Intellectual Property Law Commons^™

Obvious To Whom? Evaluating Inventions From The Perspective Of Phosita, Rebecca S. Eisenberg

Articles

In this Article, I consider the possibility of giving the USPTO input from currently active technological practitioners in evaluating the obviousness of claimed inventions. Such input could potentially serve three useful functions. First, it could improve the accuracy of USPTO decisionmaking by providing access to the perspective of actual practitioners as to the obviousness of inventions from the perspective of the hypothetical PHOSITA. Second, it could help the USPTO document the evidentiary basis for rejections that rest in part upon tacit knowledge within technological communities. Third, it could provide a quality control mechanism that would improve the credibility of USPTO …

Freeing The Mind: Free Software And The Death Of Proprietary Culture, Eben Moglen

Faculty Scholarship

The subject matter we are going to talk about is variously named and thewords have some resonances of importance. I am going to use the phrase "Free Software" to describe this material, and I am going to suggest to you that the choice of words is relevant. We are talking not merely about a form of production or a system of industrial relations, but also about the beginning of a social movement with specific political goals, which will characterize not only the production of software in the twenty-first century, but the production and distribution of culture generally.

My purpose this …

The New Technology Transfer Block Exemption: A Welcome Reform, After All, Maurits Dolmans, Anu Bradford

Faculty Scholarship

This article discusses the most important changes introduced at the final stage of the Commission's review of the technology transfer block exemption regulation (“TTBER"), and examines the benefits and the challenges of the new regulatory framework for technology licensing.

The new TTBER represents a significant improvement over the Commission's draft TTBER, published in October 2003. Most importantly, the Commission agreed to revise the list of hardcore restrictions between competitors, which was over-inclusive and had the potential to seriously hinder technology licensing in horizontal agreements. In addition, the list of hardcore restrictions between non-competitors and the interpretation of "know-how'' (and thus …

Copyright's Communications Policy, Tim Wu

Faculty Scholarship

There is something for everyone to dislike about early twenty-first century copyright. Owners of content say that newer and better technologies have made it too easy to be a pirate. Easy copying, they say, threatens the basic incentive to create new works; new rights and remedies are needed to restore the balance. Academic critics instead complain that a growing copyright gives content owners dangerous levels of control over expressive works. In one version of this argument, this growth threatens the creativity and progress that copyright is supposed to foster; in another, it represents an "enclosure movement" that threatens basic freedoms …

2004 Update - 180-Day Exclusivity Under The Hatch-Waxman Amendments To The Federal Food, Drug, And Cosmetic Act, Erika Lietzan

Faculty Publications

This article updates the author's previously published article on the topic, provides some insight into recent events in this area of the law, and specifies a few minor items that were noted incorrectly in the earlier work.

The Inequitable Conduct Defense Lives On: 2003 Federal Circuit Decisions And Their Impact, 3 J. Marshall Rev. Intell. Prop. L. 189 (2004), Alan M. Kowalchyk, Thomas R. Johnson

UIC Review of Intellectual Property Law

The inequitable conduct defense remains a viable defense in patent litigation today, as illustrated in four 2003 Federal Circuit decisions. Though an alleged patent infringer must establish the elements of materiality and intent for a valid inequitable conduct defense, recent Federal Circuit decisions indicate that certain factual underpinnings bearing on materiality can raise an inference of intent. To most effectively counter this inference of intent, a plausible explanation for the questioned conduct should be provided by the patentee. However, in providing such plausible explanation, the patentee runs the risk of waiving privileged communications, which in turn may result in far …

“Intellectual Alchemy”: Securitization Of Intellectual Property As An Innovative Form Of Alternative Financing, 3 J. Marshall Rev. Intell. Prop. L. 307 (2004), John M. Gabala Jr.

