts, and custom, but their role is not often scrutinized.

Because copyright treatises typically do a far better job than Congress or the courts of explicating copyright law in straightforward and accessible language, such treatises can not only communicate the copyright law, but also influence its development and direction. Policy makers no doubt understand that content owners …

Agricultural Biotechnology In China: An Unreachable Goal?, Stanley P. Kowalski

Law Faculty Scholarship

Recently there has been much discussion about the People’s Republic of China’s (PR) investment in and commitment to agricultural biotechnology (agri-biotech). Rapid economic expansion, population growth and technological development are changing the PRC; accompanying these changes is increased demand for high-quality food and fibre. Agri-biotech is optimistically viewed as an important way to meet these demands. Whereas Chinese technological capacity in agri-biotech has advanced significantly over the past decade, it may be unable to meet these challenges. Even when this capacity is combined with good intentions, enlightened policy and large capital outlays, accelerated development of agri-biotech may nevertheless be precluded. …

Brief Of Law Professors As Amicus Curiae In Support Of Respondent, Thomas G. Field Jr, William O. Hennessey, Craig S. Jepson, Karl F. Jorda

Law Faculty Scholarship

Inventors lacking assurance of a market, or even the right to practice patented inventions, face considerable risk. Those who qualify for patents, in return for disclosure, receive only the assistance of the courts in excluding others from economic exploitation of their inventions. Already subject to many legislative and judicial limitations, patents should not be further subject to the functional equivalent of private inverse condemnation without congressional action.

Converting Intellectual Assets Into Property, Thomas G. Field Jr

Law Faculty Scholarship

The mouse and graphic interface were first commercialized on Macintosh computers. Yet, Steve Jobs is said to have derived both from the Alto computer developed by Xerox's Palo Alto Research Center. While Jobs became a billionaire, "Xerox completely failed to get into the personal computer business, missing one of the biggest business opportunities in history."

Preferring to be more akin to Apple than to Xerox, firms are increasingly mindful that their most valuable assets are apt to be ideas and information instead of land, buildings and inventory. Not capable of being fenced in or locked up, intangible assets can be …

Golden Rice: A Case Study In Intellectual Property Management And International Capacity Building, Stanley P. Kowalski, R. David Kryder

Law Faculty Scholarship

In order for agricultural biotechnology (agri-biotech) to play a larger role in the development of sustainable agricultural systems, intellectual property (IP) rights management must be addressed. These issues are not limited to developing countries. With increased globalization, the management of agri-biotech IP rights affects both developing and industrialized countries. In industrialized countries, for example, IP rights risk management entails protection of inventions via strong patent portfolios. For developing countries, IP rights risk management includes the acquisition of rights requisite for the use of inventions essential to the basic welfare of the population. Strategies are needed to bridge these disparate IP …

Proposal For A Centralized And Integrated Registry For Security Interests In Intellectual Property, William J. Murphy

Law Faculty Scholarship

As the world economy enters the twenty-first century, job and wealth creation is increasingly based on innovation and creativity that, in turn, can give rise to important intellectual property rights. For many companies and individuals these intellectual property rights may represent their most valuable assets, or in some cases, their only valuable assets. As a result, intellectual property rights increasingly play a critical the role in financing.

Unlocking the job and wealth creating potential of intellectual property assets requires putting these assets into use, and that often requires a capital investment. Unfortunately, many entrepreneurs and innovators lack the capital necessary …

Direct Judicial Review Of Pto Decisions: Jurisdictional Proposals, Thomas G. Field Jr

Law Faculty Scholarship

Judicial review of U.S. Patent and Trademark Office ("PTO") decisions is complex-- perhaps more than that of any other agency. One source of complexity is that courts review its decisions both collaterally and directly.

One goal of this article is to map possible routes to judicial review and suggest strategies for avoiding jurisdictional uncertainties and delay. The core thesis of this article, however, is that parties should not need to cope with arcane review schemes. Direct PTO review can and ought to be simplified. This can be accomplished by adjusting the Federal Circuit's original and appellate jurisdiction.

