Intellectual Property Law Commons^™

When Enough Is Not Enough: Can Post Filing Experimental Data Bridge The Gap In Patent Disclosure Of Non-Enabling Specifications In The Unpredictable Arts?, 18 J. Marshall Rev. Intell. Prop. L. 496 (2019), Fei Sha

UIC Review of Intellectual Property Law

On issues of 35 U.S.C. §112, the Federal Circuit has been inconsistent in determining the extent to which patent applicants need to disclose examples of their claimed inventions in patent specifications to fully enable their patent claims. Confusion as to how many or what types of examples amount to sufficient disclosure is augmented for inventions in the unpredictable arts, such as chemistry, biotechnology, and pharmaceuticals. Current practice skewing towards disclosure of examples in greater numbers is a misguided effort to satisfy enablement, as shown by patents at issue in two recent Federal Circuit cases. A qualitative approach to disclosure is …

The Forking Phenomenon And The Future Of Cryptocurrency In The Law, 19 Uic Rev. Intell. Prop. L. 1 (2019), Chelsea Button

UIC Review of Intellectual Property Law

In the evolving and ever-changing world of cryptocurrency, new and exciting phenomena arise, including hard forks. Hard forks occur when two groups supporting a cryptocurrency disagree on how the code should evolve. If the changes are incompatible, the code diverges into two chains, essentially doubling the amount of each holder’s coin. Forking a coin is theoretically easy. However, maintaining a fork requires great effort and support by members of the community. This Article discusses the November 15, 2018 Bitcoin Cash hard fork and subsequent lawsuit, analyzing anti-trust, negligence, and conversion claims. Forcing de facto fiduciary duties on developers and miners …

Louboutin Heels And The Competition Goals Of Eu Trade Mark Law, 19 Uic Rev. Intell. Prop. L. 38 (2019), Cesar Ramirez-Montes

UIC Review of Intellectual Property Law

This article critically examines the judicial applications of the EU functionality doctrine and argues that recent CJEU decisions are at odds with the EU legislator’s declared intention to give functionality a much greater role in promoting product market competition. As a statutory ground for refusing registration even in the presence of consumer association and established goodwill, EU functionality serves to avoid undue competitive advantages by refusing protection in support of freedom to compete. EU functionality represents a significant obstacle to registration for purely natural, technical and value adding signs representing the shape of the goods. As of 2015, the wording …

Patent Infringement Under 35 U.S.C. § 271(G) For Goods Made In The United States, 19 Uic Rev. Intell. Prop. L. 64 (2019), Peter Hecker

UIC Review of Intellectual Property Law

Section 271(g) filled a loophole that allowed companies to escape patent infringement by producing goods overseas and then importing them. In filling this loophole, Congress may have unintentionally broadened patent liability for the production and use of goods in the United States. This paper discusses important ramifications of this broadened language and encourages the Federal Circuit or Congress to clarify the extent of patent infringement under Section 271(g).

The New Approaches To Digital Anti-Piracy In The Entertainment Industry, 19 Uic Rev. Intell. Prop. L. 75 (2019), Igor Slabykh

UIC Review of Intellectual Property Law

This article is about digital anti-piracy. The entertainment industry has been combating piracy over the internet for the last 40 years. This article gives an overview of the digital anti-piracy approaches, analyzes the reasons why people commit piracy, demonstrates the disappointing results of the current state of anti-piracy, and offers new approaches that may help to reduce digital piracy.

Failure Is Not Falling Down But Refusing To Get Up: Implication Of Huawei/Zte Framework (Cjeu 2015) In Europe, 17 J. Marshall Rev. Intell. Prop. L. 326 (2018), Ashish Bharadwaj, Dipinn Verma

UIC Review of Intellectual Property Law

The jurisprudence on standard-essential patents (SEPs) has evolved substantially in the last few years, particularly in the European jurisdictions, where EU courts have dealt with certain FRAND and antitrust issues in an unambiguous and novel manner. The 2015 landmark judgement in Huawei v. ZTE by the Court of Justice of the European Union brought clarity in understanding ‘unwilling licensee’ and laid down terms under which the holder of a FRAND-compliant SEP can seek injunctive relief that does not amount to an abuse of its dominant position. Four important judgements in Germany followed, where the regional courts have applied the CJEU …

