Intellectual Property Law Commons^™

Traditional Knowledge And The Fight For The Public Domain, 5 J. Marshall Rev. Intell. Prop. L. 317 (2006), Doris E. Long

UIC Review of Intellectual Property Law

What are the challenges facing the protection of traditional knowledge internationally? Can the protection of such rights, which have traditionally existed outside the boundaries of intellectual property, be achieved in the face of current challenges to protections epitomized by such emerging international movements as enhanced access to information and culture as a human right? This article examines some of the emerging issues in this hotly contested area and suggests that such movements, which are not adverse to intellectual property and traditional knowledge rights, should be used to craft a new method for addressing the issue of traditional knowledge protection internationally.

Patent Cooperation Treaty – Implementation V. U.S. Law, 5 J. Marshall Rev. Intell. Prop. L. 641 (2006), Richard Lazarus

UIC Review of Intellectual Property Law

What ways can an individual attack the enforceability of a patent that relies on the benefit of an earlier filed Patent Cooperation Treaty application (“PCT”)? This article highlights the top five PCT issues that an attorney should look for to successfully defend a client against infringement. The strategies discussed include: (1) searching for new matter; (2) searching for errors in inventorship; (3) examining an international filing date; (4) checking for withdrawal of an international application; and (5) examining estoppel arguments in international applications.

Recent Developments In Patent Law, 5 J. Marshall Rev. Intell. Prop. L. 630 (2006), Bradley C. Wright

UIC Review of Intellectual Property Law

Over the past year, the United States patent law has developed significantly. Numerous cases were decided, shaping the future of patent law. This article tracks the development of patent law over the past year by analyzing important court decisions. These decisions affect various aspects of patent law, including the patentability of subject matter, the validity of patents, and the patent procurement process. While the specific impact of each decision varies, the combination of the decisions resulted in noteworthy changes to patent law in the United States.

The Impact Of The New World Order On Economic Development: The Role Of The Intellectual Property Rights System, 6 J. Marshall Rev. Intell. Prop. L. 1 (2006), Joseph Straus

UIC Review of Intellectual Property Law

This article provides a close look at the development of intellectual property protection contrasted with the development of globalization. Specifically, the agreements forming the legal framework of the World Trade Organization are discussed and their impact on the economic development of developing countries examined. A closer look is given to China and India, where only recently intellectual property protection standards complying with mandatory rules of the TRIPS Agreement have been introduced, and where the most remarkable economic, scientific, and technological development can be observed. This article emphasizes the necessity of all members of the World Trade Organization to comply with …

The Wipo "Internet Treaties" The United States As The Driver: The United States As The Main Source Of Obstruction — As Seen By An Anti-Revolutionary Central European, 6 J. Marshall Rev. Intell. Prop. L. 17 (2006), Mihály Ficsor

UIC Review of Intellectual Property Law

The copyright policy of the United States developed from initial isolationism, through the 1891 Chase Act, various bilateral and inter-American agreements and the establishment of the Universal Copyright Convention, to active participation in the international copyright cooperation. This development was completed by the United States’ accession to the Berne Convention in 1988. Since then, the United States has played a leading role in this field, which was manifested both during the negotiations of the 1994 TRIPS Agreement and the preparatory work of the two 1996 WIPO “Internet Treaties”, the WCT and the WPPT. These WIPO Treaties, the preparation and adoption …

Recent Developments In Copyright Law: Selected U.S. Supreme Court, Court Of Appeals, And District Court Opinions Between February 1, 2005 And May 1, 2006, 6 J. Marshall Rev. Intell. Prop. L. 40 (2006), Tyler T. Ochoa

UIC Review of Intellectual Property Law

This article highlights nine selected U.S. copyright law decisions handed down between February 1, 2005 and May 1, 2006. Two of the decisions concern peer-to-peer file sharing, including the U.S. Supreme Court’s landmark decision in MGM v. Grokster. One of the decisions questions the applicability of the idea/expression dichotomy to works of visual art. Two of the decisions discuss ownership of the renewal rights in a work under the 1909 Act when the author is deceased. One of the decisions interprets the requirement that an author register his or her work before filing an infringement action. Two of the decisions …

The Cache Cow: Can Caching And Copyright Co-Exist?, 6 J. Marshall Rev. Intell. Prop. L. 101 (2006), Nicole Bashor

