Intellectual Property Law Commons^™

Foreword To Berkeley Law And Technology Law Journal 21, No. 1, Aaron Perzanowski, Tara Wheatland

Other Publications

Through the scholarship it publishes, the Berkeley Technology Law Journal - formerly the High Technology Law Journal - has tracked the evolution of technology and intellectual property law for more than two decades. In keeping with this tradition, the Annual Review of Law & Technology, now in its ninth volume, catalogs the year's most significant developments in a wide range of topic areas, which this year include intellectual property, cyberlaw, constitutional law, and telecommunications. The summaries and analyses presented here aim to provide practitioners, judges, policymakers, scholars, and students a concise and thorough encapsulation of the year in technology and …

The Use Of Mtas To Control Commercialization Of Stem Cell Diagnostics And Therapeutics, Sean O'Connor

Articles

The recent focus on patents as a hindrance to stem cell research may turn out to be a red herring. The real culprits are material transfer agreements (MTAs), which govern the transfer of cell lines and other biological materials. The MTA’s primary purpose in life sciences research is to set contractual rights and obligations between parties where one party transfers biological materials to the other. For example, MTAs often focus on the physical handling, use, and distribution of the materials by the recipient, ensuring that the recipient complies with regulations for research involving humans or animals.

Although these interests are …

Regulating Access To Databases Through Antitrust Law, 2006 Stan. Tech. L. Rev. 7 (2006), Daryl Lim

UIC Law Open Access Faculty Scholarship

It is largely uncontroversial that the “creative” effort in a database will be protected by copyright. However, any effort to extend protection to purely factual databases creates difficulties in determining the proper method and scope of protection. This Paper argues that antitrust law can be used to supplement intellectual property law in maintaining the “access-incentive” balance with respect to databases. It starts from the premise that a trend toward “TRIPs-plus” rights in databases, whatever its form, is inevitable. The reason is a simple, but compelling one: business needs shape the law. Various means of database access regulation are explored and …

Electronically Stored Information: The December 2006 Amendments To The Federal Rules Of Civil Procedure, Kenneth J. Withers

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Rule 37(F) Meets Its Critics: The Justification For A Limited Preservation Safe Harbor For Esi, Thomas Y. Allman

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Commercializing Open Source Software: Do Property Rights Still Matter?, Ronald J. Mann

Faculty Scholarship

For several years now, open source software products have been gaining prominence and market share. Yet the products themselves are not as provocative as the way in which they are developed and distributed. Two related features of the open source model are distinctive: the use of collaborative development structures that extend beyond the boundaries of a single firm, and the lack of reliance on intellectual property ("IP") rights as a means of appropriating the value of the underlying technologies. Firm-level control of intellectual property is replaced by a complex set of relations, both informal and sometimes contractual, among strategic partners …

Intellectual Property, Innovation, And Decentralized Decisions, Tim Wu

Faculty Scholarship

In 1945, Fredrick Hayek described the problem of economic development as "a problem of the utilization of knowledge not given to anyone in its totality." Hayek's insight has unexpected relevance for what has emerged as the central question in modern intellectual property and related fields: When might the assignment of property rights have anti-competitive consequences? The traditional, yet central, economic answer to this question emphasizes a tradeoff between incentives created by property grants and resulting higher prices and deadweight losses. Under this model intellectual property grants are desirable to the extent that they encourage new product development at a reasonable …

The Copyright Paradox, Tim Wu

Faculty Scholarship

Copyright law has become an important part of American industrial policy. Its rules are felt by every industry that touches information, and today that means quite a bit. Like other types of industrial policy, copyright in operation purposely advantages some sectors and disadvantages others. Consequently, today's copyright courts face hard problems of competition management, akin to those faced by the antitrust courts and the Federal Communications Commission.

How should courts manage competition using copyright? Over the last decade, writers have begun to try to understand the "other side" of copyright, variously called its innovation policy, communications policy, or regulatory side.Here …

Inducers And Authorisers: A Comparison Of The Us Supreme Court's Grokster Decision And The Australian Federal Court's Kazaa Ruling, Jane C. Ginsburg, Sam Ricketson

Faculty Scholarship

On June 27, 2005, the US Supreme Court announced its much-awaited decision in MGM Studios, Inc. v. Grokster Ltd. A few months after this, the Federal Court of Australia handed down its decision at first instance in relation to parallel litigation in that country concerning the KaZaa file sharing system. Both decisions repay careful consideration of the way in which the respective courts have addressed the relationship between the protection of authors' rights and the advent of new technologies, particularly in relation to peer-to-peer networks.