Categories Of Anti-Obviousness Case Law: (1) Laundry Lists; (2) Redundant Advantages; And (3) Advantage Not Needed And Not Relevant, 17 J. Marshall Rev. Intell. Prop. L. 395 (2018), Tom Brody

UIC Review of Intellectual Property Law

Obviousness rejections are most commonly rebutted by arguments that the prior art fails to disclose all the claim elements or that the examiner had failed to assert a proper rationale for combining references. Additional rebuttal strategies include those based on Federal Circuit case law on: (1) Non-analogous art, (2) Rendering the prior art unsatisfactory for its intended purpose, (3) Proposed modification cannot change the principle of operation of a reference, (4) Redundant advantages, (5) Advantage provided by the secondary reference is not needed by and not relevant to the primary reference, (6) Disparate references, (7) Context differs between cited references, …

The Trademark Disclaimer Provision Of The Lanham Act: Is Uspto Flexibility Worth Litigant Ambiguity?, 17 J. Marshall Rev. Intell. Prop. L. 305 (2018), Scott Locke

UIC Review of Intellectual Property Law

Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office’s authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing …

Patent Pilot Program Perspectives: Patent Litigation In The Northern District Of Illinois, 17 J. Marshall Rev. Intell. Prop. L. 348 (2018)

UIC Review of Intellectual Property Law

A Patent Pilot Program, or PPP, is geared towards giving designated judges in various districts more experience with patent cases. The Volume 17 RIPL Executive Board interviewed several participating judges in the Northern District of Illinois’ PPP.

This note is comprised of interviews with Judge Thomas M. Durkin, Judge Matthew F. Kennelly, and Judge Rebecca R. Pallmeyer of the United States District Court, Northern District of Illinois; taken over the course of May and June of 2017 by the Volume 17 RIPL Board members Kaylee Willis and Benjamin Lockyer. Its contents compile a uniform effort by both the judges interviewed …

Deja Vu Or Copyright Infringement? Why Melania Trump Infringed On Michelle Obama's Copyrighted Speech Through Subconscious Copying, 17 J. Marshall Rev. Intell. Prop. L. 360 (2018), Danielle Mobley

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In 2016, Melania Trump recited a beautiful speech at the Republican National Convention that had portions which sounded exactly like a speech given by Michelle Obama at the Democratic National Convention in 2008. Mrs. Trump feigned ignorance of the 2008 DNC speech, and essentially the speech was superseded by another news story within a week. While some critics claim plagiarism, Mrs. Obama could have a potential copyright infringement claim against Mrs. Trump based on the context of the speech, the actual portions lifted from Mrs. Obama’s speech, and the doctrine of subconscious copying. This article first examines the elements Mrs. …

The Supreme Court: A Help Or A Hindrance To The Federal Circuit's Mission?, 17 J. Marshall Rev. Intell. Prop. L. 298 (2018), Donald Dunner

UIC Review of Intellectual Property Law

Before the establishment of the Federal Circuit, the system of patent enforcement was deeply flawed, with the circuit courts then responsible for reviewing district court patent decisions harboring widely varying attitudinal views in the interpretation of the patent law. Suggestions for solving the problem through a single specialized appellate patent court were consistently rejected due to general hostility to specialized courts. The formation of the Federal Circuit in 1982 initially appeared to solve the problem in providing uniform and predictable rules governing the enforcement of patents, an essential aspect of the court’s mission. The Supreme Court did not provide any …

Knowledge/Skill Standards Of A "Person Skilled In Art": A Concern Less Visited, 17 Marshall Rev. Intell. Prop. L. 588 (2018), Naina Khanna, Jasmeet Gulati

UIC Review of Intellectual Property Law

The law is differential across jurisdictions when it comes to the skill standard required for the PSITA/PHOSITA in Patent Law. This article will analyze the various levels of skill addressed throughout European, Indian, and U.S. Patent Law. Whether the level of skill be ‘ordinary’, ‘extraordinary’ or otherwise, discrepencies exist throughout the court systems, manuals of examination and the like. Much hinges on the determination of patentability when the expertise or level of skill of the PSITA/PHOSITA is often vague and indeterminative. It is submitted that since the advancement in technology is taking place at a very rapid scale and every …