UIC Review of Intellectual Property Law

Copyright protection in a digital environment is difficult. Protection is made more difficult because of the scope of the Internet, uncertainty of a governing Internet agency, and copyright enforcement problems. Copyright protection is further complicated because search engines utilize a process involving copying web sites and displaying cached links to web sites without the web site owner's express permission. By analyzing the intersection of copyright law and the search engine caching process, it is clear that search engines are on dangerous ground and possibly violate the copyrights of web site owners. Accordingly, a solution is proposed that compensates web site …

Why Bother Calling Patents Property? The Government's Path To License Any Patent And Maybe Pay For It, 6 J. Marshall Rev. Intell. Prop. L. 151 (2006), Bradley M. Taub

UIC Review of Intellectual Property Law

In 2006 the Federal Circuit in Zoltek Corp. v. United States denied a patent owner the basic protections of the Constitution. In 2005 the United States Supreme Court in Kelo v. City of New London effectively wrote the Public Use Clause out of the Fifth Amendment. This comment focuses on the constitutional and statutory rights of patent owners in light of Zoltek, Kelo, and 28 U.S.C. § 1498. After Zoltek and Kelo several questions remain, which this comment asks and analyzes. First, can the Federal Government unilaterally take a patent owner’s patent reasoning the taking benefits the economy, public safety, …

Recent Developments In Trade Secrets Law, 6 J. Marshall Rev. Intell. Prop. L. 59 (2006), R. Mark Halligan

UIC Review of Intellectual Property Law

As companies are increasingly trying to protect information by designating it as a trade secret, courts are increasingly trying to resolve litigation disputes relating to trade secrets misappropriation issues. Trends have emerged from these court cases, further defining the limits of trade secrets protection and attempting to carve out uniform rules concerning such protection. This article highlights some of the most interesting and recent developments in Trade Secrets Law.

The Patent Reform Act’S Proposed First-To-File Standard: Needed Reform Or Constitutional Blunder?, 6 J. Marshall Rev. Intell. Prop. L. 129 (2006), Karen E. Simon

UIC Review of Intellectual Property Law

The proposed Patent Reform Act of 2005 would bring U.S. patent law into harmony with most other countries by adopting a first-to-file standard for determining patent rights. This comment questions whether overturning the first-to-invent standardand two hundred years of settled law is permissible under the Patent Clause of the U.S. Constitution. The comment concludes that the Patent Reform Act of 2005, as proposed, violates the Constitution, and supports its argument by placing intocontext of the founding fathers fear of extending government monopolies. The comment proposes that Congress focus on procedural reform, and not change thefundamental standard for awarding patent rights.

“One For All: The Problem Of Uniformity Cost In Intellectual Property Law.” American University Law Review 55, No.4 (May 2006): 845-900., Michael W. Carroll

American University Law Review

Intellectual property law protects the owner of each patented invention or copyrighted work of authorship with a largely uniform set of exclusive rights. In the modern context, it is clear that innovators' needs for intellectual property protection vary substantially across industries and among types of innovation. Applying a socially costly, uniform solution to problems of differing magnitudes means that the law necessarily imposes uniformity cost by underprotecting those who invest in certain costly innovations and overprotecting those with low innovation costs or access to alternative appropriability mechanisms. This Article argues that reducing uniformity cost is the central problem for intellectual …

From Pirates To Partners (Episode Ii): Protecting Intellectual Property In Post-Wto China, Peter K. Yu

American University Law Review

In From Pirates to Partners: Protecting Intellectual Property in China in the Twenty-First Century, I criticized the ineffectiveness and short-sightedness of the U.S.-China intellectual property policy. As I argued, the approach taken by the administration in the 1980s and early 1990s had created a cycle of futility in which China and the United States repeatedly threatened each other with trade wars only to back down in the eleventh hour with a compromise that did not provide sustainable improvements in intellectual property protection. Since I wrote that article five years ago, China has joined the WTO and undertook a complete overhaul …

Patent Donations And Tax Policy, Xuan-Thao Nguyen, Jeffrey A. Maine

Faculty Publications

To achieve the policy goals of ultimate innovation, the government should provide incentives to encourage the patentees to donate, rather than abandon, their "orphan" patents to universities, hospitals, and other nonprofit organizations with research and development facilities that can properly exploit the patents. The authors advocate for the implementation of incentives that would encourage donors to surrender their monopolistic ownership of patents for the benefit of charitable organizations and, in tum, the development and growth of society.

