Intellectual Property Law Commons^™

The Third Door Is Off The Hinges: A Prospective Study On The Effects Of The Create Act Against Federal Patent Policies, 4 J. Marshall Rev. Intell. Prop. L. 597 (2005), Shane M. Popp

UIC Review of Intellectual Property Law

The CREATE Act has amended § 103 of the Patent Act to expand the definition of common ownership such that a claimed invention is deemed to be commonly owned with other subject matter when the two arise from the same “joint research agreement.” With the CREATE Act, Congress intended to promote research among inventive entities, but instead, Congress has relaxed the conditions for patentability to the point where a contract can circumvent an obviousness inquiry.

Pondering A “Baffling” Situation: The “Reconstruction” Of Claim Construction, 4 J. Marshall Rev. Intell. Prop. L. 623 (2005), Karen C. Mitch

UIC Review of Intellectual Property Law

Through an iterative use of the ordinary dictionary, claim construction would be more simple, cost effective and efficient in serving the public notice function of the claim. Since the decision in Markman, two divergent methods of claim construction have emerged; one referring to dictionary definitions first, the other referring to parts of the patent such as the specification first. Due to the confusion and differing outcomes the two methods bring about, there came a call by the United States Court of Appeals for the Federal Circuit for clarification. The recent en banc decision in Phillips reverted claim interpretation back to …

Is The Cure Worse Than The Disease? An Overview Of The Patent Reform Act Of 2005, 5 J. Marshall Rev. Intell. Prop. L. 55 (2005), James G. Mcewen

UIC Review of Intellectual Property Law

As a result of pressures from various groups and issues surrounding the current patent system, representative Lamar Smith introduced a bill which overhauls multiple aspects of patent practice. The patent reform act is designed to please or compromise between various industry groups while at the same time invigorating the patent system. Specifically, the Patent Reform Act proposes changes to the procedures for filing application, how the applications are filed and even how patents are enforced. In addition to the major publicized changes the Patent Reform Act proposes other alterations that, while receiving less notice, have just as much practical effect. …

Patent Tying Agreements: Presumptively Illegal?, 5 J. Marshall Rev. Intell. Prop. L. 94 (2005), Alison K. Hayden

UIC Review of Intellectual Property Law

On January 25, 2005, the CAFC decided the case of Independent Ink, Inc. v. Illinois Tool Works, Inc., holding that market power will be presumed in a tying agreement whenever a tying product is patented. This rule puts patent holders at a disadvantage, and will increase the amount of antitrust lawsuits brought against patent holders and holders of other exclusive intellectual property rights. Indeed, this rule conflicts with the intended effect of antitrust law. This comment proposes that tying agreements involving a patented product be evaluated the same way as all other tying agreements, and that the presumption of market …

Claim Preambles And The Unassailable Patent Claim, 5 J. Marshall Rev. Intell. Prop. L. 121 (2005), Kyle D. Petaja

UIC Review of Intellectual Property Law

In order to diminish the extensive confusion surrounding claim preambles, one must not consider what a preamble should do; rather, it is helpful to consider what a preamble should not do. Traditionally, a preamble is defined as an introduction to a statute or deed stating the document’s basis, purpose, aim, justification, and objective. However, in patents, a claim preamble does not serve this purpose. While a preamble undeniably functions as an introduction to the rest of the claim, that claim is limited in scope and therefore, so too, is the preamble. The basis, purpose, aim, justification, and objective of the …

To Be Presumed Or Not To Be Presumed . . . That Is The Enablement Question, 5 J. Marshall Rev. Intell. Prop. L. 140 (2005), Kristina A. Walker

UIC Review of Intellectual Property Law

In 2003, the Federal Circuit in Amgen Inc. v. Hoechst Marion Roussel, Inc. placed the burden of proving a prior art patent’s § 112 nonenablement on the patentee instead of the accused infringer. The patentee even bears this burden when the unclaimed subject matter is asserted to anticipate the patent at issue. This comment focuses on three questions that were created by the decision in Amgen. First, is material in a printed publication equivalent to unclaimed material in a patent? Second, is the holding in Amgn based on a false premise because it may accord a presumption of § 112 …

Collateral Damage: The Effect Of The Database Debate On Other Acts Of Congress, 5 J. Marshall Rev. Intell. Prop. L. 78 (2005), Christopher A. Mohr