The Balances Of Two Trademark Rights: Generation Systems In Japan's Trademark Laws, 17 J. Marshall Rev. Intell. Prop. L. 608 (2018), Weiguang Wu

UIC Review of Intellectual Property Law

This article consists of 6 sections. In Section I, the article mainly introduces the basic theory of a trademark right as a private right and its purpose. A trademark right as a private right is purposeful to protect goodwill of trademark users, which is their labor fruits during trademark use in the course of business. A trademark right generated by use is called a right subsisting upon use (RSUU) system, which is mainly adopted in common law countries. A trademark right generated by registration is called a right subsisting upon registration (RSUR) system, which is mainly adopted by civil law …

Law, Brands, And Innovation: How Trademark Law Helps To Create Fashion Innovation, 17 J. Marshall Rev. Intell. Prop. L. 492 (2018), Dayoung Chung

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This Article explores the role of trademark law in the fashion industry. For years, the fashion industry has drawn legal scholars’ attention for its maintenance of creative endeavors within a legal environment that offers limited protection against design copying. Some influential legal studies argued that copying paradoxically helps the fashion industry as unregulated copying stimulates the creation of new designs. Yet, this Article observes that the driver for new design creation is already built into the contemporary fashion industry. The question should rather be directed at who creates fashion and how the role of the law, if any, aids the …

The Slants Decision Understates The Value Of Trademark Registration In Promoting Speech - Correctly Decided With A Conclusory Analysis, 17 J. Marshall Rev. Intell. Prop. L. 380 (2018), David Brezina

UIC Review of Intellectual Property Law

The highly anticipated case of Matal v. Tam resulted in the band, The Slants, eventually being able to register their band name as a trademark, with a goal in mind to reclaim Asian stereotypes. Despite this decision, it is not immediately clear how having a registration enhances the registrant’s right to use the mark as a part of free speech, when the Court observes that Tam could call his band The Slants even without registration. This article touches on the Tam case, by analyzing both the positive and negative rights that federal trademark registration yields. By expanding on a variety …

Delaying Competition: How Sound Public Policy And Rigorous Antitrust Scrutiny Can Be Applied To Controversial Patent Settlements, 17 J. Marshall Rev. Intell. Prop. L. 655 (2018), Sam Hensel

UIC Review of Intellectual Property Law

The rising costs of prescription drugs are a growing concern for many Americans. The restraint of trade for pharmaceutical drugs is a cause of rising costs for consumers, as companies seek to push potential competitors out of the market to maintain profits. This unlawful restraint of trade will be discussed in this comment. Specifically, this comment will focus on "Pay for Delay" agreements, mostly between generic versus brand name pharmaceutical manufacturers. The proliferation of these agreements only leads to an unsustainable market that discourages innovation and advancement, and promotes fraud, as invalid patents are used as leverage to prevent generics …

A Battle Between Moral Rights And Freedom Of Expression: How Would Moral Rights Empower The "Charging Bull" Against The "Fearless Girl"?, 117 J. Marshall Rev. Intell. Prop. L. 672 (2018), Tzu-I Lee

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No abstract provided.

Foreign Patent Decisions And Harmonization: A View Of The Presumption Against Giving Foreign Patent Decisions Preclusive Effect In United States Proceedings In Light Of Patent Law International Harmonization, 18 J. Marshall Rev. Intell. Prop. L. 1 (2018), Roberto Rosas

UIC Review of Intellectual Property Law

This article takes a look at the important issue of global harmonization in patent law. The article takes a snapshot at issues such as recognition and enforcement of foreign patent decisions, and how courts in the United States resolve foreign patent laws disputes brought before them. Although there are numerous legal topics that can be addressed in the subject of international patent law, this article takes special focus on the pressure put on the strong presumption of territoriality in patent law because of the rapid and still growing globalization and internalization of markets and intellectual property; while also discussing on …

Trade Secret Law: The Role Of Information Governance Professionals, 18 J. Marshall Rev. Intell. Prop. L. 27 (2018), William Lynch Schaller

UIC Review of Intellectual Property Law

Trade secrets are rapidly becoming the most important assets of many businesses. Information Governance (IG) professionals can and should play an integral part in managing company trade secrets, but not all companies have IG professionals and not all IG professionals understand the meaning of "trade secrets." This article maps the many facets of trade law and practice that are of potential interest to all IG professionals. It also highlights the different roles IG professionals can play with respect to trade secrets, from cataloging to monitoring to testifying.

