Intellectual Property Law Commons^™

A Two-Front Assault On The Stem Cell Patents, 6 J. Marshall Rev. Intell. Prop. L. 501 (2007), Dillon Beardsley

UIC Review of Intellectual Property Law

The recent establishment of human embryonic stem cell lines has inspired a new revolution in therapeutic treatments and cures for injuries or disease. Individual states have begun to circumvent the lack of federal funding by independently raising monetary support for the research. The patentee, The Wisconsin Alumni Research Foundation, has reminded those hoping to benefit from the state funding that the Foundation will require royalties for the commercial use of its patented technology. The loss of state taxpayer money to the patent holder ignited a challenge on the patents themselves. Interest groups requested a reexamination of the stem cell patents …

Will Youtube Sail Into The Dmca's Safe Harbor Or Sink For Internet Piracy?, 6 J. Marshall Rev. Intell. Prop. L. 550 (2007), Michael Driscoll

UIC Review of Intellectual Property Law

Is YouTube, the popular video sharing website, a new revolution in information sharing or a profitable clearing-house for unauthorized distribution of copyrighted material? YouTube’s critics claim that it falls within the latter category, in line with Napster and Grokster. This comment, however, determines that YouTube is fundamentally different from past infringers in that it complies with statutory provisions concerning the removal of copyrighted materials. Furthermore, YouTube’s central server architecture distinguishes it from peer-to-peer file sharing websites. This comment concludes that any comparison to Napster or Grokster issuperficial, and overlooks the potential benefits of YouTube to copyright

A Foreword To: A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 590 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court adhered to its prior views that a constitutional standard applied in determining whether an invention is “obvious.” Further, the Federal Circuit’s teaching-suggestion-motivation (“TSM”) test, which stipulated that an invention is not obvious unless some teaching, suggestion, or motivation to combine the elements of the invention exists, cannot replace or limit the constitutional standard. KSR eliminated the Federal Circuit’s requirement, holding that the TSM test is only one way to find an invention obvious and that a common sense approach should be used. KSR also noted that all persons skilled in …

A Panel Discussion On Obviousness In Patent Litigation: Ksr International V. Teleflex, 6 J. Marshall Rev. Intell. Prop. L. 595 (2007), William T. Mcgrath, Edward D. Manzo, James F. Holderman, Matthew F. Kennelly, Meredith Martin Addy, Patrick G. Burns, Bradford P. Lyerla, George P. Mcandrews, David L. Schwartz, Constantine L. Trela Jr.

UIC Review of Intellectual Property Law

In KSR International Co. v. Teleflex Inc., the Supreme Court considered what test applies to determine whether an invention is “obvious.” The Court ruled that the teaching-suggestion- motivation (“TSM”) test, developed over the years by the Federal Circuit to defend against hindsight reconstruction, is only one method a court or patent examiner may use when addressing obviousness. The Court’s holding overturned Federal Circuit precedent, which required a finding of non-obviousness unless a teaching, suggestion, or motivation to combine was established. The panel discussion brings together leadings jurists; former law clerks of the Supreme Court, the Federal Circuit, and other courts; …

Leveling The Patent Playing Field, 6 J. Marshall Rev. Intell. Prop. L. 636 (2007), Peter N. Detkin

UIC Review of Intellectual Property Law

While large companies continue to thrive on pervasive technological advancements, small inventors have been limited by their inability to exploit their patents. Patent portfolio licensing created a pioneering way to increase the utility of patents; however, in practice this business model has typically favored powerful players in the technology industry. A new market has emerged based on innovative business models which favor small inventors. This market seeks to aggregate and distribute patents to companies that infringe on intellectual property or that want to draw on it as a source. By matching patent owners with patent users, this market may enable …

Avoiding The "Fifth Beatle" Syndrome: Practical Solutions To Minimizing Joint Inventorship Exposure, 6 J. Marshall Rev. Intell. Prop. L. 645 (2007), Andrew B. Dzeguze

UIC Review of Intellectual Property Law

Inventorship disputes appear to be proliferating. This is not surprising in light of the 1993 relaxation of the standards for joint inventorship. Although the vast majority of claims fail, the handful of cases indicating successful inventorship claims can be quite lucrative, which makes it reasonable to expect the upward trend in number of cases to continue. Moreover, the lack of clarity on certain key aspects of inventorship law is apt to encourage further claims. This article begins, as a cautionary tale of sorts: an analysis of the unclear aspects of inventorship law. This includes the as yet unresolved variations in …

