Intellectual Property Law Commons^™

Three Years Post-Ksr: A Practitioner’S Guide To “Winning” Arguments On Obviousness And A Look At What May Lay Ahead, Katherine M. L. Hayes

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Book Review: Reviewing Part Iii Of Innovation For The 21st Century: Harnessing The Power Of Intellectual Property And Antitrust Law, Dennis D. Crouch

Faculty Publications

I have very much enjoyed reading Professor Michael Carrier's important new book on the intersection of law and innovation, and greatly appreciate his contributions to the field. In this short essay, I will focus my discussion on my sole area of expertise—patent law. Carrier takes-on the subject of patents in Part III of his book. I agree with most of what Carrier writes. To make this essay more interesting, I focus on some of our areas of apparent disagreement.

An Empirical Study Of The Role Of The Written Description Requirement In Patent Prosecution, Dennis D. Crouch

Faculty Publications

An en banc Federal Circuit is now considering whether Section 112 of the Patent Act as properly interpreted includes a written description requirement that is separate and distinct from the enablement requirement. Although the USPTO has no direct role in the infringement dispute, the government submitted an amicus curie brief arguing that a separate written description requirement is “necessary to permit the USPTO to perform its basic examination function.” However, when pressed during oral arguments the government could not point to any direct evidence supporting its contention.

This essay presents the results of a retrospective empirical study of the role …

Dynamic Federalism And Patent Law Reform, Xuan-Thao Nguyen

Articles

Patent law is federal law, and the normative approach to patent reform has been top down, looking to Congress and the Supreme Court for changes to the broken and complex patent system. The normative approach thus far has not yielded satisfactory results. This Article challenges the static approach to patent reform and embraces the dynamic-federalism approach that patent reform can be an overlapping of both national and local efforts. Patent reform at the local level is essential as locales can serve as laboratories for changes, vertically compete with national government to reform certain areas of the patent system, and become …

Boston Duck Tours V. Super Duck Tours: Duck Tours Of A Feather Can Flock Together, Cara Lewis

Journal of Business & Technology Law

No abstract provided.

Network Transparency: Seeing The Neutral Network, Adam Candeub

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Machines And Transformations: The Past, Present, And Future Patentability Of Software, Andrei Iancu, Peter Gratzinger

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Redefining "Free": A Look At Open Source Software Management, Jon Christiansen, Alfred E. Hanna, Joseph A. Herndon, John L. Hines, Jr

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Legally Correct But Technologically Off The Mark, Daniel B. Garrie, Bill Spernow

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Successfully Defending Against False Marking Claims, Steve Williams, Jane Du

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Peer To Patent: A Cure For Our Ailing Patent Examination System, Daniel R. Bestor, Eric Hamp

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Caught In The Clouds: The Web 2.0, Cloud Computing, And Privacy?, Paul Lanois

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

O’Keefe And The Wheel That Begs For Reinvention: An Exceptionalist Approach To Electronic Discovery In Criminal Actions, Jared S. Beckerman

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Patent Valuation: Aren’T We Forgetting Something? Making The Case For Claims Analysis In Patent Valuation By Proposing A Patent Valuation Method And A Patent-Specific Discount Rate Using The Capm, Malcolm T. Meeks, Charles A. Eldering

Northwestern Journal of Technology and Intellectual Property

No abstract provided.

Down With Patentese, Jed. S. Rakoff

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

"The Sole Right ... Shall Return To The Authors": Anglo-American Authors' Reversion Rights From The Statute Of Anne To Contemporary U.S. Copyright, Lionel Bently, Jane C. Ginsburg

Faculty Scholarship

The rise in the seventeenth and eighteenth centuries of a professional class of writers stimulated authors' demands for better remuneration from their writings. The increase in authors who sought to live from their work, rather than from patronage or personal fortune, likely provided at least one impulse for the author-protective provisions of the 1710 Statute of Anne. Under the regime of printing privileges that preceded the Statute of Anne, authors generally received from publisher-booksellers a one-time payment, made when the authors surrendered their manuscripts for publication. Authors whose works enjoyed particularly high demand might negotiate additional payments for new editions …

The Rebirth Of Copyright As An Opt-In System?, James Gibson

Law Faculty Publications

For most of the history of Anglo-American copyright law, copyright was an opt-in system: Authors had to jump through certain regulatory hoops if they wanted to prevent others from copying their works without consent. These threshold formalities included registering their works with a government agency, affixing a notice to published copies, depositing exemplars with a centralized library, and more. A failure to comply with the requirements usually meant a diminution in the authors’ copyright entitlement – and in some cases a wholesale forfeiture, under which the works would pass immediately into the public domain.