When Open Source Software Encounters Patents: Blockchain As An Example To Explore The Dilemma And Solutions, 18 J. Marshall Rev. Intell. Prop. L. 55 (2018), Huang-Chih Sung

UIC Review of Intellectual Property Law

The original blockchain developers set the core programs, development interfaces, and application software of the blockchain as open source software, which are open to all developers for free. They have never thought of collecting royalties by claiming copyright, nor did they apply for patents. Since then, however, many follow-up blockchain developers applied the core programs to further developments and filed a large numbers of patent applications, causing the original blockchain developers to be very concerned about whether these patents will otherwise slow down or even endanger the innovation of blockchain technology. Consequently, finding legal solutions for the conflicts between open …

Making The List: What Does It Take To Make A Patient List A Trade Secret?, 18 J. Marshall Rev. Intell. Prop. L. 83 (2018), Sara Ghantous

UIC Review of Intellectual Property Law

What exactly makes a patient list a trade secret? This question has been a topic of heated debate for the last thirty years. It turns out that there is no right answer to this question. Long story short: it depends. The enumerated factors in the Uniform Trade Secrets Act (UTSA) lack specificity, and the courts fan to clarify how to meet the UTSA’s ambiguous standards. Because there is no clear approach to determine whether a patient list enjoys trade secret protection, there is no way for physicians to know the proper measures to take in gathering, maintaining, and protecting patient …

Insta-Fringement: What Is A Fair Use On Social Media?, 18 J. Marshall Rev. Intell. Prop. L. 102 (2018), Caroline E. Kim

UIC Review of Intellectual Property Law

The phenomena of the Internet reinforced the need for well-defined intellectual property rights. In turn, the enactment of the General Data Protection Regulation emphasized the importance of social media and privacy. However, the problem remains that the law has not yet fully embraced the relationship between many technological advancements and social media. The widespread use of social media illustrates that contemporary copyright law must address what constitutes “shareable content.”

This article examines what social media platforms can do in order to provide a clearer definition of what constitutes a “fair-use” on their platforms. A data controller such as Instagram must …

Resale Of Digital Works Under Copyright Laws: A Legal And Economic Analysis, 18 J. Marshall Rev. Intell. Prop. L. 123 (2018), Muhammad Masum Billah

UIC Review of Intellectual Property Law

Through the first sale doctrine, copyright laws around the world establish for an owner of the copy of a copyrighted work the right to resell, lend, donate, and, in some cases, even to rent the copy. Under the doctrine, the copyright holder loses any control over the future distribution of a copy of the work after the sale of that copy. The purchaser of the copy is free to treat it like any other property she possesses. She can transfer it to anyone else through a resale or donation. The doctrine is part of the balance copyright law strikes between …

Unconstitutional Application Of 35 U.S.C. §101 By The U.S. Supreme Court, 18 J. Marshall Rev. Intell. Prop. L. 144 (2018), Sherry Knowles, Anthony Prosser

UIC Review of Intellectual Property Law

“A or B” is inconsistent with “A not B.” This describes why the application of 35 U.S.C. § 101 by the U.S. Supreme Court is inconsistent with the U.S. Constitution, and thus unconstitutional. This article tracks the legislative history of patent eligibility from 1790 to 2011, and the parallel but inconsistent U.S. Supreme Court case law during this period. In following its own case law, the Court has shown extraordinary judicial activism, has penciled out two words of the federal statute (“or discovers”), and has penciled a word out of the U.S. Constitution (“discoveries”).

