Intellectual Property Law Commons^™

Informal Deference: A Historical, Empirical, And Normative Analysis Of Patent Claim Construction, J. Jonas Anderson, Peter S. Menell

Northwestern University Law Review

No abstract provided.

A Call For Minority Involvement In Cybersecurity Legislation Reform And Civil Rights Protests: Lessons From The Anti-Sopa/Pipa Demonstrations., Kiran Sidhu

UC Law SF Communications and Entertainment Journal

This note examines one of the many pieces of cybersecurity legislation currently before Congress, the Cyber Intelligence Protection and Sharing Act (“CISPA”). This note illustrates CISPA’s deleterious effects on the privacy and security of American citizens as a result of its provisions that provide federal agencies and private companies legal immunity for sharing private information. However, this note ultimately avers that bills like CISPA will have a particularly negative impact on civil rights demonstrators–and especially demonstrators belonging to minority groups–given the U.S. history of surveillance of such groups during periods of social and political unrest. As such, this note will …

Ip Basics: Advice On Ip Careers For Those Without Technical Backgrounds, Thomas G. Field Jr.

Law Faculty Scholarship

[Excerpt] If you can spend three more years in school, intellectual property offers a wide range of interesting and rewarding careers. Those without technical backgrounds, however, should not pursue an intellectual property career blindly. Unless your undergraduate degree is in a physical science or engineering -- or you have at least a masters (and probably some experience) in biotechnology, patent opportunities will be slim. As discussed in more detail below, people without technical training are more apt to deal with copyrights, trademarks and special contracts such as licenses or franchise agreements. Yet intellectual property law covering non-technical subjects is often …

Ip Basics: Avoiding Patent, Trademark And Copyright Problems, Thomas G. Field Jr.

Law Faculty Scholarship

Patents, copyrights and trademarks, as well as trade secrets and related rights, can be used to exclude free riders. These rights are collectively called "intellectual property" or IP.

Ip Basics: Managing Intellectual Property, Thomas G. Field Jr.

Law Faculty Scholarship

This provides an overview of the IP management process, including the key decisions to be made in the effort to make the most of intellectual property.

Ip Basics: Copyright On The Internet, Thomas G. Field Jr.

Law Faculty Scholarship

This discussion focuses on copyright issues most apt to concern those who post to or own email lists or those who have put up web pages. Such matters as the fundamental distinction between works that are and are not "for hire," registration, and issues to consider in transferring copyright interests are treated in other copyright discussions above.

Ip Basics: Advice On Ip Careers For Those With Technical Backgrounds, Thomas G. Field Jr.

Law Faculty Scholarship

[Excerpt] Full-time law school takes three years and culminates in the Juris Doctor. A J.D. from a school accredited by the American Bar Association qualifies a person to take the bar exam in any state. As mentioned above, college graduates need not pursue any particular line of study to be accepted into law school. At the University of New Hampshire School of Law, for example, over a third of our students have degrees in engineering or science, and many have had extensive experience or advanced degrees, including M.D.s and Ph.Ds. -- the last being particularly helpful for biotechnology patent careers.

Ip Basics: Patenting Your Idea, Thomas G. Field Jr.

Law Faculty Scholarship

This discussion addresses the relationship between patents and the market value of inventions, as well as the need to be skeptical of invention promoters and other matters of importance to first-time inventors. It also discusses the need for counsel in making outside submissions and the importance of getting prior art searches.

Ip Basics: Copyright In Written Work, Thomas G. Field Jr.

Law Faculty Scholarship

Written primarily for free-lance writers, this discussion addresses ownership and duration of copyrights, deposit and registration, notice, and remedies that are closely tied to prompt registration. It also discusses licensing and other matters of interest, as well as the need for counsel.

Ip Basics: Trademarks And Business Goodwill, Thomas G. Field Jr.

Law Faculty Scholarship

This is information all business owners need if they wish to preserve their hard-won goodwill. It discusses, for example, the important differences between strong and weak marks for products and services, the value of state and federal registrations and the importance of searches (to avoid wasting money).

Ip Basics: Seeking Cost-Effective Patents, Thomas G. Field Jr.

Law Faculty Scholarship

This discussion briefly explores the range of intellectual property options in view of the nature of inventions and their market value, particularly for entrepreneurs. Specific strategies for controlling ever-increasing patent costs in the face of market uncertainty. It does not recommend that inventors prosecute patent applications themselves, lest they get much less than they pay for.

Ip Basics: Copyright In Visual Arts, Thomas G. Field Jr.

Law Faculty Scholarship

This discussion focuses on the needs of free-lance artists, craftspeople, photographers, sculptors and the like.