UIC Review of Intellectual Property Law

While asset-securitization has been around since the early 1980’s, prior to the now widely known structuring of musician David Bowie’s music catalogue into saleable bonds in 1997, music royalties and copyrights were never before used in a securitization. At the time, Bowie’s catalogue had a proven royalty track record; however, the valuation of the actual bonds remained untested in the illegal music-downloading era of today. This comment explores the benefits of intellectual property-based securitizations and their common valuation approaches. In addition, it is argued that appropriate credit enhancements should be employed to protect future Bowie bond style deals against the …

Dividing The (Statutory) Baby Under Anton/Bauer: Using The Doctrine Of Implied License To Circumvent § 271(C) Protection For Components Of A Patented Combination, 3 J. Marshall Rev. Intell. Prop. L. 355 (2004), Daniel M. Lechleiter

UIC Review of Intellectual Property Law

In proscribing contributory infringement of patents, § 271(c) of Title 35 of the United States Code unambiguously provides statutory protection for certain unpatented components of patented combinations and certain unpatented materials or apparatuses used in patented processes. The doctrine of implied license provides a viable defense against claims of contributory infringement. Such a finding may result from a variety of related doctrines, such as the exhaustion doctrine or the doctrine of equitable estoppel. However, unlike the Supreme Court’s application of the former doctrine in Dawson Chemical Co. v. Rohm & Haas Co., involving an unpatentedchemical used in a patented process, …

What A Long, Strange “Trips” It’S Been: Compulsory Licensing From The Adoption Of Trips To The Agreement On Implementation Of The Doha Declaration, 3 J. Marshall Rev. Intell. Prop. L. 331 (2004), Mark C. Lang

UIC Review of Intellectual Property Law

Startling numbers of people die every day because they do not have access to essential medicines and treatment for diseases such as HIV/AIDS, particularly in Africa and Asia. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was established by the World Trade Organization (WTO) to set a minimum level of protection of intellectual property rights across international borders, as well as promote and protect the welfare of humanity. This Comment reviews the history of the TRIPS Agreement, including the most recent adoption of the WTO relating to the issuance of compulsory licenses. Specifically, this Comment suggests that the …

“Shamnesty” Vs. Amnesty: Can The Riaa Grant Immunity To File-Sharers From Copyright Infringement Lawsuits?, 3 J. Marshall Rev. Intell. Prop. L. 279 (2004), Natosha Cuyler-Sherman

UIC Review of Intellectual Property Law

The Recording Industry Association of America (RIAA) is the industry trade association for sound and music recordings and represents various music companies, songwriters, and music artists. One of the main functions of the RIAA is to enforce its members’ copyrights. The RIAA is currently representing members in copyright infringement lawsuits. As an alternative to being sued, the RIAA announced that it would grant amnesty to file sharers who voluntarily identified themselves and promised to stop illegally sharing music. In reality, non-RIAA members and even RIAA members themselves can still sue file sharers because the organization itself does not have the …

Recent Developments In Trademark Law: The Ongoing Refinement Of Rights, 3 J. Marshall Rev. Intell. Prop. L. 258 (2004), Chad Doellinger

UIC Review of Intellectual Property Law

The year 2003 saw a great deal of activity in the ongoing development of trademark law. While the law both reconnected with its bricks-and-mortar roots and expanded to accommodate new fact patterns in the late 1990’s and early 2000’s, 2003 saw the beginning of a doctrinal contraction, with a requirement to tie inchoate harms to empirical foundations. Additionally, several issues of first impression were resolved, including the conclusion that domain names are a form of property. While 2003 saw a contraction of trademark rights, this is not necessarily a negative development for trademark owners. Instead, courts are merely refining the …

Navigating The Bramble Bush In Idea Submission Cases, 4 J. Marshall Rev. Intell. Prop. L. 36 (2004), Lisa Pearson