You Can't Always Get What You Want? A Comparative Analysis Of The Legal Means To Oppose The Use Of Campaign Music, 18 J. Marshall Rev. Intell. Prop. L. 169 (2018), Stefan Michel

UIC Review of Intellectual Property Law

The conflict between politicians and musicians over the use of songs as campaign music is a recurring issue in almost every election cycle. Due to its energizing and unifying force, music can be an efficient instrument in political campaigning. However, artists feel aggrieved as the use of their music might invite the assumption that they are somehow endorsing the candidate. After giving a brief overview of the history of campaign music and the qualities that make it so attractive for campaigning, this piece will analyze the chances a musician stands in the jurisdictions of the U.S., the UK and Germany. …

The Safe Harbor Of 35 U.S.C. § 121: Judicial Deviation From Congressional Intent Is Not Necessary To Uphold 35 U.S.C. § 101, 18 J. Marshall Rev. Intell. Prop. L. 205 (2018), Jeanette Braun

UIC Review of Intellectual Property Law

35 U.S.C. § 101 allows one patent per invention. Congress recognized that patent applications may disclose more than one invention and in 1952, enacted 35 U.S.C. § 120 and 121 to allow parent patent applications to birth child applications. The rights of patent blood lines have been understood and relied on for decades. In 2015, the Federal Circuit changed the rights of patent blood lines and ruled that the order in which patent applications were birthed destroyed 35 U.S.C. § 121 protection of divisional applications. This article analyzes the congressional intent of 35 U.S.C. § 121, the rights of patent …

Returning The Photographer's Autonomy: The Integration Of Blockchain Technology Into Copyright Registration, 18 J. Marshall Rev. Intell. Prop. L. 221 (2018), Claire Demos

UIC Review of Intellectual Property Law

The advent of the Internet, combined with advances in accessible digital technology, have altered both the modern photographer’s methodologies and the public’s relationship to images online. Subsequent legislation has not evolved at a comparable pace, leaving copyright owners at a significant disadvantage when it comes to protecting their work in the digital environment. This comment specifically looks at the copyright registration process and subsequent legislation such as the Digital Millennium Copyright Act, which has failed to adequately address the copyright owner’s insurmountable burden when it comes to detecting infringement online. Continuing developments such as the integration of blockchain-based technology into …

Design Patent Litigation: Is "Obvious To Try" Unavailable For Validity Challenges Under 35 U.S.C. § 103?, 16 J. Marshall Rev. Intell. Prop. L. 173 (2017), Scott Locke

UIC Review of Intellectual Property Law

Ten years ago, the United States Supreme Court shook the foundation of U.S. patent law when it announced that a patented invention could be invalidated because the claimed combination of heightened the thr whether a person of ordinary skill in the art would deem a combination of features obvious to try can be measured against a perceived a likelihood of success for achieving a purpose. But the concept does not easily translate to design patents. Those types of patents are directed to ornamental features, which by definition cannot be dictated by functionality, and thus, the success of a combination cannot …

Commercial Creations: The Role Of End User License Agreements In Controlling The Exploitation Of User Generated Content, 16 J. Marshall Rev. Intell. Prop. L. 382 (2017), Neha Ahuja

UIC Review of Intellectual Property Law

This article considers the current licensing regime used to control the exploitation of copyright protected works within the online interactive entertainment sector—particularly virtual worlds including multiplayer online games—to further author new copyrightable works. This article aims to identify the gaps that have arisen on account of the nature of these subsequently authored works and the potential for their exploitation under the said licensing regime. Users and the proprietors of virtual worlds often end up in conflict over the monetization and commercialization of user generated content on account of contradictory yet overlapping rights created by copyright law when controlled by contract …

If The Shoe Fits: The Effects Of A Uniform Copyright Design Test On Local Fashion Designers, 17 J. Marshall Rev. Intell. Prop. L. 262 (2017), Elise Ruff

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Fashion design is a revolutionary walking art form, becoming increasingly accessible to consumers. The increase in accessibility is, in part, due to the presence of technology and social media platforms. While this allows the consumer to have access to a designer’s goods at unprecedented levels, this has led to an increase in claims of copyright infringement against large fashion corporations. This comment discusses how local-based fashion designers have lodged complaints against large fashion corporations of stealing their designs. Additionally, this comment discusses a recent United States Supreme Court case Star Athletica, L.L.C., v. Varsity Brands, Inc., and the implications of …