In the Grokster case, songwriters, record producers and motion picture producers alleged that two popular …

Patents And Business Models For Software Firms, John R. Allison, Abe Dunn, Ronald J. Mann

Faculty Scholarship

We analyze the relation between patents and the different business models available to firms in the software industry. The paper builds on Cusumano's work defining the differences among firms that sell products, those that provide services, and the hybrid firms that fall between those polar categories. Combining data from five years of Software Magazine's Software 500 with data about the patenting practices of those software firms, we analyze the relation between the share of revenues derived from product sales and the firm's patenting practices. Accounting for size, R&D intensity, and sector-specific effects, the paper finds a robust positive correlation between …

Linguistics And Claim Construction, Kristen Jakobsen Osenga

Law Faculty Publications

This Article argues that patent claim construction should instead track the way in which we, as readers of a language, attempt to understand what is being conveyed via the written word. First, there is a base level of conventional understanding from which all interpretation starts, an understanding that either a priori exists based on our earlier encounters with the word or is obtained from a dictionary in cases in which we lack previous knowledge. Second, from this conventional understanding, we construct the actual meaning of the term based on a number of linguistic clues. These clues are both internal and …

'Une Chose Publique'? The Author's Domain And The Public Domain In Early British, French And Us Copyright Law, Jane C. Ginsburg

Faculty Scholarship

Much contemporary copyright rhetoric casts copyright as a derogation from a primordial public domain. Placing the public domain in the initial position buttresses attempts to contain a perceived over-expansion of copyright. I do not take issue with the normative role these endeavors assign to the public domain. The public domain is today and should remain copyright's constraining counterpart. But normative arguments that also claim the support of history may be fundamentally anachronistic. The ensuing examination of the respective domains of author and public at copyright's inception, in 18th-19th century Britain, France and America, reveals more ambiguity than today's critiques generally …

The Economics Of Open Access Law Publishing, Jessica D. Litman

Articles

The conventional model of scholarly publishing uses the copyright system as a lever to induce commercial publishers and printers to disseminate the results of scholarly research. Recently, we have seen a number of high-profile experiments seeking to use one of a variety of forms of open access scholarly publishing to develop an alternative model. Critics have not quarreled with the goals of open access publishing; instead, they've attacked the viability of the open access business model. If we are examining the economics of open access publishing, we shouldn't limit ourselves to the question whether open access journals have fielded a …

Remembering The Public Domain, Christine Galbraith Davik

Faculty Publications

Rapid advances in communication technology over the past decade have resulted in the previously unimaginable ability to seamlessly exchange ideas and data on a global basis. Nonetheless, despite the undeniable progress that has been made, access to information is ironically becoming progressively more. This is due in large part to the fact that resources which belong in the public domain are increasingly being transformed into private property. The carefully balanced provisions of copyright law are gradually becoming displaced by contractual, technological, and legislative constraints that allow for the tight control of access to and use of the materials in question. …

Paper Dragon: Inadequate Protection Of Intellectual Property Rights In China, Omario Kanji

Michigan Journal of International Law

This Note will explore the extent to which China is in violation of its obligations under TRIPs. Section I surveys the current state of IPR infringement in China. Section II analyzes relevant TRIPs provisions, case law, and treaties that supplement TRIPs provisions. Section III analyzes Chinese criminal law, the December 2004 Judicial Interpretation of Chinese criminal law, and Chinese IP law as they pertain to IPR infringement. Section IV outlines enforcement efforts in China against the backdrop of the law analyzed in the previous section. Section V evaluates these enforcement efforts given China's capabilities and obligations, and Section VI concludes …

Power, Norms, And International Intellectual Property Law, Tai-Heng Cheng

Michigan Journal of International Law

This Article begins with the premise that international law is the net result of global processes of interactions among state and non-state participants in the international system. The Article builds on the author’s previous work by proposing a theory of international law that fills the interstices between private and public international law. Participants generally deploy power and invoke legal and social norms in pursuit of interests and in response to the strategies of other participants. Eventually, outcomes that reflect both power and norms result, and these outcomes in turn modify norms and reallocate power. New outcomes then follow in future …

Ending The Circuit Split Over Use Of A Competing Mark In Advertising—The Blackstone Code, 5 J. Marshall Rev. Intell. Prop. L. 157 (2006), Douglas L. Rogers