After some 200 years, however, U.S. …

Viacom V. Youtube: A Different View On The District Court Ruling, James Gibson

Law Faculty Publications

In an earlier essay in this series, Randy Picker discussed the recent copyright decision in Viacom v. YouTube, and in particular the court’s ruling that the Digital Millennium Copyright Act’s “safe harbor” for remote storage applies to YouTube’s online video service. I agree with Randy that the court’s interpretation of the DMCA is problematic, but I see a good argument that the outcome is correct and that the ruling should be affirmed on appeal.

Viacom v. YouTube is a hugely important case. It pits the world’s fourth-biggest media company against Internet behemoth Google, which purchased YouTube in 2006 for $1.65 …

International Issues: Which Country's Law Applies When Works Are Made Available Over The Internet, Jane C. Ginsburg

Faculty Scholarship

My topic is International Implications, a topic that would not exist but for the Internet. When access to archival materials was on a physical basis, patrons came to the archive and consulted the material on site; the material did not leave the archive, much less get sent overseas. Even digitized materials, if consulted on site, do not present the problems that arise if the archives puts this material on a website, which is accessible around the world, that ubiquity being the default condition ofthe Internet.

Let us consider some problems that might arise and which have international consequences. First of …

Surefoot Lc V. Sure Foot Corp.: A New Standard For Tenth Circuit Declaratory Judgment Jurisdiction In Intellectual Property Disputes, Or How Cardtoons Got The Boot, John M. Bunting

Oklahoma Law Review

No abstract provided.

The Invention Of Common Law Play Right, Jessica D. Litman

Articles

This Article explores playwrights' common law "play right." Since this conference celebrates the 300th birthday of the Statute of Anne, I begin in England in the 17th Century. I find no trace of a common law playwright's performance right in either the law or the customary practices surrounding 17th and 18th century English theatre. I argue that the nature and degree of royal supervision of theatre companies and performance during the period presented no occasion (and, indeed, left no opportunity) for such a right to arise. I discuss the impetus for Parliament's enactment of a performance right statute in 1833, …

Real Copyright Reform, Jessica D. Litman

Articles

A copyright system is designed to produce an ecology that nurtures the creation, dissemination, and enjoyment of works of authorship. When it works well, it encourages creators to generate new works, assists intermediaries in disseminating them widely, and supports readers, listeners, and viewers in enjoying them. If the system poses difficult entry barriers to creators, imposes demanding impediments on intermediaries, or inflicts burdensome conditions and hurdles on readers, then the system fails to achieve at least some of its purposes. The current U.S. copyright statute is flawed in all three respects. In this Article, I explore how the current copyright …

The Evolution Of Trade Secret Law And Why Courts Commit Error When They Do Not Follow The Uniform Trade Secrets Act, Sharon Sandeen

Faculty Scholarship

In the spring of 2010, the Hamline Law Review hosted a symposium to mark the thirtieth anniversary of the adoption of the Uniform Trade Secrets Act. This article was written for the symposium and provides an exhaustive and detailed account of the historical context and drafting history of the Uniform Trade Secrets Act (the UTSA).

Among other stories that it tells, the article explains that the UTSA was prompted by the “Erie/Sears/Compco squeeze.” Because of the Supreme Court’s famous decision in Erie R.R. Co. v. Tompkins in 1938, it was understood by business interests and their attorneys that the common …

Unofficial Legislative History Of The Biologics Price Competition And Innovation Act 2009, An, Erika Lietzan, Krista Hessler Carver, Jeffrey Elikan

Faculty Publications

On March 23, 2010, President Obama signed into law the Biologics Price Competition and Innovation Act of 2009 (BPCIA) which created a regulatory pathway for, and scheme for litigation of patent issues relating to, “biosimilar” biological products. This article discusses the history of the BPCIA and explains its provisions. Section I provides background and a history of the regulation of drugs and biological products in the United States. Section II describes the growing interest in biosimilar approval from the early 2000s through September 2006, when the legislative debate began in earnest. Section III describes the legislative and stakeholder process from …

Abolishing The Missing-Claim Rule For Judicial Cancellations, Ryan Vacca

Faculty Publications

Section 3 7 of the Lanham Act vests courts with the power to order the Director of the U.S. Patent and Trademark Office (PTO) to cancel trademark registrations. This power to "rectify the register" is discretionary, and since the act's enactment in 1946, courts have routinely granted cancellation requests when the trademark's invalidity was established in the trial court proceedings. However, that is not always the outcome. Some courts refuse to exercise their power to rectify the register under section 3 7 even with a proven and valid basis for cancellation.