Patent Reform, Injunctions, And Equitable Principles: A Triangle Of Changes For The Future, 6 J. Marshall Rev. Intell. Prop. L. 671 (2007), Matthew J. May

UIC Review of Intellectual Property Law

In eBay v. MercExchange, the Supreme Court held the Federal Circuit could no longer utilize their long-standing “general rule” that an injunction should follow the finding of patent infringement. The Supreme Court held that courts should utilize a set of rules known as the four-factor test, which utilizes traditional principals of equity. Concurrently, Congress has been debating patent reform with one of the topics being the use of injunctive relief as a remedy for patent infringement. These two changes could potentially have a significant effect on the technological and economic landscape of patents in the future. It now may be …

What The Pct Can Learn From Two African Systems, 6 J. Marshall Rev. Intell. Prop. L. 693 (2007), Zion H. Park

UIC Review of Intellectual Property Law

The purpose and goal of patent law is to help society by encouraging innovation. While the Patent Cooperation Treaty (“PCT”) has made international patent procurement easier and more accessible, the current system is still plagued with redundancies and inefficiencies. These flaws are barriers to patent offices and individual patentees, hindering innovation and the growth of developing nations. Ultimately, these problems are hindrance to society, contradicting the goal of patent law. This comment compares the PCT to two similar but less prominent African regional patent systems: African Regional Industrial Property Organization (“ARIPO”) and African Industrial Property Convention (“OAPI”). ARIPO and OAPI …

Injunctions In Patent Cases After Ebay, 7 J. Marshall Rev. Intell. Prop. L. 44 (2007), Edward D. Manzo

UIC Review of Intellectual Property Law

The United States Constitution gives Congress the power to grant to inventors exclusive rights to their inventions. Accordingly, 35 U.S.C. § 154(a) states that every patent grants to the patentee exclusive rights to make and use their inventions, and 35 U.S.C. § 283 provides that a court may grant injunctions in accordance with the principles of equity. The Federal Circuit developed a general standard that a permanent injunction should issue, except in extraordinary standards, after a patent is judicially declared valid. However, in May 2006, the Supreme Court overruled that standard in eBay Inc. v. MercExchange, L.L.C., declaring that the …

Painstaking Semantics: Selecting Website Trade Dress Elements To Survive A Copyright Preemption Challenge, 7 J. Marshall Rev. Intell. Prop. L. 97 (2007), J. Scott Anderson

UIC Review of Intellectual Property Law

The intersection between trade dress law and copyright law must be understood when seeking trade dress protection for elements that may fall within the subject matter of copyright. The technological elements that create the look and feel of a website may include both trade dress elements and copyrightable works. Website owners are beginning to rely on the protections of trade dress law instead of or in addition to copyright law when the look and feel of a website is imitated by a competitor. Asserting trade dress protection for website look and feel requires careful pleading and will provoke a variety …

The Preserve Access To Affordable Generics Act: Will Congress's Response To Reverse Payment Patent Settlements Enhance Competition In The Pharmaceutical Market?, 7 J. Marshall Rev. Intell. Prop. L. 150 (2007), Reza Bagherian

UIC Review of Intellectual Property Law

In response to the Supreme Court’s failure to grant writ of certiorari to Federal Trade Commission v. Schering-Plough Corp., Congress proposed the Preserve Access to Affordable Generics Act to once again amend the Hatch-Waxman Act of 1984. Traditionally, the courts have used two antitrust standards, the rule of reason and the per se illegal rule, to determine whether a reverse payment patent settlement restrains trade. In Schering-Plough, the Eleventh Circuit articulated a third standard and held the reverse payment settlements between a pioneer drug company and two generic drug companies valid. This article proposes that traditional analysis of the rule …

Step-Plus-Function: Just What Have We Stepped Into?, 7 J. Marshall Rev. Intell. Prop. L. 117 (2007), Paul R. Kitch

UIC Review of Intellectual Property Law

While most attorneys have heard of means-plus-function, most have not heard of or given much thought to its sibling, step-plus-function. Both claims arise under the same section of the patent laws, namely 35 U.S.C. § 112, ¶ 6. While means-plus-function limitations are directed to structural limitations and most often appear in apparatus claims, step-plus-function limitations are directed to steps and most often appear in method claims. Means-plus-function limitations generally arise when the patentee chooses to recite a “means for” performing a specified or recited function rather than reciting the structure or material that performs that function. Step-plus-function limitations, on the …