UIC Review of Intellectual Property Law

Under the reasoning in Unied States v. Martingon, declaring the federal bootlegging statute unconstitutional, databases, as “non-writings,” could not be protected under Congress’s copyright power or commerce power. In other words, Congress’s power under Article I, Section 8, Clause 8 serves to limit its ability to act under Article I, Section 8, Clause 3. Marignon’s rationale raises questions about a variety of prospective and existing legislation that protects “non-writings” for an unlimited time, such as the trademark dilution statute. This article examines the merits of this contention, arguing that the manner in which the Supreme Court has handled overlapping Article …

Legal And Practical Aspects Of Music Licensing For Motion Pictures, Vad Kushnir

Vanderbilt Journal of Entertainment & Technology Law

Most motion pictures contain both original music composed specifically for a particular film and preexisting music (usually popular songs). In order to use preexisting music in a motion picture, the movie studio must obtain the appropriate music licenses from the copyright proprietors. The process of licensing music for use in a motion picture can potentially involve three different types of music licenses. First, the movie producer must obtain a "synchronization license," which will allow the producer to synchronize the musical work with the on-screen visual images and to use the licensed musical work as part of the motion picture in …

When Trade Secrets Become Shackles: Fairness And The Inevitable Disclosure Doctrine, Elizabeth A. Rowe

UF Law Faculty Publications

Critics of the inevitable disclosure doctrine decry the inconsistency with which courts rule on these cases, and the difficulty in predicting case outcomes. They contend that courts are left to "grapple with a decidedly ... nebulous standard of 'inevitability."' Further, they claim the doctrine undermines the employee's fundamental right to move freely and pursue his or her livelihood.

Ultimately, both the problem and solution here are about fairness: fairness in the employer-employee relationship, fairness in the application of the law, and fairness in providing protection from unfair competition between competing employers. The crux of the opposition to the doctrine, in …

Analysis Of Options For Implementing Disclosure Of Origin Requirements In Intellectual Property Applications, Joshua D. Sarnoff, Carlos M. Correa

Traditional Knowledge and Culture

In 2002, the Conference of the Parties (COP) of the Convention on Biological Diversity (CBD) at its Sixth Meeting adopted the Bonn Guidelines to address access to genetic resources and fair and equitable benefit-sharing arising from use of those resources. In the Bonn Guidelines, the CBD COP invited Parties and governments to encourage disclosure of the country of origin of genetic resources and of associated traditional knowledge in applications for intellectual property where the subject matter of the application concerns or makes use of such knowledge in its development. Since 2002, various proposals to facilitate or to mandate such “disclosure …

New Federal And Provincial Personal Information Protection Legislation And Its Impact On Physicians And Public Hospitals, Evguania Prokopieva

Canadian Journal of Law and Technology

The focus of this article is to examine the implications of the new federal and Ontario personal data protection legislation for physicians and public hospitals. This article also inquires into whether the new legislation will contribute to the protection of patient privacy. By ‘‘physician’’ I mean a doctor in a broad sense – i.e., ‘‘a person who has been educated, trained, and licensed to practice the art and science of medicine’’. This will include family doctors, paediatricians, psychiatrists, surgeons, and other medical doctors covered by the Regulated Health Professions Act. By the term ‘‘public hospitals’’ I will refer to not-for-profit …

A Proposed Quick Fix To The Dmca Overprotection Problem That Even A Content Provider Could Love . . . Or At Least Live With, Devon Thurtle

Seattle University Law Review

This article explains the evolution of the fair use doctrine, which historically prevented copyright holders from having too much control over their works by allowing certain legal and non-infringing fair uses of protected works. Part II explains how the United States Supreme Court developed the Betamax standard to apply the doctrine of fair use to a new technology: home video recorders. Part II also addresses how fair use and the Betamax standard might apply to digital technologies. Part III explains how the DMCA effectively abolished the defense of fair use and its application under the Betamax standard. Finally, Part IV …

Note: Exclusive Licensing Of Dna Diagnostics: Is There A Negative Effect On Quantity And Quality Of Healthcare Delivery That Compels Nih Rulemaking?, Edward Weck

William Mitchell Law Review

This comment surveys the costs of deoxyribonucleic acid (DNA) diagnostic tests and argues in favor of non-exclusive licensing as a means to provide broad access to affordable DNA diagnostic testing. Part II provides background information on genetic testing, patenting genes as applied to genetic testing, the Bayh-Dole Act, and technology transfer. In addition, Part II summarizes academic commentary regarding the implications of exclusive licensing for biotechnology. Scholars propose a number of solutions, including expanding the experimental use exception. Part III details proposed rulemaking for DNA diagnostics. Part IV reviews anecdotal examples of genetic testing for breast cancer, hereditary hemochromatosis, and …

Economic Analysis Of Technological Protection Measures, John A. Rothchild

Law Faculty Research Publications

No abstract provided.

