Intellectual Property Law Commons^™

Patent Ships Sail An Antitrust Sea, Joseph S. Miller

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This brief essay arises from my participation in an April 2006 conference at Seattle University Law School, entitled At the Intersection of Antitrust and Intellectual Property Law: Looking Both Ways to Avoid a Collision. This intersection metaphor is a common one for describing antitrust law's relationship with intellectual property law, among both courts and commentators. This essay explores a different metaphor: patent ships sail an antitrust sea, protecting those aboard from competition's harshest dangers - but only for a time. The nautical metaphor evokes three ideas that the crossroads metaphor does not. First, vigorous competition is the pervasive, baseline reality; …

Standard Setting, Patents, And Access Lock-In: Rand Licensing And The Theory Of The Firm, Joseph S. Miller

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Many leading voluntary standard-setting organizations (SSOs) have adopted intellectual property (IP) policies under which participants must promise to license any patents on technology that they contribute to a standard, and to do so on reasonable and nondiscriminatory terms (RAND). The standard setting literature includes a substantial focus on the widespread use of this RAND promise. A common refrain in these analyses of the RAND promise is that its meaning is dysfunctionally uncertain. We know more about the RAND promise, however, than the existing literature suggests. I show that we already know the RAND promise's core meaning, and why it remains …

The Problem Of Social Cost In A Genetically Modified Age, Paul J. Heald, James C. Smith

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In Part I of this Article, we apply the Coase Theorem and its most useful corollary to the problem of pollen drift. We conclude that the liability of pollen polluters should be governed by balancing rules against nuisance law, to be applied on a case-by-case basis, rather than by a blanket liability or immunity rule. We also conclude that truly bystanding non-GMO farmers should have a viable defense to patent infringement because liability would result in the application of a reverse Pigovian tax that cannot be justified under accepted economic theory. Only a contextual approach can account for the wide …

The Antitrust Legality Of Pharmaceutical Patent Litigation Settlements, James F. Ponsoldt, W. Hennen Ehrenclou

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Several federal courts of appeal have recently ruled on the issue of whether a pharmaceutical patent infringement settlement, pursuant to which a generic drug manufacturer agrees to forgo marketing a particular drug in return for monetary payments from a patent-holding “pioneer” drug manufacturer, is a violation of antitrust law. These payments are termed “reverse payments” because, contrary to normal settlements, the plaintiff makes a lump sum payment to the defendant. Reverse payments have sparked considerable academic comment and controversy. Even more recently, the Federal Trade Commission (“Commission”) and the Solicitor General have expressed views on the issue, in the context …

The Study Of Intellectual Property At The William S. Boyd School Of Law, Mary Lafrance

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This article discusses the intellectual property program at William S. Boyd School of Law.

Steam Shovels And Lipstick: Trademarks, Greed, And The Public Domain, Mary Lafrance

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Although the law of trademarks and unfair competition at one time concerned itself only with false designations of origin that were likely to confuse consumers about the origin of goods or services, with the emergence of the dilution doctrine during the twentieth century individual states--and ultimately Congress--began offering the owners of particularly strong marks the opportunity to prevent others from using these marks even in ways which were unlikely to lead to consumer confusion. In so doing, the law began to treat trademarks as property in themselves--the product of a trademark owner's investment in good will--rather than merely as signals …

What Do We Owe Each Other In The Global Economic Order?: Constructivist And Contractualist Accounts, John Linarelli

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No legal system deserving of continued support can exist without an adequate theory of justice. A world trade constitution cannot credibly exist without a clear notion of justice upon which to base a consensus. This paper examines two accounts of fairness found in moral philosophy, those of John Rawls and Tim Scanlon. The Rawlsian theory of justice is well-known to legal scholars. Scanlon's contractualist account may be less well-known. The aim of the paper is to start the discussion as to how fairness theories can be used to develop the tools for examining international economic policies and institutions. After elaborating …