Taxing Trademarks And Domain Names, Xuan-Thao Nguyen, Jeffrey A. Maine

Faculty Publications

With the arrival of global electronic commerce transactions on the Internet, new forms of intellectual property rights, such as Internet domain names, have emerged. Today, Internet domain names are some companies' most valuable assets. Yet law professors, attorneys, and judges struggle with the legal nature of domain names, which is far from settled. Questions drawing recent attention include: How should domain names be valued? Can domain names be used as collateral in secured transactions, and how does one perfect a security interest in domain names? What will happen to domain names in bankruptcy?

Video Game Music: Where It Came From, How It Is Being Used Today, And Where It Is Heading Tomorrow, Michael Cerrati

Vanderbilt Journal of Entertainment & Technology Law

This article addresses the many facets of the video game industry and the exceptional role that music has played and continues to play in this expanding industry. Part I tracks the history of music's role as video games developed over the years. Part II discusses the manner in which music is obtained for use in video games and the contractual setting in which this takes place. Part III comments on the current state of the video game industry, exploring ways to shift the paradigm from one that is publicity-driven, to one that recognizes the importance of music. The final section, …

All Mixed Up: Bridgeport Music V. Dimension Films And De Minimis Digital Sampling, Jennifer R. R. Mueller

Indiana Law Journal

No abstract provided.

Metaphor, Objects, And Commodities, George H. Taylor, Michael J. Madison

Cleveland State Law Review

As its two main Parts will evidence, this Comment remains the product of two distinct if overlapping voices. Part II returns to the conceptual origins of Radin's theory in her general critique of objectification and commodification. It asks whether a more positive concept of objectification can be recovered that is distinguishable from reification, the latter seeming to be the more appropriate locus of Radin's criticism. Part III's response to Radin is similar, but it tries to exemplify both our appreciation of and our differences from her work through more detailed analysis of intellectual property law and theory.

The Experimental Use Exception To Patent Infringement: Do Universities Deserve Special Treatment?, Elizabeth A. Rowe

UF Law Faculty Publications

The experimental use exception is a common law exception to the patent-holder's exclusive right of use. It permits the use of another's patented device when such use is for philosophical inquiry, curiosity, or amusement. It has recently come under attack by many who consider it too narrow. They fear that the courts' "narrowing" of the experimental use exception will stifle research and innovation. Much of the discontent with the doctrine has been spurred by a relatively recent Federal Circuit opinion, Madey v. Duke University, which makes clear that a research university does not receive immunity under the experimental use …

The Patent Cooperation Treaty: At The Center Of The International Patent System, Jay Erstling

Faculty Scholarship

In view of the fact that the PCT is composed of almost 130 countries and that more than 100 national and regional patent offices, as well as WIPO itself, perform PCT functions, it is remarkable that the system operates so smoothly and continues to gain momentum. Perhaps the system’s greatest strength comes from the immense diversity of legal, linguistic, and national cultures that constitute the PCT. While the system has served to harmonize divergent practices, it has also been obliged to accommodate to the sometimes inflexible peculiarities of national law and procedure. The PCT’s ability to strike a balance between …

Copyright And Trademark Legal Research, Terrance K. Manion, Colleen C. Williams

Faculty Publications By Year

No abstract provided.

Indigenous Self-Determination And Research On Human Genetic Material: A Consideration Of The Relevance Of Debates On Patents And Informed Consent, And The Political Demands On Researchers, Constance Macintosh

Articles, Book Chapters, & Popular Press

Genetic research involving indigenous populations provokes many legal, ethical and cultural issues. Arguably, of these issues, two dominate the literature. The first is whether human genetic materials are or ought to be patentable, which is often argued against on the basis that such patents offend human dignity generally and are culturally offensive to many indigenous peoples. The second is whether researchers must obtain informed consent from representatives of indigenous groups as a whole before attempting to obtain consent for participation from individual members of that group. I argue that there is limited benefit in continuing to debate the patentability of …

Unravelling The Myth Around Open Source Licences - An Analysis From A Dutch And European Law Perspective, Lucie Guibault, Ot Van Daalen

Articles, Book Chapters, & Popular Press

Open source software licences are based on two fundamental principles: the possibility for users to use the software for any purpose and the possibility to modify and redistribute it without prior authorisation from the initial developer. Some open source software licences, like the General Public Licence (GPL), also impose a corollary obligation on the licensee: to make the source code available to other developers. The idea behind this form of licensing is that when programmers can read, redistribute and modify the source code for a piece of software, the software evolves. A number of legal challenges need to be addressed …

Inducement As Contributory Copyright Infringement: Metro-Goldwyn-Mayer Studios Inc. V. Grokster, Ltd., Laura A. Heymann

Faculty Publications

No abstract provided.