"Tpms": A Perfect Storm For Consumers: Replies To Professor Geist, Barry Sookman

Canadian Journal of Law and Technology

This article has its origins in an article written by Professor Michael Geist and published in the Toronto Star entitled ‘‘‘TPMs’: A perfect storm for consumers’’. Following the publication of the article, John Gregory made a posting to the e-commerce listserv he moderates asking if anyone had any comments to the article. I responded on February 13, 2005 with a reply to John’s request. Professor Geist replied to my comments on February 17, 2005. On March 9, 2005 I posted a further reply to Professor Geist. The article set out below is based substantially on my two postings to John …

Comparative Advertising In The United States And In France, Charlotte J. Romano

Northwestern Journal of International Law & Business

Comparative advertising has been widely used for over thirty years in the United States. By contrast, the use of this advertising format has traditionally been-and still is-very marginal in France. The term "comparative advertising" refers to any form of advertising in which a trademark owner draws a comparison between his product, service, or brand and that of a competitor. The central issue of this article is to determine why, despite identical guiding policies, comparative advertising remains unusual in France while it is commonplace in the United States. Attempting to answer that question unavoidably raises numerous related issues: can the two …

The Birth Of The Authornym: Authorship, Pseudonymity, And Trademark Law, Laura A. Heymann

Faculty Publications

Consumers in the marketplace of ideas are well acquainted with one aspect of the Foucauldian concept of the "author function": the way in which an author's name serves to organize both producer inputs-the various works the author wishes to have associated with his name-and consumer inputs-the readers' interpretive reactions to any particular body of work. Indeed, choosing to write under a pseudonym or under one's true name is the way in which an author exerts control over this function by grouping certain works (for example, scholarly pieces) under one name and other works (for example, mystery novels) under a different …

God In The Machine: A New Structural Analysis Of Copyright's Fair Use Doctrine, Matthew Sag

Faculty Articles

Recognition of the structural role of fair use has the potential to mitigate some of the uncertainty of current fair use jurisprudence. The statutory framework for fair use both mitigates and causes uncertainty. It mitigates uncertainty by providing a consistent framework of analysis the four statutory factors. However, when judges apply the statutory factors without articulating or justifying their own assumptions, they increase uncertainty. The statutory factors mean nothing without certain a priori assumptions as to the scope of the copyright owner's rights. A more stable and predictable fair use jurisprudence would begin to emerge if those assumptions were made …

Introduction: Contains Cover, Table Of Contents, Letter From The Editor, And Masthead, Neal H. Lewis

Richmond Journal of Law & Technology

It is my pleasure on behalf of the Staff and Editorial Board of the Richmond Journal of Law & Technology to introduce the first issue of the 2005-2006 academic year. The Journal is proud to present four articles dealing with a range of relevant topics.

Ready, Set, Mark Your Patented Software!, John Labarre, Xavier Gómez-Velasco

Richmond Journal of Law & Technology

The question of whether software programs embodying patented processes need to be marked in accordance with the marking requirement as set forth under 35 U.S.C. § 287 is an unanswered issue. This article first analyzes the marking requirement in the United States patent system and then goes on to survey the rocky history of patents on software innovations. After noting that neither the Supreme Court nor the Federal Circuit has directly decided the issue of the applicability of the Marking Statute to software programs, the article analyzes recent federal district court and Federal Circuit cases, ultimately reasoning that the Federal …

State Of The Art(S): Protecting Publishers Or Promoting Progress?, Thomas A. Mitchell

Richmond Journal of Law & Technology

The Framers guarded against the future accumulation of monopoly power in booksellers and publishers by authorizing Congress to vest copyrights only in ‘Authors.