Enhancing Patent Disclosure For Faithful Claim Construction, Joe Miller

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Claim construction jurisprudence is in disarray. The U.S. Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. And the muddled mix of issues the Federal Circuit framed for en banc review in the Phillips case suggests that the court is having trouble reaching consensus on what the central questions are, much less on how to answer them. Perhaps the path to adequately predictable claim construction is continued tinkering with the analytical constructs internal to …

American Corporate Copyright: A Brilliant, Uncoordinated Plan, Paul J. Heald

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At first glance, American copyright law and policy seem to be dictated entirely by a monolithic block of corporate rightsholders. Over the last twenty years, powerful interests including Disney, the American Society of Composers, Authors, and Publishers (ASCAP), Microsoft, and the American Motion Picture Association (AMPA), have successfully lobbied Congress for copyright term extensions, copyright restoration, software anticircumvention legislation, protection against audio bootlegging, and a series of bilateral and international agreements designed to increase protection for American copyright owners overseas. Even the failure to protect databases in America, widely touted as a victory for the public interest, has been driven …

What Do Flexible Road Signs, Children's Clothes And The Allied Campaign In Europe During Wwii Have In Common? The Public Domain And The Supreme Court's Intellectual Property Jurisprudence, David E. Shipley

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Part I of this article discusses the impact of the Sears, Compco and Bonito Boats, and the uncertainty over whether the principles of federal intellectual property announced in these decisions serve as limitations on the scope of protection that can be afforded under trademark legislation enacted by Congress under its Commerce Clause power. Part II presents the Supreme Court's reaffirmation of fundamental principles intellectual property policy in a series of cases decided in the last decade: Qualitex, Wal-Mart, TrafFix, Mosley and Dastar. Part III summarizes some of the common themes emerging from these decisions …

The Proven Key: Roles And Rules For Dictionaries In The Patent Office And The Courts, Joseph Scott Miller, James A. Hilsenteger

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The U.S. Court of Appeals for the Federal Circuit, in its continuing effort to develop a patent claim construction jurisprudence that yields predictable results, has turned to dictionaries, encyclopedias, and similar sources with increasing frequency. This paper explores, from both an empirical and a normative perspective, the Federal Circuit's effort to shift claim construction to a dictionary-based approach. In the empirical part, we present data showing that the Federal Circuit has, since its own in banc Markman decision in April 1995, used reference works such as dictionaries to construe claim terms with steadily increasing frequency. In addition, and contrary to …

When You Wish Upon Dastar: Creative Provenance And The Lanham Act, Mary Lafrance

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This Article examines the application of section 43(a) of the Lanham Act to claims of reverse passing off through the lens of the Supreme Court's unpersuasive effort in Dastar Corp. v. Twentieth Century Fox Film Corp. to exclude a single class of reverse passing off-claims - those involving “expressive” works as opposed to physical commodities - from the scope of section 43(a). The Article critiques the Court's analysis of section 43(a) in light of case law and the pertinent legislative history, including, the Trademark Law Revision Act of 1988, the Berne Convention Implementation Act of 1988, and the Visual Artists …

A Comparative Study Of United States And Japanese Laws On Collaborative Inventions, And The Impact Of Those Laws On Technology Transfers, Mary Lafrance

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This research examines United States and Japanese laws regarding patent rights in collaborative inventions, and inquires whether these laws may impede technology transfers by creating uncertainty regarding the ownership, validity, or enforceability of the resulting patents, or by imposing undue obstacles to the licensing or assignment of such patents.  Where the laws of the two countries differ, this paper compares the merits of each approach and also assesses whether the differing approaches could be troublesome for cross-border transactions.