Chevron Deference To The Uspto At The Federal Circuit, Thomas G. Field Jr.

Law Faculty Scholarship

Courts have long deferred to agency views of law, but they have also often refused. The Federal Circuit, too, defers on some occasions but not others. This paper examines the apparent inconsistency in its cases.

Avoiding Intellectual Property Problems, Thomas G. Field Jr.

Law Faculty Scholarship

Patents, copyrights, trademarks, as well as trade secrets and related rights can be used to exclude free riders. These rights are usually collectively called "intellectual property" or IP. Everyone should know how to cost-effectively protect their own rights.

On-Line Tutorial Project: Intellectual Property In E-Commerce, William J. Murphy

Law Faculty Scholarship

Copyrights, Trademarks and Patents make up most of the area of law known as Intellectual Property. Intellectual Property's importance in Electronic Commerce is difficult to overstate. The Internet has been defined as a global network of networks through which computers communicate by sending information in packets, and each network consists of computers connected by cables or wireless links. It is the Intellectual Property laws of Copyright, Trademark and Patents that are attempting to harmonize the effects that E-Commerce and the Internet have had on the individual's ability to access and use this information. It should be remembered that most countries …

Making The Most Of Commercial Global Domains, Thomas G. Field Jr

Law Faculty Scholarship

Despite echoing skepticism about the long-term prospects for commercial global domains based in part on how they are governed, this paper concludes that nominal addresses are essentially a new form of intellectual property, to be viewed and managed in ways sometimes fundamentally different from trademarks and other indicia of commercial goodwill. In support, the article first reviews the domain name system ("DNS") under which nominal addresses may be registered. The article then outlines central principles of unfair competition law underlying the resolution of disputes within the United States. Finally, the article reviews how nominal addresses pose several new kinds of …

Copyrights And Beyond In The Digital Age, Thomas G. Field Jr.

Law Faculty Scholarship

At one time, only works visible to the naked eye were copyrightable, but that has long since changed. Now, works capable of perception only by use of VCRs or computers, for example, enjoy the same protection as books, paintings and sculpture. In 1994, William S. Strong reported that he had "heard Chicken Littles say that the sky is falling in on copyright owners" in the digital age and predicted to the contrary. He was right; publishers' problems may have changed in degree but not in kind. For important, if not critical, internet needs to be met, providers must recoup costs.

The Intellectual And Technical Property Components Of Pro-Vitamin A Rice (Goldenricetm): A Preliminary Freedom-To-Operate Review, R. David Kryder, Stanley P. Kowalski, Anatole F. Krattiger

Law Faculty Scholarship

Rice is a staple food for millions of people, predominantly in Asia, but lacks essential nutritional components such as Vitamin A. This is very important for over 180 million children and women of child bearing age who suffer from Vitamin A deficiency in Asia alone. For this reason, an improvement was made under an effort led by Profs. Ingo Potrykus and Peter Beyer by inserting several genes into rice to produce an improved product called GoldenRice. Because GoldenRice has the potential to be easily integrated into the farming systems of the world's poorer regions, the advent of GoldenRice promises to …

Zurko Raises Issue Of Patentability Standards, Thomas G. Field Jr.

Law Faculty Scholarship

In re Zurko isolated one of the oldest U.S. agencies from mainstream administrative law because the Federal Circuit has chosen to review the U.S. Patent and Trademark Office more as it would a federal district court. The case is important, if only because the Supreme Court rarely treats the PTO as an agency. Also, regardless of whether the issue or the Federal Circuit itself is the primary target, the decision could have a major effect on the type of case most commonly encountered by that court.

Publishers' Rights And Wrongs In The Cyberage, Thomas G. Field Jr.

Law Faculty Scholarship

The author argues in favor of a continued role for traditional publishing in the context of the rise of the Internet.

Brief Amici Curiae Of Intellectual Property Professors In Support Of Petitoner, Thomas G. Field Jr., John F. Duffy, Craig Allen Nard

Law Faculty Scholarship

Congress enacted the Administrative Procedure Act (APA) in 1946 as a comprehensive statute to regulate the field of federal administrative law. In holding that the PTO Board of Patent Appeals and Interferences is not subject to the standards of judicial review set forth in the APA, the [Zurko] decision isolates patent law from the rest of administrative law and undermines the APA’s goal of achieving consistency and uniformity in federal administrative law.