Ip Basics: Copyright For Digital Authors, Thomas G. Field Jr.

Law Faculty Scholarship

Written for computer artists and programmers, this paper addresses the basics, as well as the registration of multiple works, difference between works that are and are not prepared "for hire," and other matters of interest to entrepreneurs as well as to free-lance programmers and artists.

A Race To Digitization?: Kirtsaeng V. John Wiley & Sons Impact On The Digital Publication Market, Amelia Parsons

Proxy

No abstract provided.

Ongoing Royalties In Patent Cases After Ebay: An Empirical Assessment And Proposed Framework, Christopher B. Seaman

Scholarly Articles

While the Federal Circuit has authorized the award of ongoing royalties as an equitable alternative to a permanent injunction, numerous questions regarding such relief remain unresolved, including when ongoing royalties should be awarded, the structure and methodology for computing an award, and possible enhancement of the royalty rate for post-judgment willful infringement. Despite lower courts' attempts to grapple with these issues, a comprehensive methodology for determining ongoing royalties has yet to emerge.

This Article seeks to fill this void in two ways. First, it empirically assesses how courts have resolved claims for ongoing royalties by prevailing patentees. It does so …

The Constitutional Limitation On Trademark Propertization, Peter J. Karol

Law Faculty Scholarship

The following article seeks to apply the retrenchment in constitutional Commerce Clause jurisprudence of the last few decades to the phenomenon of trademark propertization, the expansive and largely federal movement towards protecting trademarks as assets apart from any connection to referent goods and services. Trademark scholars have filled the trademarks literature with critiques of propertization that generally object, on policy and historical grounds, to the trend and offer constructions of the Lanham Act designed to check its progress. With the notable exception of an article published in 2000 by Professor Kenneth Port, however, the literature has largely avoided addressing the …

Work Made For Hire – Analyzing The Multifactor Balancing Test, Ryan G. Vacca

Law Faculty Scholarship

Authorship, and hence, initial ownership of copyrighted works is oftentimes controlled by the 1976 Copyright Act’s work made for hire doctrine. This doctrine states that works created by employees within the scope of their employment result in the employer owning the copyright. One key determination in this analysis is whether the hired party is an employee or independent contractor. In 1989, the U.S. Supreme Court, in CCNV v. Reid, answered the question of how employees are distinguished from independent contractors by setting forth a list of factors courts should consider. Unfortunately, the Supreme Court did not give further guidance on …

Nsfw: An Empirical Study Of Scandalous Trademarks, Megan M. Carpenter, Mary Garner

Law Faculty Scholarship

This project is an empirical analysis of trademarks that have received rejections based on their “scandalous” nature. It is the first of its kind.

The Lanham Act bars registration for trademarks that are “scandalous” and “immoral.” While much has been written on the morality provisions in the Lanham Act, this piece is the first scholarly project that engages an empirical analysis of the Section 2(a) rejections based on scandalousness; it contains a look behind the scenes at how the morality provisions are applied throughout the trademark registration process. This study analyzes which marks are being rejected, what evidence is being …

Post-Teva: When Will The Federal Circuit Embrace The Deferential Standard Of Review For Patent Claim Construction, Katherine E. White

Law Faculty Research Publications

No abstract provided.

Digital Patent Infringement In An Era Of 3d Printing, Timothy R. Holbrook, Lucas Osborn

Sturm College of Law: Faculty Scholarship

The digital revolution has now moved beyond music and video files. A person can now translate three-dimensional objects into digital files and, at the press of a button, recreate those items via a 3D printer or similar device. Just as digitization placed pressure on the copyright system, so will these digital computer-aided design (CAD) files stress the patent system. Patents directed to physical objects can now have their value appropriated — not by the transfer of physical embodiments — but by the making, selling, and transferring of CAD files designed to print the invention. We term this phenomenon digital patent …

Expressive Eligibility, Timothy R. Holbrook, Mark D. Janis

Sturm College of Law: Faculty Scholarship

What is the ultimate objective of the patent eligibility inquiry? The recent eligibility case law — a frenzied outpouring of opinions from many esteemed judges — has revealed little while mystifying much. Scholars haven’t fared much better, although it isn’t for lack of trying. Our scholarly colleagues have offered a multitude of intriguing new perspectives on the analysis — drawing on history, the philosophy of science, semiotics, institutional choice, and so on. But we continue to wonder exactly what the eligibility inquiry is for.