One of the most significant differences between United States and Japanese law regarding joint inventions is in the requirement of consent for …

Building A Better Bounty: Litigation-Stage Rewards For Defeating Patents, Joe Miller

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A patent challenger who defeats a patent wins a prize that it must share with the whole world, including all its competitors. This forced sharing undermines an alleged infringer's reason for fighting the patent case to the finish - especially if the patent owner offers an attractive settlement. Too many settlements, and too few definitive patent challenges, are the result. A litigation-stage bounty would correct this defect in patent litigation's basic framework, for it would provide cash prizes to successful patent challengers that they alone would enjoy. After briefly describing the free rider problem with inventions that patent law attempts …

Adrift On A Sea Of Uncertainty: Preserving Uniformity In Patent Law Post-Vornado Through Deference To The Federal Circuit, Larry D. Thompson

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Congress created the United States Court of Appeals for the Federal Circuit in 1982, and granted that court exclusive appellate jurisdiction over civil actions arising under patent law. Congress's primary goals in creating the Federal Circuit were to produce a more uniform patent jurisprudence and to reduce forum shopping based on favorable patent law. But in the 2002 decision of Holmes Group, Inc. v. Vornado Air Circulation Systems, the Supreme Court held that patent counterclaims alone could not create Federal Circuit jurisdiction. This decision not only overruled the Federal Circuit's longstanding jurisdictional rule, but also opened the door for Regional …

Something Borrowed, Something New: The Changing Role Of Novelty In Idea Protection Law, Mary Lafrance

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Ideas that do not qualify for legal protection, it is well settled, are free to the world once they have been disclosed. Yet states vary considerably in the scope of, and prerequisites for, legal protection granted to ideas. Variations in state approaches to idea protection are well documented. The states most often highlighted for their contrasting approaches are New York and California. Idea protection doctrine in these two jurisdictions differs primarily in the role played by the concept of “novelty.” There is no one authoritative definition of novelty in this context; indeed, courts typically use the term without defining it. …

Innovations Palpitations: The Confusing Status Of Geographically Misdescriptive Trademarks, Mary Lafrance

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The United States' two major international trade agreements of the 1990s—the General Agreement on Tariffs and Trade (GATT) and the North American Free Trade Agreement (NAFTA)—included intellectual property provisions that led Congress to amend a number of federal intellectual property statutes, including, inter alia, the Lanham Act provisions dealing with federal registration of trademarks. Specifically, pursuant to Article 1712 of NAFTA, Congress revised the rules that determine whether, and under what circumstances, federal registration is permitted for trademarks that contain geographical indications of origin. In the decade since these enactments, it appeared that the courts had reached a reasonable interpretation …

Treaty Governance, Intellectual Property And Biodiversity, John Linarelli

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When resources become valuable, various social and institutional pressures come to bear to enclose them in a property rights regime. Given the substantial progress of biotechnology and the life sciences, genetic resources found in biological diversity are experiencing such pressures. The question of how much commodification or commercialization of genetic resources is appropriate is of global concern; it affects the distribution of wealth in and among societies and countries. This article explores the emerging treaty law on intellectual property and biodiversity. It inquires What is biodiversity? and Why is biodiversity preservation important? It then focuses on the United Nations Framework …

I Am Glad I Got To Know Him, David Shipley

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This article is part of a number of articles in tribute to L. Ray Patterson, which appear in 11 J. Intel Prop i (2003).

Random Walks, Non-Cooperation Games, And The Complex Mathematics Of Patent Pricing, F. Russell Denton, Paul J. Heald

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Current patent valuation methods have been described charitably as “inappropriate,” “crude,” “inherently unreliable,” and a “guesstimate.” This article provides a more rational and systematic tool than any we have found in the existing literature or relevant case law. We believe our approach to patent valuation will be useful in improving investment decisions, in facilitating licensing negotiations, and in reducing error costs in litigation. An improved valuation metric also promises to make patents easier to take as collateral and to reduce the amount of “Blue Sky” in mergers and acquisitions involving high tech corporations. To the extent that valuation problems have …

Misreading A Canonical Work: An Analysis Of Mansfield's 1994 Study, Paul J. Heald