Amicus Brief Of Thomas G. Field, Jr., Pro Se Supporting In Principle, On Rehearing The Commissioner Of Patents And Trademarks, Thomas G. Field Jr.

Law Faculty Scholarship

To those unfamiliar with the long, often bitter, struggle over equally compelling needs to provide, on the one hand, innovators with an adequate opportunity to recoup risk capital and to avoid, on the other, erecting unwarranted barriers to competition, a dispute over the proper scope of review for Patent and Trademark Office (PTO) patent appeals will seem both trivial and arcane. This case involves more than semantics -- its resolution turns on the allocation of power among three, and arguably four, branches of government. This Court, itself, has a stake.

Promulgating Requirements For Admission To Prosecute Patent Applications, Michelle J. Burke, Thomas G. Field Jr

Law Faculty Scholarship

Among federal agencies, the U. S. Patent and Trademark Office is unique in its ability to require attorneys to submit to special requirements, such as passing a six hour examination, before being permitted to practice before it in patent cases. Indeed, the Supreme Court has held that an individual so admitted to practice before the PTO need not comply with state requirements otherwise applicable to those practicing law.

The first part of this article discusses how this requirement came to be. It then discusses how the PTO determines whether an individual is fit to sit for the patent examination, focusing …

Access To And Authority To Cite Unpublished Decisions Of The Pto, Thomas G. Field Jr

Law Faculty Scholarship

This paper begins with the Solicitor [of the U.S. Patent and Trademark Office]'s explanation of the term "unpublished." It then reviews various kinds of published PTO decisions where the precedential effect of unpublished decisions has been addressed. There, we see that the PTO has generally not ignored unpublished precedent--at least, deliberately--and that the Solicitor agrees that this may not be done. Next, this paper examines the almost universal practice of federal appeals courts disallowing use of their unpublished decisions as precedent--and some of the reasons for widespread criticism of that practice. It also discusses some of the reasons that judges, …

Prospects For Adr In Patent Disputes: An Empirical Assessment Of Attorneys' Attitudes, Thomas G. Field Jr., Michael Rose

Law Faculty Scholarship

For the most part, parties with a legal dispute have either settled their differences or, when that wasn't possible, litigated them. However, alternative dispute resolution (ADR) is increasingly urged as a supplement or substitute in a wide range of areas. ADR usually involves at least one third party who is employed by neither the judicial system nor one of the parties to the dispute. The third party may be a mediator, who helps the parties reach settlement, or an arbitrator, who renders a decision. While arbitration has been widely used for many years, until very recently, mediation (or conciliation) was …

Comment: Perceptions Of Chief Patent Counsel At Large Corporations Of The Effects Of Patent Term, Products Liability And Government Regulations On Firm R&D, Thomas G. Field Jr.

Law Faculty Scholarship

Last summer, over 300 members of the Association of (chief) Corporate Patent Counsel were surveyed concerning their attitude toward and experience with arbitration and mediation (ADR). Seventy-five responded. Subsequently, tabulations of the survey data were sent to the same people with four additional questions, two of which had nothing to do with ADR. Forty-one responded. This comment reports responses to the two questions unrelated to ADR.

Pharmaceuticals And Intellectual Property: Meeting Needs Throughout The World, Thomas G. Field Jr.

Law Faculty Scholarship

To the extent that most people think about patents and other forms of intellectual property at all, they tend to be aware that the owners of such property may have the legal capacity to limit market entry--without fully appreciating the extent to which products or processes that can be easily copied might otherwise be unavailable. Focusing on their function in recouping risk capital, this article will survey the types and functions of intellectual property. Then it will attend to the situation in developing countries, particularly the role of intellectual property in meeting their needs for medical products.