Introduction: Contains Cover, Table Of Contents, Letter From The Editor, And Masthead, Neal H. Lewis

Richmond Journal of Law & Technology

Welcome to the second issue of the Richmond Journal of Law & Technology for the 2005-2006 academic year. The Staff and Editorial Board of the Journal have spent considerable time preparing this issue for publication, endeavoring to continue the legal discourse on a range of topics. Volume 12, Issue 2 addresses four distinct areas of law.

Radio Frequency Identification: Legal Aspects, Reuven R. Levary, David Thompson, Kristen Kot, Julie Brothers

Richmond Journal of Law & Technology

Radio frequency identification (RFID) is a wireless technology that identifies objects without having either contact or sight of them. Unlike optically read technologies such bar codes, RFID tags can be read despite fog, ice, snow, paint or widely fluctuating temperatures. Additionally, RFID can identify moving objects. Data in an RFID tag is stored in an integrated circuit, and sent to the reader via an antenna. An RFID reader is essentially a radio frequency receiver controlled by a microprocessor or digital signal processor. The reader uses an attached antenna to capture the data transmitted from the tag and sends the information …

When Does A Patent Right Become An Antitrust Wrong? Antitrust Liability For Refusals To Deal In Patented Goods, Aaron B. Rabinowitz

Richmond Journal of Law & Technology

[T]he benefit even of limited monopolies is too doubtful to be opposed to that of their general suppression.At the border of intellectual property monopolies and antitrust markets lies a field of dissonance yet to be harmonized by statute or the Supreme Court.

Designer Discounter Infringes Trademark And Goes Unpunished: A Look At Gucci America, Inc. V. Daffy’S, Inc. And The Lanham Act, Sarah Cone

Richmond Journal of Law & Technology

Regardless of the quality, a knockoff handbag is still a knockoff. It was on this premise that Gucci America, Inc. filed suit against Daffy’s, Inc. for selling counterfeit Gucci handbags. Gucci alleged that Daffy’s violated its trademark protection under the Lanham Act. In the lawsuit, Gucci asserted that it was concerned about the possible confusion of consumers who purchased counterfeit “Jackie-O” handbags, believing them to be genuine Gucci products. Neither the district court nor the circuit court allowed Gucci relief against Daffy’s. This note examines how that decision fits within the Lanham Act.

Patent Claim Interpretation Methodologies And Their Claim Scope Paradigms, Christopher A. Cotropia

Law Faculty Publications

The optimal scope of patent protection is an issue with which patent system observers have struggled for decades. Various patent doctrines have been recognized as tools for creating specific patent scopes and, as a result, implementing specific patent theories. One area of patent law that has not been addressed in the discussion on patent scope and theories is patent claim interpretation. This omission is particularly noteworthy because of the substantive role patent claims and the interpretation thereof play in the patent system, namely the framing of questions of patent infringement and validity. This Article will explore the not-yet-discussed relationship between …

The Supreme Court's Mixed Messages On The Public Domain: Cases Interpreting Section 43 Of The Lanham Act, William Scott Hunt

Kentucky Law Journal

No abstract provided.

Is The Monopoly Theory Of Trademarks Robust Or A Bust?, Harold R. Weinberg

Law Faculty Scholarly Articles

The "monopoly theory of trademarks" would "antitrustize" trademark law by incorporating antitrust legal precedent, economics, policies, reasoning, and terminology. The theory is comprised of six interrelated postulates contained in trademark law and scholarship. The postulates are (1) trademarks are monopolies; (2) trademark monopolies are like illegal antitrust monopolies because both harm competition; (3) trademark law is like antitrust law because both value competition; (4) trademark law is like antitrust law because both apply economic methodology to product markets; (5) an antitrust lens can help one understand trademarks and trademark law; and (6) an antitrust lens can help one decide whether …

The Constitutional Failing Of The Anticybersquatting Act, Ned Snow

Faculty Publications

Eminent domain and thought control are occurring in cyberspace. Through the Anticybersquatting Consumer Protection Act (ACPA), the government transfers domain names from domain-name owners to private parties based on the owners' bad-faith intent. The owners receive no just compensation. The private parties who are recipients of the domain names are trademark holders whose trademarks correspond with the domain names. Often the trademark holders have no property rights in those domain names: trademark law only allows mark holders to exclude others from making commercial use of their marks; it does not allow mark holders to reserve the marks for their own …

Do Patents Promote The Progress Of Justice?: Reflections On Varied Visions Of Justice, Cynthia M. Ho

Faculty Publications & Other Works

No abstract provided.