Yesterday's Technology, Tomorrow: How The Government's Treatment Of Intellectual Property Prevents Soldiers From Receiving The Best Tools To Complete Their Mission, 7 J. Marshall Rev. Intell. Prop. L. 171 (2007), Daniel Larson

UIC Review of Intellectual Property Law

The Department of Defense is currently entrenched in a procurement system that does not respect the intellectual property of its contractors. This, in turn, has led to research and development firms’ increasing reluctance to contract with the Department of Defense. As a result of this reluctance, the United States has increasingly relied upon weapons systems that, in many cases, have not significantly evolved since the Vietnam War. In order to revive the United States’ flagging military technology sector Congress should look to 28 U.S.C. § 1498 and provisions of the Bayh-Dole Act in order to encourage the private sector’s creation …

The Crossroads Of Patentability & Validity: Why Resolving Congressional Intent Will Not Fix Functional Claims, 7 J. Marshall Rev. Intell. Prop. L. 218 (2007), Nathaniel V. Riley

UIC Review of Intellectual Property Law

Functional claims have caused many headaches for academics, judges and practitioners who have struggled to define precisely what constitutes “functional” claim language and to determine the proper scope afforded to broad means-plus-function claim elements. The debate between academics and judges regarding functional claim interpretation has typically focused on Congressional intent behind the statute, specifically whether 35 U.S.C. § 112, ¶ 6 was intended solely as a claim interpretation tool or only as means for narrowing functional claims during an infringement analysis. The Federal Circuit famously adopted a hybrid approach in In re Donaldson, but since then several authors have levied …

Antitrust Issues In The Settlement Of Patent Disputes, Part Iii, Thomas B. Leary

Seattle University Law Review

Once again, I will address the issue of litigation settlements between companies that hold patents on pharmaceutical products (sometimes "pioneers") and would-be generic entrants ("generics") who challenge the validity of the patent and/or a claim of infringement. This discussion will focus on the Tamoxifen opinion, with passing reference to other decisions. Obviously, reasonable people can disagree on these issues, but I still believe the Commission's approach in Schering was correct.

Secrecy And Access In An Innovation Intensive Economy: Reordering Information Privileges In Environmental, Health, And Safety Law, Mary L. Lyndon

University of Colorado Law Review

This article examines the law concerned with access to information that is commercially valuable when it is kept secret but is also essential to environmental, health, and safety (EHS) risk evaluation. EHS law stimulates sustainable economic activity, including new technologies, and thus complements intellectual property law. Access to EHS information is essential to risk management, but current disclosure obligations are unclear, as the law is a patchwork of familiar but ill-fitting concepts and entitlements. The article discusses the current law that affects disclosure, taking into account recent changes in the technological and economic landscape. It also describes the contrasting uses …

The Patent Office Is Promoting Shocking New Tax Loopholes—Should The Empire Strike Back?, William A. Drennan

Oklahoma Law Review

No abstract provided.

Mashed Up Videos And Broken Down Copyright: Changing Copyright To Promote The First Amendment Values Of Transformative Video, Andrew S. Long

Oklahoma Law Review

No abstract provided.

Copyright's Empire: Why The Law Matters, Alina Ng

Journal Articles

Previous intellectual property literature demands a balance between incentives to produce for the creator of a work and access to information, knowledge, and content by the users. However, law and economics jurisprudence does not provide compelling arguments to support the notion that the copyright monopoly is the most efficient way to maximize public welfare by promoting the works of authors. The social cost from expansion of private rights is nonexistent because market structures change as technologies develop, providing society with increased accessibility to creative works. Accordingly, copyright laws need to expand as technology develops in order to realize a fair …

The Teach Act: Recognizing Its Challenges And Overcoming Its Limitations, Oren R. Griffin, Stephana I. Colbert

Articles, Chapters in Books and Other Contributions to Scholarly Works

Technological advancements centered on the Internet, distance education, and digitally transmitted information have created tremendous opportunities for educational institutions. Congress enacted the Technology, Education, and Copyright Harmonization Act (TEACH Act) to exploit these opportunities and provide educators with an important tool to take advantage of the information super-highway. While the Congressional intent of the Act has merit, its provisions arguably create troubling obligations and potential liability for colleges and universities. This article discusses challenges presented by the TEACH Act and proposes modifications intended to address some of the most troubling aspects of the Act.