Law And Fact In Patent Litigation: Form Versus Function, Thomas G. Field Jr

Law Faculty Scholarship

Recently, the Supreme Court sent Dennison Mfg. v. Panduit Corp. back to the Court of Appeals for the Federal Circuit (CAFC). It remanded with explicit directions that the lower court consider the extent to which Rule 52(a) governs appellate review of determinations of obviousness.

It is by no means certain that obviousness determinations should be treated as questions of law. Nevertheless, there is ample evidence that courts seek to review findings of obviousness (or nonobviousness) more intensely than would be appropriate under the "clearly erroneous" or "substantial evidence" standards. If the courts are inclined to persist in more intense review …

Brief Survey Of And Proposal For Better Reconciliation Of The Options In Patent, Trademark, Copyright And Related Law, Thomas G. Field Jr

Law Faculty Scholarship

Taking up trademarks, patents, copyrights, and trade secrets (in that order), [this article] will attempt to summarize briefly the ways in which such rights arise, are perfected, and are enforced. It will also discuss a hypothetical in which all of these options will be discussed in a comparative way. Finally, it will suggest that basic improvements in the area could be realized by dispensing with the often confusing and arbitrary subject matter distinctions which characterize the various subparts of the present intellectual property system.

Patent Arbitration: Past, Present And Future, Thomas G. Field Jr

Law Faculty Scholarship

Most attorneys have heard of arbitration, but few have more than a vague idea of what it is or have any experience with it. Patent attorneys are no exception, and many are no doubt wondering about the implications of §294. It was enacted in August of 1982, and went into effect in February 1983: Why was it needed and passed, and what does it mean?

Post Hoc Evaluations Of Obviousness: Preliminary Report Of An Attempt To Identify, Empirically, The Characteristics Of A Superior Evaluator, Juanita V. Field, Thomas G. Field Jr.

Law Faculty Scholarship

Over a century and a quarter have passed since the Supreme Court in Hotchkiss v. Greenwood held that more than mere novelty is necessary to support a valid patent. Congress, after 100 years of experience with a concept which came to be called "invention," attempted to improve the situation by requiring that an invention not be "obvious" if it is to be patented. It seems safe to say that in the intervening time the doctrine of non-obviousness has not developed into a foolproof yardstick for measuring the quality of cerebral or other effort necessary to make an advance over the …

Intellectual And Industrial Property In A Nutshell, Thomas G. Field Jr.

Law Faculty Scholarship

First, intellectual and industrial property is property--extremely valuable property at that. However, this is not a subject that gets more than passing attention in many curricula, and none in most. Consequently, few lawyers, aside from the specialists, know much about it. Moreover, unlike most areas of legal specialization, such as tax, labor, and anti-trust law, the basic principles of which are known to most general practitioners, if a generalist knows anything about literary or industrial property, it is apt to be wrong. Furthermore, because clients tend to approach generalists first, substantial and incurable injury may result from a generalist's mistaken …

The Fourth Dimension In Labeling: Trademark Consequences Of An Improper Label - Part Ii, Thomas G. Field Jr.

Law Faculty Scholarship

Where does the trademark user stand today? What should he do? Perhaps he should review all his labeling in the very near future to try to catch any heretofore missed improprieties therein. If he should miss one or two, however, will his valuable trademarks be regarded as ab initio invalid? Will they be cancelled, pirated away, refused enforcement or what?

in an attempt to answer those questions, it seems worthwhile to synthesize the law that has been heretofore covered, and, perhaps, try to condense it into a few meaningful principles by which the trademark user may be guided.

The Fourth Dimension In Labeling: Trademark Consequences Of An Improper Label - Part I, Thomas G. Field Jr.

Law Faculty Scholarship

As indicated by the title, this is an inquiry into the trademark ramifications of labeling. Certain kinds of conduct may well result in cancellation of federal rights in trademark registration. This is equally true with respect to trademark application for registration. It is therefore useful to consider at the outset the impact that improper labeling may have on a party's right to register. Most unfortunately, if [a] label defect is not detected in the registration process, or if there is substantial delay between commencement of use of the mark and attempted registration, a party may find his rights seriously compromised. …