UIC Review of Intellectual Property Law

Today’s law of idea submissions is a proverbial bramble bush for a variety of reasons. Both the legal theories of recovery and the viability of such claims differ widely from state to state. In addition, notwithstanding the vast body of idea-submission law, there are still many open issues. These complex, fact-specific cases still manage to ensnare plaintiffs and defendants alike in years of litigation. As such, finding one’s way through the bramble bush to defend against idea submission claims is a daunting task. This article provides a map designed to help the litigator navigate the thicket. Following the trail is …

The Accidental And Inherent Anticipation Doctrines: Where Do We Stand And Where Are We Going?, 4 J. Marshall Rev. Intell. Prop. L. 63 (2004), Anne Brown, Mark Polyakov

UIC Review of Intellectual Property Law

It is often unclear when a prior occurrence or disclosure of a claimed invention falls under the patent law doctrines of inherent or accidental anticipation. Courts have applied various tests in determining whether anticipation is inherent or accidental, and the cases are difficult to reconcile. Tests seemingly dispositive to establish an accident in one case may also appear dispositive to establish inherency. As a result of our analysis, we have developed a two-step test that can be used to reconcile the two doctrines and determine whether a product or process anticipates. The first prong is concerned with whether the prior …

Trademark Surveys: Development Of Computer-Based Survey Methods, 4 J. Marshall Rev. Intell. Prop. L. 91 (2004), Robert H. Thornburg

UIC Review of Intellectual Property Law

Courts have continually utilized surveys to show evidence of secondary meaning, genericness, dilution, and functionality in trademark litigation. In conducting a trademark survey, an expert must consider various factors that may affect the admissibility of the survey in court, including assuring the correct universe of respondents are questioned, implementing controls, and verifying the results. In light of these considerations, as well as the ever-changing environment of consumer shopping, the manner and mode of survey that a court accepts as appropriate must adapt to these conditions. The use and acceptance of online and computer-based surveys is not currently well received by …

Football's Intellectual Side: The Nfl Versus Super Bowl Parties And The Story Of The Fifty-Five Inch Television, 4 J. Marshall Rev. Intell. Prop. L. 125 (2004), Michael M. Fenwick

UIC Review of Intellectual Property Law

The increasing popularity of the National Football League’s Super Bowl Championship has spawned an increasing number of private parties, some that employ projection-screen televisions measuring up to twenty feet diagonally. Only days before the 2004 Super Bowl, the NFL sent cease-and-desist letters to a number of business proprietors claiming display of the broadcast on televisions larger than fifty-five inches diagonally violated the NFL’s rights under 17 U.S.C. § 110(5). This Comment will show that because 17 U.S.C. § 110(5) was written to protect authors within the music industry, its application to broadcast television fails because of television’s fundamentally different business …

Developments In Patent Law 2004, 4 J. Marshall Rev. Intell. Prop. L. 1 (2004), Harold C. Wegner

UIC Review of Intellectual Property Law

There are a great number of patent law doctrines that are currently under reconsideration by the Federal Circuit. These doctrines include patent claim construction under the 2006 Phillips case, the problem of foreign activity being used as patent-defeating prior art as shown in the recent Elsner case, the growing challenge of extraterritorial acts as patent infringement as presented in the 2004 expected cases of Blackberry and Eolas, the “Rule 105” implications for patent office practice in Sta Fruits, the change in willful infringement law set forth in the recent KnorrBremse case, the continuing problem of co-inventorship recurring in Xechem, the …

Reducing The Need For Markman Determinations, 4 J. Marshall Rev. Intell. Prop. L. 53 (2004), Robert H. Resis

UIC Review of Intellectual Property Law

The uncertainty as to whether claim interpretation decisions will survive appeal is an ever growing concern as the Federal Circuit’s reversal rate of lower court claim interpretations averages fifty percent. At a minimum, uncertainty in claim construction prolongs patent infringement disputes. Moreover, the reality is that many times it is the uncertainty of a claim’s scope and meaning that leads to litigation in the first place. In order to alleviate this stress on patentees, competitors and the federal court system, most if not all questions regarding the scope and meaning of claim terms should be clarified by the applicant during …