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It would be hard to overestimate the influence of Edwin Mansfield's 1994 empirical study for the International Finance Corporation (an arm of the World Bank) of American business executives' attitudes toward low levels of intellectual property protection in developing nations. His paper is ubiquitously cited for the proposition that if developing countries raise their level of intellectual property protection (especially patents), they will attract foreign investment and technology transfer. In the spirit of the honoree of this symposium, I take a skeptical new look at a canonical work and conclude that the developing world should be very suspicious of the …

What's Wrong With Eldred? An Essay On Copyright Jurisprudence, L. Ray Patterson

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With few exceptions, the U.S. Supreme Court has rendered wise copyright decisions consistent with the Copyright Clause. Unfortunately, Eldred v. Ashcroft adds to the exceptions. The difference is that the former are positive law, and the latter natural law, decisions.

The Bitter Has Some Sweet: Potential Antitrust Enforcement Benefit From Patent Law's Procedural Rules, Joseph S. Miller

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No abstract provided.

The Dmca: A Modern Version Of The Licensing Act Of 1662, L. Ray Patterson

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The thesis of this Article is that the Digital Millennium Copyright Act of 1998 (DMCA) in the United States is a modern version of the Licensing Act of 1662 in England. The English censorship statute is sufficiently obscure to merit an explanation of why the similarity and why it makes a difference. The reasons can be simply stated. The statutes are similar because they represent the same goals: the control of access to ideas. The similarities make a difference because a legal construct to control public access to ideas undermines -- and will eventually destroy -- the right of free …

Means/Ends Analysis In Copyright Law: Eldred V. Ashcroft In One Act, Dan T. Coenen, Paul J. Heald

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The authors examine Eldred v. Ashcroft in a play setting where one of the characters plays a constitutional law professor and the other character plays an intellectual property professor.

Means/Ends Analysis In Copyright Law: Eldred V. Ashcroft In One Act, Dan T. Coenen, Paul J. Heald

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Scene: The quiet hallway of a law school. A troubled young professor of Intellectual Property law stands in front of a senior colleague's office and studies a pencil sketch of Bushrod Washington taped to the door. After a moment's hesitation, he knocks and enters.

New Laws, New Technology: Copyright Law Struggles With Change, Mary Lafrance

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This article examines the development of copyright law in 2000 and 2001.

Recent Developments In Copyright Law: Technology And International Trade Play Starring Roles, Mary Lafrance

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The once staid field of copyright law has undergone a dramatic revolution in recent years, as new technologies and international trade pressures have spurred legislative change, while challenging the federal courts to find answers to those questions that Congress has not resolved or, in some cases, to questions that recent acts of Congress have created. This article explores recent developments in copyright law in 2002.

Nevada’S Employee Inventions Statute: Novel, Nonobvious, And Patently Wrong, Mary Lafrance

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In its Seventy-First Session, the Nevada Legislature enacted a new statute, S. B. 558, granting employers complete ownership of any work-related inventions created by their employees, regardless of whether the employer contributed any resources whatsoever to the inventive process. This stunning reversal of longstanding common law was little noticed by the public, and was debated only superficially in the state legislature before receiving its overwhelming vote of approval.

This Article examines Nevada's new employee invention statute from the perspectives of common law and public policy. It compares Nevada's new statute with the traditional common law rules governing employee inventions, as …

Congress Trips Over International Law: Wto Finds Unfairness In Music Licensing Act, Mary Lafrance

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Intellectual property law reform in the United States frequently involves balancing the interest rights of holders against the interests of users. As international agreements play an increasingly important role in the development of domestic intellectual property law, striking this balance has become a more complicated process.

Whereas, a few decades ago, resolving the competing needs of owners and users often could be accomplished purely as a matter of domestic policy – whether the outcome was based on high-minded principle, interest group politics, or simple pragmatism – today the proposed resolution to such a conflict more often than not must be …