Intellectual Property Law Commons^™

A New Framework For Assessing Clinical Data Transparency Initiatives, Erika Lietzan

Faculty Publications

Biopharmaceutical companies submit vast amounts of clinical data and analysis to support approval of their medicines, expecting the information to be kept confidential, as has been the practice of regulators around the world for decades. Over the last ten years, however, pressure has been mounting for regulators or industry to release this information. Legal scholars have generally taken the view that no relevant doctrines or bodies of law preclude the release of this material and that public policy considerations compel its release. This article argues that the scholarship to date has overlooked key considerations: the special issues presented by operation …

Crowdfunding's Impact On Start-Up Ip Strategy, Sean M. O'Connor

Articles

This Paper proceeds in Part I by reviewing the crowdfunding landscape and its potential benefits for start-ups, especially with regard to IP strategies. Part II examines the provisions of the JOBS Act and argues that the disclosure requirements of the CROWDFUND Act title will make the latter less attractive than other start-up financing options and may negatively affect start-ups’ IP strategies, in part by risking the disclosure of enabling aspects of patentable inventions.

Part III explores issues arising from the widespread involvement of many potentially unsophisticated investors who have no connection to the start-up. This contrasts with current unsophisticated investors …

Journalists, Social Media And Copyright: Demystifing Fair Use In The Emergent Digital Environment, Patricia Aufderheide

Journal of Business & Technology Law

No abstract provided.

Intellectual Property Issues In The Network Cloud: Virtual Models And Digital Three-Dimensional Printers, Darrell G. Mottley

Journal of Business & Technology Law

No abstract provided.

Remade In China: What Does Recycling Tell Us About The Chinese Patent System?, 82 Umkc L. Rev. 887 (2014), Benjamin Liu

UIC Law Open Access Faculty Scholarship

What can we expect of China's patent law during the tenure of President Xi Jinping? This article proffers a partial answer to this broad question through the close reading of patent allegations against Chinese refurbishers and recyclers. Although the doctrinal issues presented are specific, these disputes occupy a policy space where competing goals of development tear a slit in the glossy exterior of the “Chinese Dream” meme that comes to represent Xi's administration, a slit through which we may gain some insight into the direction of IP development in China.

In the process of domesticating a legal regime originated from …

Standard Essential Patents, Trolls, And The Smartphone Wars: Triangulating The End Game, 119 Penn St. L. Rev. 1 (2014), Daryl Lim

UIC Law Open Access Faculty Scholarship

Few legal issues in recent years have captured the public's attention more powerfully than litigation over standard essential patents (“SEPs”). This Article explains how SEP litigation overlaps with two other major centers of patent litigation--litigation involving smartphones and patent assertion entities (“PAEs”). It observes that attempting to pre-empt patent hold-ups by imposing blanket ex ante disclosure obligations and royalty caps on standard setting organizations (“SSOs”) is misdirected and counterproductive. Instead, the solution lies in clear and balanced rules to determine “fair, reasonable and non-discriminatory” (FRAND) royalties and injunctive relief. This solution will help parties make more realistic assessments of their …

Patent Markets: An Opportunity For Technology Diffusion And Frand Licensing?, Stéphanie Chuffart-Finsterwald

Marquette Intellectual Property Law Review

None.

King Tut And Tahrir Square: The Egyptian Revolution Of 2011 And The Advantage Of Viewing Cultural Heritage Destruction Through A Right To Culture Lens, Zoe Niesel

Faculty Articles

No abstract provided.