In addressing that question here, we’re following a familiar methodological tradition: we propose to reimagine eligibility …

Patent-Eligible Processes: An Audience Perspective, Timothy R. Holbrook, Mark D. Janis

Sturm College of Law: Faculty Scholarship

Many of the problems with modern patent-eligibility analysis can be traced back to a fundamental philosophical divide between judges who treat eligibility as the primary tool for effectuating patent policy and those who take patent-eligibility as nothing more than a coarse filter to be invoked in rare cases. After several years in which the coarse filter approach seemed to have the upper hand, the eligibility-as-king approach now is firmly in ascendancy. This Article, resists that trend, exploring more centrist approaches to patent-eligibility, particularly in the context of process inventions. This Article first examines the practice of undertaking an eligibility analysis …

Linking Patent Reform And Civil Litigation Reform, Greg Reilly

Loyola University Chicago Law Journal

Patent reform increasingly focuses on discovery. Discovery is perceived as disproportionately expensive and burdensome in patent cases. Excessive discovery is said to fuel so-called “patent trolls” and impose an unhealthy tax on innovation and competition. These supposedly exceptional problems have led to exceptional patent-only reform proposals, such as delaying most discovery for over a year and reversing the seventy-five-year-old allocation of discovery costs. Treating patent litigation as exceptional has a siloing effect. Patent reform debates ignore parallel debates over general civil litigation reform that raise the same arguments about disproportionately expensive and burdensome discovery and propose their own set of …

Private Ordering Under Threat Of Regulation, Jake Linford

Scholarly Publications

No abstract provided.

Table Of Content

Marquette Intellectual Property Law Review

None

A Linguistic Justification For Protecting "Generic" Trademarks, Jake Linford

Scholarly Publications

A trademark is created when a new meaning is added to an existing word or when a new word is invented in order to identify the source of a product. This Article contends that trademark law fails in critical ways to reflect our knowledge of how words gain or lose meaning over time and how new meanings become part of the public lexicon, a phenomenon commonly referred to as semantic shift. Although trademark law traditionally turns on protecting consumers from confusing ambiguity, some of its doctrines ignore consumer perception in whole or in part. In particular, the doctrine of trademark …

Agricultural Biotechnology: Drawing On International Law To Promote Progress, J. Janewa Oseitutu

Faculty Publications

In Bowman v. Monsanto, the Supreme Court declined to apply the principle of exhaustion to limit the patentee’s ability to control the reproduction of self-replicating inventions. This decision was justified from a patent law perspective on the basis that patent holder has a right to prevent others from making the invention. But what happens when we take other perspectives into account? For instance, a farmer might have human rights or other rights that may need to be balanced against the patentee’s right. Since globalized intellectual property standards were established through international agreements and much of the resistance to intellectual property …

The Oligopoly Of Academic Publishers In The Digital Era, Vincent Larivière, Stefanie Haustein, Philippe Mongeon

Copyright, Fair Use, Scholarly Communication, etc.

The consolidation of the scientific publishing industry has been the topic of much debate within and outside the scientific community, especially in relation to major publishers’ high profit margins. However, the share of scientific output published in the journals of these major publishers, as well as its evolution over time and across various disciplines, has not yet been analyzed. This paper provides such analysis, based on 45 million documents indexed in the Web of Science over the period 1973-2013. It shows that in both natural and medical sciences (NMS) and social sciences and humanities (SSH), Reed-Elsevier, Wiley Blackwell, Springer, and …

The Great Decentralization: How Web 3.0 Will Weaken Copyrights, 15 J. Marshall Rev. Intell. Prop. L. 136 (2015), Nick Vogel

UIC Review of Intellectual Property Law

Bitcoin’s popularity increased as its value increased and people became excited about the prospect of a trustless, decentralized currency that could be used on the Internet. Within the last two years, however, people and organizations began exploiting the potential of the block chain that powers the bitcoin network. These people realized that the block chain—a transparent public ledger that cannot be altered—can be used for more than digital currency. One such organization calls itself Ethereum and its developers plan to use block chains to allow decentralized autonomous applications to operate free of government censorship or corruption. While such a network …

Trademark Laundering, Useless Patents, And Other Ip Challenges For The Marijuana Industry, Sam Kamin, Viva Moffat

Sturm College of Law: Faculty Scholarship

Marijuana law is changing rapidly in the United States today – since 1996, 23 states and the District of Columbia have legalized medical marijuana and five jurisdictions have made marijuana legal for all adults. Because marijuana remains a prohibited substance under federal law, however, the states are significantly limited in their ability to control marijuana policy within their borders. For example, because banking is regulated by the federal government, state-licensed marijuana businesses cannot gain full access to banking services; because bankruptcy is a federal benefit, it is unavailable to those involved in the business of violating federal law.

This article …