This article examines cases where the district courts refused …

Not Only Innovation But Also Collaboration, Funding, Goodwill And Commitment: Which Role For Patent Laws In Post-Copenhagen Climate Change Action, 9 J. Marshall Rev. Intell. Prop. L. 657 (2010), Estelle Derclaye

UIC Review of Intellectual Property Law

Patent laws can do their bit to help reduce our greenhouse gas emissions. In 2009, accelerated grant procedures and reduction of fees have been put in place by among others the UK and US patent offices. Private initiatives such as the eco-patent commons to licence technology free of charge have been taken. But greening patent law is only a small part of the solution. However well-intentioned all these initiatives are, for several reasons, they may not be sufficient or even at all used. More than intellectual property-related solutions, what will be needed is non- intellectual property-related solutions such as using …

Consumer Protection In The Eco-Mark Era: A Preliminary Survey And Assessment Of Anti-Greenwashing Activity And Eco-Mark Enforcement, 9 J. Marshall Rev. Intell. Prop. L. 742 (2010), Eric L. Lane

UIC Review of Intellectual Property Law

We stand at the dawn of the Eco-mark Era—a period in which green branding, advertising environmentally friendly products and services, and touting sustainable business practices will be pervasive and profitable. However, with the rise of green branding comes the temptation of greenwashing—making false or misleading claims regarding environmentally friendly products, services or practices. Instances of greenwashing appear to be on the rise, but we are seeing more activity to combat greenwashing by public enforcement and consumer class actions. In addition, green brand owners are protecting and enforcing their eco-marks, and trademark litigation involving green brands is becoming commonplace. How is …

The Eminence Of Imminence And The Myopia Of Markets, 9 J. Marshall Rev. Intell. Prop. L. 674 (2010), Teneille R. Brown

UIC Review of Intellectual Property Law

This article questions the privileging of disaster, or imminent threat, over more distant threats to public health. In many cases, this privileging makes sense as we do not have time to evaluate the threat under traditional frameworks. But in some cases, we privilege disaster in ways that may be ethically and legally unsound. Here, I am interested in a particular type of public health threat—the negative consequences that stem from climate change. In this article, I view the climate change discussion through the lens of distributive justice. I analyze the ethical as well as legal arguments in support of encouraging …

What Does It Mean To Be Green: A Short Analysis Of Emerging Ip Issues In "Green" Marketing, 9 J. Marshall Rev. Intell. Prop. L. 774 (2010), Maureen Beacom Gorman

UIC Review of Intellectual Property Law

Green products are red hot, but defining what “green” means is difficult. Consumers are faced with an array of labels denoting products as “green,” making it difficult to determine which are truly “green” and which are “green-washed.” The Trademark Trial and Appeal Board recently determined that the term “green” is generic, meaning anything “environmentally friendly.” The FTC has been criticized for causing consumer confusion over its failure to enforce its “Green Guides” governing environmental product claims and certifications. These “Green Guides,” which do not define “green,” were first promulgated by the FTC in 1992, but have not been updated since …

The 8% Solution - Or How Good Are The Calculation Economics By The Federal Circuit In Lucent V. Microsoft?, 9 J. Marshall Rev. Intell. Prop. L. 797 (2010), W. Lesser

UIC Review of Intellectual Property Law

Lucent v. Microsoft brought to the fore again the complexity of infringement damage estimates. Differences in approaches were laid open in this case with the trial court jury settling $358 million in damages against Microsoft and the appeals court striking down the value as lacking substantial evidence. Damages were established on the “reasonable royalty” basis for a product which was neither licensed nor sold. This article contends that the appeals court took too narrow a view of economics in its analysis of the software sector. Specifically, the court seems to have applied a “perfect competition” model to a sector which …