The Need To Reform In Pharmaceutical Protection: The Inapplicability Of The Patent System To The Pharmaceutical Industry And The Recommendation Of A Shift Towards Regulatory Exclusivities, Amanda Fachler

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Unreasonable Access: Disguised Issue Advocacy And The First Amendment Status Of Broadcasters, Kerry L. Monroe

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

The Replicator And The First Amendment, Kyle Langvardt

Fordham Intellectual Property, Media and Entertainment Law Journal

As 3D printing technology improves, the theoretical endpoint comes into view: a machine that, like the “replicators” of Star Trek, can produce anything the user asks for out of thin air from a digital blueprint. Real-life technology may never reach that endpoint, but our progress toward it has accelerated sharply over the past few years—sharply enough, indeed, for legal scholars to weigh in on the phenomenon’s disruptive potential in areas ranging from intellectual property to gun rights. This Article is concerned with the First Amendment status of the digital blueprints. As of August 2014, it is the first law review …

Fair Use For Free, Or Permitted-But-Paid?, Jane C. Ginsburg

Faculty Scholarship

The U.S. Supreme Court in Sony Corporation of America v. Universal City Studios fended a fork in the fair use road. The Court there upset the longstanding expectation that uses would rarely, if ever, be fair when the whole of a work was copied. In the aftermath of that decision, lower courts have rendered a plethora of decisions deeming the copying of an entire work (even with no additional authorship contribution) a fair use, and therefore "free" in both senses of the word. A perceived social benefit or some market failure appears to motivate these decisions. This is because fair …

Property And The Right To Exclude Ii, Thomas W. Merrill

Faculty Scholarship

In 1998 I published a short essay entitled Property and the Right to Exclude. It appeared in an issue of the Nebraska Law Review honoring Lawrence Berger, a long-time property professor at Nebraska. The essay has been rather widely cited, but I have my doubts as to whether it has been widely read. A review of citations in Westlaw suggests that the essay is commonly identified as arguing that the right to exclude is the "sine qua non" of property, a statement that appears in the opening paragraph. The typical citing author takes this to mean that …

The Idiosyncrasy Of Patent Examiners: Effects Of Experience And Attrition, Ronald J. Mann

Faculty Scholarship

In recent years, problems with the U.S. patent system have garnered attention from scholars and policymakers of all types. Concerns about the competitiveness of U.S. industry undergird worries that the Great Recession will linger as long as the 1990s downturn in Japan. It is no coincidence that a Congress that has remained at loggerheads on most aspects of economic policy could reach a consensus on the enactment of the Leahy-Smith America Invents Act of 2011, by far the most important statutory reform of U.S. patent law since 1995. Yet, despite Congress's long overdue attention to patent law, it is unlikely …

Intellectual Property Experimentalism By Way Of Competition Law, Tim Wu

Faculty Scholarship

Competition law and Intellectual Property have divergent intellectual cultures – the former more pragmatic and experimentalist; the latter influenced by natural law and vested rights. The US Supreme Court decision in Federal Trade Commission v. Actavis is an intellectual victory for the former approach, one that suggests that antitrust law can and should be used to introduce greater scrutiny of the specific consequences of intellectual property grants.

Exceptional Authorship: The Role Of Copyright Exceptions In Promoting Creativity, Jane C. Ginsburg

Faculty Scholarship

A lawyer for an immense copyright-exploiting corporation, casting himself as a defender of authors’ rights, challenged his interlocutor’s incredulity with the following assertion: given today’s diversity of authors, ‘more of them depend on limitations and exceptions than on exclusive rights’. Some might cringe at the resemblance of this credo to Orwell’s ‘Freedom Is Slavery!’ Nonetheless, I would like to take seriously the proposition that today’s authors need copyright exceptions and limitations more than they need exclusive rights.