Does David Need A New Sling? Small Entities Face A Costly Barrier To Patent Protection, 4 J. Marshall Rev. Intell. Prop. L. 184 (2004), Jeff A. Ronspies

UIC Review of Intellectual Property Law

The cost of enforcing patent rights is discouraging the small-entity inventor from seeking out patent protection. The United States Patent and Trademark Office favors the “small entity” by reducing fees, but the world of infringement litigation offers no such discount. For the small entity, the costs related to asserting or defending its patent rights against a well-funded adversary often exceed the benefits of patent ownership. These inventors, in weighing the high costs of patent protection against the potential profits, may simply choose to not patent their innovations. Such a decision would deprive the public of the invention’s disclosure and ultimately …

Patent Politics, Michael Henry Davis

Law Faculty Articles and Essays

To observe that so-called intellectual property (IP) flowered in the late twentieth century, even supplanting, to a large extent, the place of real and tangible personal property in terms of corporate, if not individual, wealth, is almost trite. Since IP has become the bedrock of most commercial wealth, especially in international trade, and since international trade is, or is about to become, the center of most commercially valuable trade, a comprehensive understanding of IP has become essential. Instead of being the reserve of technicians, the field demands a full examination by jurists and the larger society.Although IP literature has blossomed, …

Of Straying Crops And Patent Rights, Drew L. Kershen

Faculty Articles

No abstract provided.

Life After Eldred: The Supreme Court And The Future Of Copyright, Marshall Leaffer

William Mitchell Law Review

No abstract provided.

Copyright, Containers, And The Court: A Reply To Professor Leaffer, Niels B. Schaumann

William Mitchell Law Review

No abstract provided.

The Supreme Court And Trademark Law In The New Millennium, David S. Welkowitz

William Mitchell Law Review

No abstract provided.

Defenders Of Small Business?: A Perspective On The Supreme Court's Recent Trademark Jurisprudence, Sharon K. Sandeen

William Mitchell Law Review

No abstract provided.

Contrived Conflicts: The Supreme Court Versus The Basics Of Intellectual Property Law, F. Scott Kieff

William Mitchell Law Review

No abstract provided.

Competition Perspectives On Patent Law Substance And Procedure: An Overview Of The Ftc/Doj Hearings And The Ftc Report, Hillary Greene

Faculty Articles and Papers

No abstract provided.

The Incredible Shrinking First-Sale Rule: Are Software Resale Limits Lawful?, John A. Rothchild

Law Faculty Research Publications

No abstract provided.

Copyright, Derivative Works And Fixation: Is Galoob A Mirage, Or Does The Form (Gen) Of The Alleged Derivative Work Matter?, Tyler T. Ochoa

Faculty Publications

The Copyright Act gives a copyright owner the exclusive right "to prepare derivative works based on the copyrighted work." Does the Copyright Act require that a derivative work be "fixed in a tangible medium of expression" in order to be infringing? Existing case law is contradictory, stating both that a derivative work does not need to be "fixed" but that it does need to be embodied in some "concrete or permanent form." This contradiction stems from the fact that although the statutory language does not appear to require fixation, reading the statutory language literally would render illegal merely imagining a …

Intellectual Property Trademark Law—Victor/Victoria?—The United States Supreme Court Requires Trademark Dilution Plaintiffs To Show Actual Harm. Mosely V. Victoria's Secret Catalogue, Inc., 537 U.S. 418 (2003), Stephanie Egner

University of Arkansas at Little Rock Law Review

No abstract provided.

The Art And Science Of Genetic Modification: Re-Engineering Patent Law And Constitutional Orthodoxies (The Harry T. Ice Chair Inaugural Lecture), Yvonne Cripps

Indiana Journal of Global Legal Studies

The Harry T. Ice Chair Inaugural Lecture