UIC Review of Intellectual Property Law

In KP Permanent, the Supreme Court recently confirmed that plaintiffs in trademark infringement cases under the Lanham Act have the burden of proving likelihood of confusion. As such, this article argues that lower courts do not have the authority to switch that burden of proof for such claims, even though they involve nominative uses (in which defendant is using the actual mark of plaintiff as plaintiff’s source identifier and not as a description of the defendant's products or services). This article also argues that because Congress created affirmative fair use defenses for descriptive uses of marks and for trademark dilution, …

Has The Supreme Court Incorrectly Expanded § 271(E)(1) To Risk A Regulatory Taking?, 5 J. Marshall Rev. Intell. Prop. L. 216 (2006), Tara Stuart

UIC Review of Intellectual Property Law

The U.S.S.C. expanded the scope of the Hatch-Waxman Act’s safe harbor provision in Merck III to include protection for infringing use of any type of invention as long as a researcher intended to perform research reasonably relevant to FDA approval. This broad interpretation is inconsistent with the legislative intent of the Hatch-Waxman Act, and the policies of the U.S. patent system. Many patent owners may unnecessarily experience such a reduction in their property rights as to constitute a regulatory taking. The proposed narrow interpretation would rectify the constitutional problems and inconsistencies in infringement exemptions. Section 271(e)(1) should apply only to …

Redefining Utility In Determining The Patentability Of Dna Sequences, 5 J. Marshall Rev. Intell. Prop. L. 238 (2006), Diana A. Villamil

UIC Review of Intellectual Property Law

On September 7, 2005, the Federal Circuit in In re Fisher upheld the PTO’s final rejection for lack of utility of a patent application for certain DNA sequence fragments generated from maize plants. The court, supporting a heightened utility standard, adopted the “real-world” test for establishing substantial and specific utility required by the PTO. This decision severely limits the granting of patent rights to DNA sequence fragments, which are capable of having value within the biotech community as research tools. This comment proposes the restoration of a less stringent utility standard to more correctly reflect the purposes of patent law …

The Metes And Bounds Of The Defendant Class Action In Patent Cases, 5 J. Marshall Rev. Intell. Prop. L. 292 (2006), Donald E. Burton

UIC Review of Intellectual Property Law

Despite significant hurdles, the defendant class action in a patent infringement case is a potentially useful alternative to multiple lawsuits in many jurisdictions because a patentee who emerges from the class action proceeding with a favorable Markman ruling and a declaration of validity should normally be in a very strong position to collect damages. While nothing on the face of Federal Rule of Civil Procedure 23 precludes its application to defendant classes in patent infringement cases, the 23(b) requirements will be a major obstacle in convincing a court to certify a class of alleged infringers. Other practical considerations include personal …

The Ip Asset Class: Protecting And Unlocking Inherent Value, 5 J. Marshall Rev. Intell. Prop. L. 402 (2006), Stephen Bennett

UIC Review of Intellectual Property Law

Intangible inputs are as important, or more important, to wealth creation than tangible assets and corporate leaders are beginning to recognize the value of their intangible assets. Investors are also focusing on companies whose primary property value is largely intangible intellectual property. IP investment strategies involve either attempts to raise and employ immediate capital through securitization or to protect the value of IP through insurance. The nexus between finance and IP presents a revenue opportunity for law firms. There is already a contingent of the legal community that services clients concerning IP issues but only a much smaller niche segment …

Why Are Competitor's Advertising Links Displayed When I Google My Product? An Analysis Of Internet Search Engine Liability For Trademark Infringement, 5 J. Marshall Rev. Intell. Prop. L. 431 (2006), Isaiah A. Fishman

UIC Review of Intellectual Property Law

Traditional federal trademark law is being challenged in the current case of Google v. AmericanBlind. When internet issues clash with trademark infringement, courts are often faced with the dangerous task of either refusing to stretch not specifically internet tailored trademark law to grant remedy to a perceived wrong or refusing to grant remedy because of the chilling effect the remedy may have on traditional trademark. By analyzing the history of trademark law in relation with internet issues, focusing on domain name cases, pop-up advertising cases, and search engine cases, it becomes clear that specific congressional action is the most viable …

Smithkline V. Apotex: Broadening The Scope Of Inherent Anticipation And Its Impact On The Patentability Of Chemical Structures, 5 J. Marshall Rev. Intell. Prop. L. 456 (2006), Bryan William Jones