Paying For Delay: Pharmaceutical Patent Settlement As A Regulatory Design Problem, C. Scott Hemphill

Center for Contract and Economic Organization

Over the past decade, drug makers have settled patent litigation by making large payments to potential rivals who, in turn, abandon suits that (if successful) would increase competition. Because such "pay-for-delay" settlements postpone the possibility of competitive entry, they have attracted the attention of antitrust enforcement authorities, courts, and commentators. Pay-for-delay settlements not only constitute a problem of immense practical importance in antitrust enforcement, but also pose a general dilemma about the proper balance between innovation and consumer access.

This Article examines the pay-for-delay dilemma as a problem in regulatory design. A full analysis of the relevant industry-specific regulatory statute, …

Academic Discourse And Proprietary Rights: Putting Patents In Their Proper Place, Margo A. Bagley

Faculty Articles

This Article provides a fresh perspective on the Bayh-Dole debate by focusing on the impact of patent novelty rules on academic discourse. The Article proposes that to begin to reverse an observed deterioration in disclosure norms, flexibilities must be built into the patent system so that patents can be facilitators of the academic knowledge dissemination enterprise. In particular, the Article advocates creation of an opt-in extended grace period that would provide more time for academic researchers to publish and present early-stage research before having to file a patent application. Such an extension, coupled with early application publication, would both address …

Beyond Abstraction: The Law And Economics Of Copyright Scope And Doctrinal Efficiency, Matthew Sag

Faculty Articles

Uncertainty as to the optimum extent of protection generally limits the capacity of law and economics to translate economic theory into coherent doctrinal recommendations in the realm of copyright. This Article explores the relationship between copyright scope, doctrinal efficiency, and welfare from a theoretical perspective to develop a framework for evaluating specific doctrinal recommendations in copyright law.

The usefulness of applying this framework in either rejecting or improving doctrinal recommendations is illustrated with reference to the predominant law and economics theories of fair use. The metric-driven analysis adopted in this Article demonstrates the general robustness of the market-failure approach to …

Regulating Access To Databases Through Antitrust Law, Daryl Lim

Faculty Scholarly Works

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 …

The Story Of Diamond V. Chakrabarty: Technological Change And The Subject Matter Boundaries Of The Patent System, Rebecca S. Eisenberg

Book Chapters

Technological change often exposes unstated assumptions lurking in the law and makes them problematic, and patent law is no exception. Although the core mission of the patent system is to promote technological progress, path-breaking new technologies have not always been easily assimilated within its boundaries. The first wave of patent applications on advances in biotechnology in the 1970s illustrate some of the difficulties. Before that time, living organisms had generally been assumed to fall outside the range of patent-eligible subject matter under a timehonored exclusion for "products of nature." But genetically engineered organisms, although derived from naturally occurring life forms, …

The Story Of Sony V. Universal Studios: Mary Poppins Meets The Boston Strangler., Jessica Litman

Book Chapters

Sony v. Universal Studios may be the most famous of all copyright cases. People who know nothing about copyright know that the Sony-Betamax case held that home videotaping of television programs is fair use. Paradoxically, although the Supreme Court granted certiorari in the case to decide whether the copyright law permitted consumers to engage in private home copying of television programs, the majority ended up crafting its analysis to avoid answering that question definitively. Instead, it ruled that even if consumers sometimes violated the copyright law when they taped television programs off the air, that violation did not make the …

Harnessing And Sharing The Benefits Of State-Sponsored Research: Intellectual Property Rights And Data Sharing In California's Stem Cell Initiative, Rebecca S. Eisenberg, Arti K. Rai

Articles

This Article discusses data sharing in California's stem cell initiative against the background of other data sharing efforts and in light of the competing interests that CIRM is directed to balance. We begin by considering how IP law affects data sharing. We then assess the strategic considerations that guide the IP and data policies and strategies of federal, state, and private research sponsors. With this background, we discuss four specific sets of issues that public sponsors of data-rich research, including CIRM, are likely to confront: (1) how to motivate researchers to contribute data; (2) who should have access to the …