First, I will test the proposition by examining what one might call authorship-oriented exceptions, from ‘fair abridgement’ in early English cases to the …

Letter From The U.S.: Exclusive Rights, Exceptions, And Uncertain Compliance With International Norms – Part I (Making Available Right), Jane C. Ginsburg

Faculty Scholarship

This Letter from the U.S. addresses U.S. compliance with its international obligation to implement the “making available right” set out in art. 8 of the 1996 WIPO Copyright Treaty. The “umbrella solution” which enabled member states to protect the “making available to the public of [authors’] works in such a way that members of the public may access these works from a place and at a time individually chosen by them” through a combination of extant exclusive rights, notably the distribution right and the public performance right, has not in the U.S. afforded secure coverage of the full scope of …

Letter From The U.S.: Exclusive Rights, Exceptions, And Uncertain Compliance With International Norms – Part Ii (Fair Use), Jane C. Ginsburg

Faculty Scholarship

This survey of recent U.S. fair use decisions examines the domestic evolution of the doctrine, particularly in light of the significant expansion of noninfringing “transformative” uses. The article also considers the U.S.’ compliance with its international obligations under the Berne Convention and the TRIPs Accord, and inquires whether the substantial enlargement of the application of the U.S. fair use exception exceeds the leeway that the Berne Convention, art. 9(2), WCT art. 10, and TRIPs art. 13 grant to member states to provide for exceptions and limitations to copyright.

Still Aiming At The Wrong Target: A Case For Business Method And Software Patents From A Business Perspective, Kristen Jakobsen Osenga

Law Faculty Publications

In Part I, I briefly discuss the rise and recent fall of business method patents. Part II covers the scholarly literature discussing business method and software patents. In Part III, I explain the proxy argument that I have made elsewhere and show how it plays in the recent decisions surrounding the patent eligibility of business method and software inventions. I then explain why the analysis of business method and software patents in the literature uses the same proxy-type arguments to avoid more difficult questions of patentability and policy. Finally, I conclude by explaining how business method and software patents, if …

On Aereo And "Avoision", Rebecca Giblin, Jane C. Ginsburg

Faculty Scholarship

Avoision describes conduct which seeks to exploit 'the differences between a law's goals and its self-defined limits' – a phenomenon particularly apparent in tax law. This short paper explains how the technology company Aereo utilised avoision strategies in an attempt to design its way out of liability under US copyright law. The authors argue that existing formulations encourage such strategies by applying differently depending on how the transaction is structured, resulting in a wasteful devotion of resources to hyper-technical compliance with the letter rather than meaning and purpose of the law.?

Book Review, Rebecca Wexler

Faculty Scholarship

Authors have skeptics. Patrick Burkart writes for his. Critics describe the pirate political movement as uninformed and unreliable. Burkart disagrees. He argues that pirates can help protect the digital commons from a dangerous upward ratchet of intellectual property rights (IPR). Activists within the pirate movement define the digital commons as information resources created by the Internet, including Wikipedia, remixes, and fan fiction.

Unplanned Coauthorship, Shyamkrishna Balganesh

Faculty Scholarship

Unplanned coauthorship refers to the process by which contributors to a creative work are treated by copyright law as coauthors of the work based entirely on their observable behavior during its creation. The process entails a court imputing the status of coauthors to the parties ex post, usually during a claim for copyright infringement. For years now, courts and scholars have struggled to identify a coherent rationale for unplanned coauthorship and situate it within copyright’s set of goals and objectives. This Article offers a novel framework for understanding the rules of unplanned coauthorship using insights from theories of shared intentionality. …

Post-Myriad Genetics Copyright Of Synthetic Biology And Living Media, Michael D. Murray

Law Faculty Scholarly Articles

This Article addresses copyright as a viable form of intellectual property protection for living, organic creations of science and art. The United States Supreme Court's decision in Association for Molecular Pathology v. Myriad Genetics, Inc. narrowed patent-eligible protection over living components of humans or other organisms. Synthetic biologists are expected to look with renewed focus on copyright law for the intellectual property protection of biological creations. The contribution of this Article is to reveal that the same issues are raised with regard to the copyrightability of the works of synthetic biology as are raised by pictorial, graphic, and sculptural arts …

Cad’S Cradle: Untangling Copyrightability, Derivative Works, And Fair Use In 3d Printing, Kyle Dolinsky

Washington and Lee Law Review

No abstract provided.