Why The Customer Isn’T Always Right: Producer-Based Limits On Rights Accretion In Trademark, Rebecca Tushnet

Georgetown Law Faculty Publications and Other Works

In this article the author responds to James Gibson’s article Risk Aversion and Rights Accretion in Intellectual Property Law, which offers valuable insights into the extra-judicial dynamics that have contributed to the seemingly unending expansion of copyright and trademark rights over the past few decades. Her response focuses on the trademark side of that expansion. The theoretical basis for granting trademark rights is that, if consumers perceive that a mark or other symbol indicates that a single source is responsible for a product or service—whether through physical production, licensing, sponsorship, or other approval—then the law should give effect to …

Saving Trade Secret Disclosures On The Internet Through Sequential Preservation, Elizabeth A. Rowe

UF Law Faculty Publications

When an employee discloses an employer's trade secrets to the public over the Internet, does our current trade secret framework appropriately address the consequences of that disclosure? What ought to be the rule that governs whether the trade secret owner has lost not only the protection status for the secret, but also any remedies against use by third parties? Should the ease with which the Internet permits instant and mass disclosure of secrets be taken into consideration in assessing the fairness of a rule that calls for immediate loss of the trade secret upon disclosure? Given that trade secret law …

Introducing A Takedown For Trade Secrets On The Internet, Elizabeth A. Rowe

UF Law Faculty Publications

This Article explores, for the first time, an existing void in trade-secret law. When a trade-secret owner discovers that its trade secrets have been posted on the Internet, there is currently no legislative mechanism by which the owner can request that the information be taken down. The only remedy to effectuate removal of the material is to obtain a court order, usually either a temporary restraining order or a preliminary injunction. When a trade secret appears on the Internet, the owner often loses the ability to continue to claim it as a trade secret and to prevent others from using …

Copyright In An Era Of Information Overload: Toward The Privileging Of Categorizers, Frank Pasquale

Vanderbilt Law Review

What to read? or watch? or listen to? These are hard questions, not because of any scarcity of expression, but rather because of its abundance. Over 100,000 books are published in the United States each year, thousands of movies and CDs are released, and the amount of textual, musical, and visual works on the internet continues to rise exponentially. Whose work can we trust? And who knows what of it will rank among the best that has been thought and said-or even provide a few moments levity?

Admittedly, a bulging bookshelf or surfeit of films prompts an existential crisis in …

Lessons From The Trademark Use Debate, Mark D. Janis, Graeme B. Dinwoodie

Articles by Maurer Faculty

In their response to our article Confusion Over Use: Contextualism in Trademark Law, Professors Dogan and Lemley discard more all-encompassing versions of the trademark use requirement. Instead, they seek to delineate and defend a "more surgical form" of trademark use doctrine. In this reply, we demonstrate that the language of the Lanham Act does not impose a trademark use requirement even when that requirement is defined "surgically" and sections 32 and 43(a) are read "fluidly," as Dogan and Lemley suggest. Moreover, their interpretation still renders section 33(b)(4) redundant and unduly limits appropriate common law development of trademark law. We also …

Confusion Over Use: Contextualism In Trademark Law, Mark D. Janis, Graeme B. Dinwoodie

Articles by Maurer Faculty

This paper tackles an intellectual property theory that many scholars regard as fundamental to future policy debates over the scope of trademark protection: the trademark use theory. We argue that trademark use theory is flawed and should be rejected. The adoption of trademark use theory has immediate practical implications for disputes about the use of trademarks in online advertising, merchandising, and product design, and has long-term consequences for other trademark generally. We critique the theory both descriptively and prescriptively. We argue that trademark use theory over-extends the search costs rationale for the trademark system, and that it unhelpfully elevates formalism …

Technological Change And The Design Of Plant Variety Protection Regimes, Mark D. Janis, Stephen Smith

Articles by Maurer Faculty

No abstract provided.

Propertizing Thought, Kevin Emerson Collins

Articles by Maurer Faculty

No abstract provided.

Constructive Nonvolition In Patent Law And The Problem Of Insufficient Thought Control, Kevin Emerson Collins

Articles by Maurer Faculty

No abstract provided.

The Right Of Publicity: A Comparative Perspective, Marshall Leaffer

Articles by Maurer Faculty

No abstract provided.