UIC Review of Intellectual Property Law

In SmithKline v. Apotex, the Court of Appeals for the Federal Circuit invalidated the main patent on Paxil as inherently anticipated. In doing so, the court over-stepped the bounds of appellate review, and broadened the scope of the inherent anticipation doctrine to include chemical structures that are not measurably produced by strict practice of the prior art. This holding does not comport with well-settled precedent and could have dire consequences for the patentability of many chemical structures. A more equitable invalidity analysis would require a chemical structure to derive directly from a disclosed reaction in order to be anticipated; in …

The Conundrum Confronting Congress: The Patent System Must Be Left Untouched While Being Radically Reformed, 5 J. Marshall Rev. Intell. Prop. L. 268 (2006), Robert A. Armitage

UIC Review of Intellectual Property Law

Patent systems reforms have been recommended by a variety of interests, including the Federal Trade Commission and the National Academies of Science and the private sector. Although calls for radical reforms have undeniable merit, the effectiveness of the existing patent system as an incentive to investment in innovation must be left untouched in the reform process. Unwise reforms include awarding patent injunctions only sparingly and limiting patent damages to nominal amounts for inventions relating to patentable combinations made of existing components. There are, however, “three pillars” that should guide reform: (1) introduce full transparency and objectiveness into the tests for …

Biotechnology's Prescription For Patent Reform, 5 J. Marshall Rev. Intell. Prop. L. 318 (2006), Christopher M. Holman

UIC Review of Intellectual Property Law

On June 8, 2005, Congressman Lamar Smith introduced H.R. 2795, the “Patent Reform Act of 2005,” aimed at improving the quality and certainty of issued patents, simplifying the patent procurement process, harmonizing U.S. law with international practice, and reining in abusive patent enforcement practices. Congress has set the legislation aside for the time being, but will likely revisit the issue again shortly. The biotechnology industry, one of the fastest growing sectors in the United States economy, strongly opposes many of the proposed reforms. This paper considers the Congressional testimonies of the Biotechnology Industry Organization (“BIO”) and other representatives of biotechnology’s …

Suppression Of Innovation Or Collaborative Efficiencies?: An Antitrust Analysis Of A Research & Development Collaboration That Led To The Shelving Of A Promising Drug, 5 J. Marshall Rev. Intell. Prop. L. 348 (2006), Saami Zain

UIC Review of Intellectual Property Law

This article discusses antitrust issues present in research and development collaborations between competitors. In particular, it illustrates that, although often very beneficial, these collaborations may have the potential for considerable harm via suppression of innovation. The article examines a recent case involving a collaboration to develop drugs, which arguably resulted in the suppression of a promising drug.

Copyright Piracy In China, 5 J. Marshall Rev. Intell. Prop. L. 583 (2006), Ralph Oman

UIC Review of Intellectual Property Law

Copyrights play a major role in promoting economic development and creating a national identity, and they have a tremendous impact on the social and economic well-being of nations. Within the past fifteen years, China has passed a strong copyright law, upgraded enforcement, and joined the Berne Convention. However, since then, the forward momentum has subsided and piracy has grown deep roots in China. If protecting their own citizens’ rights was not important enough, the threat of international trade sanctions for having inadequate intellectual property protection may force China to reevaluate their current situation and step up international protection.

Intellectual Property Rights In The Internet Era: The New Frontier, 5 J. Marshall Rev. Intell. Prop. L. 589 (2006), Lulin Gao

UIC Review of Intellectual Property Law

With the rapid development of information and Internet technologies, how to protect intellectual property (IP) rights in the Internet era became a new frontier for IP practitioners and scholars internationally. This article highlights some important IP protection issues related to copyright, patent, trademark, and domain names, as well as the impact of technological advances on IP protection in the Internet era. The author believes that in order to solve these new emerging issues, the most important principle is keeping the balance between different sides with stakes in the IP right. Finally, international cooperation must be enhanced with more technical assistance …

Some Remarks On The Limits Of Harmonization, 5 J. Marshall Rev. Intell. Prop. L. 596 (2006), Graeme B. Dinwoodie

UIC Review of Intellectual Property Law

Some Remarks on the Limits of Harmonization

The Intellectual Property Marketplace: Past, Present And Future, 5 J. Marshall Rev. Intell. Prop. L. 605 (2006), James E. Malackowski

UIC Review of Intellectual Property Law

This article provides an overview of the evolution of the intellectual property marketplace, describes existing mechanisms by which intellectual property value is transacted, and hypothesizes future marketplace mechanisms. A discussion of intellectual property value is also presented. Specifically, analyses of value indications as evidenced by the public and private equity markets are described. Finally, two future critical issues for intellectual property practitioners relating to intellectual property value are described: class action shareholder litigation and royalty stacking.