Frcp 26 Vs. Fre 408: Why Settlement Negotiations Should Be Privileged Against Third-Party Discovery, Andrew Sher

Cardozo Journal of Conflict Resolution

This Note proposes that courts should recognize a settlementnegotiation privilege because it will incentivize parties to settle. Settling disputes is beneficial to the judicial system as it is more efficient and effective at resolving disputes than trying cases. Recognizing a settlement-negotiation privilege will increase the number of settlements by avoiding the free-rider problem that the Federal Circuit's approach in In re MSTG will create. Similarly, creating a settlement-negotiation privilege will avoid the uncertainty caused by not recognizing a privilege or requiring heightened standards for discovery. The confidentiality and certainty of a settlement-negotiation privilege will encourage parties to settle as well …

Intellectual Property And Public Health - A White Paper, Ryan Vacca

Faculty Publications

On October 26, 2012, The University of Akron School of Law's Center for Intellectual Property and Technology hosted its Sixth Annual IP Scholars Forum. In attendance were thirteen legal scholars with expertise and an interest in IP and public health who met to discuss problems and potential solutions at the intersection of these fields. This report summarizes this discussion by describing the problems raised, areas of agreement and disagreement between the participants, suggestions and solutions made by participants, and the subsequent evaluations of these suggestions and solutions.

Led by the moderator, participants at the Forum focused generally on three broad …

Food For Thought: Genetically Modified Seeds As De Facto Standard-Essential Patents, Ryan Vacca, Benjamin M. Cole, Brent J. Horton

Faculty Publications

For several years, courts have improperly calculated damages in cases involving the unlicensed use of genetically modified (GM) seed technology. In particular, when courts determine patent damages based on the hypothetical negotiation method, they err in exaggerating these damages to a point where no rational negotiator would agree. In response, we propose a limited affirmative defense of an implied license due to the patent's status as a de facto standard-essential patent. To be classified as a de facto standard-essential patent, the farmer must prove three elements that reflect the peculiarities of GM seeds used in farming: (1) dominance, (2) impracticability, …

Meatspace, The Internet, And The Cloud: How Changes In Document Storage And Transfer Can Affect Ip Rights, Sharon Sandeen

Faculty Scholarship

This article discusses the intellectual property issues from "meatspace" to online services and the Internet. It further explores intellectual property issues from the Internet to the Cloud. Finally, it discusses the implications of cloud computing for trade secret protection.

Functional Elements In Patent Claims, As Construed By The Patent Trial And Appeal Board (Ptab), 13 J. Marshall Rev. Intell. Prop. L. 251 (2014), Tom Brody

UIC Review of Intellectual Property Law

Claims in patents include both structural elements and functional elements. Functional elements occur in various categories: (1) Functional elements that mandate a particular range of structures that are able to perform the required function; (2) Functional elements that mandate a particular cooperation between structures; (3) Compound noun/function functional elements, (4) Active-type functional elements; (5) “Capable of”-type functional elements, (6) Single-word structural elements that are typical nouns, but that are also functional elements, e.g., “plasticizer,” and (7) Quasi-functional elements that lack any patentable weight. This article discloses which of these types of functional elements confers the broadest claim scope, and which …

Will Nanotechnology Products Be Impacted By The Federal Courts’ “Product Of Nature’ Exception To Subject-Matter Eligibility Under 35 U.S.C. 101?, 13 J. Marshall Rev. Intell. Prop. L. 397 (2014), Laura W. Smalley

UIC Review of Intellectual Property Law

In 2013, the Supreme Court in Myriad held that DNA is a “product of nature” that is not patentable merely because it is isolated from the human body. The year before, the Supreme Court in Prometheus held that diagnostic tests that incorporate little more than a “law of nature” is not patent eligible. These two decisions altered the landscape of patent eligible subject matter under Section 101 of the patent statute. They not only impact the patent eligibility of isolated DNA or diagnostic tests, but they may also have far wider-ranging impact on other technological fields, including biotechnology and nanotechnology. …