Intellectual Property Law Commons^™

Intellectual Property And Public Health - A White Paper, Ryan Vacca, James Ming Chen, Jay Dratler Jr., Tom Folsom, Timothy Hall, Yaniv Heled, Frank Pasquale, Elizabeth Reilly, Jeff Samuels, Katherine J. Strandburg, Kara W. Swanson, Andrew W. Torrance, Katharine Van Tassel

Akron Intellectual Property Journal

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 …

The Quantified Self Movement: Legal Challenges And Benefits Of Personal Biometric Data Tracking, Timothy S. Hall

Akron Intellectual Property Journal

This article explores some of the potential pitfalls associated with collection of detailed individual biometric or health-related information, and demonstrates that current laws and regulations are not well designed to protect users of these devices and apps from unauthorized use or misuse of their data. Health information is among the most sensitive, intimate, and potentially damaging personal information one may possess, and health policymakers have made health information privacy a priority for decades for good reason. The Health Insurance Portability and Accountability Act of 1996 (HIPAA) was one of the major health policy legislative achievements of the 1990s. However, HIPAA …

Bioprospect Theory, James Ming Chen

Akron Intellectual Property Journal

Conventional wisdom treats biodiversity and biotechnology as rivalrous values. The global south is home to most of earth's vanishing species, while the global north holds the capital and technology needed to develop this natural wealth. The south argues that intellectual property laws enable pharmaceutical companies and seed breeders in the industrialized north to commit biopiracy. By contrast, the United States has characterized calls for profit-sharing as a threat to the global life sciences industry. Both sides magnify the dispute, on the apparent consensus that commercial exploitation of genetic resources holds the key to biodiversity conservation.

Both sides of this debate …

Ip And Health Care: New Drugs Pricing And Medical Mistakes, Jay Dratler Jr.

Akron Intellectual Property Journal

I propose to address briefly two important IP questions from an economic perspective: patented drug pricing in an international context and trade secret protection for health care outcomes. The first will involve some algebra; the second involves a bit of common sense that so far seems to have eluded us.

The Technological Edge, Elizabeth I. Winston

Akron Intellectual Property Journal

Protecting the bargain inherent in the patent system is central to the determination of patentable subject matter. If an applicant invents something novel, non-obvious, and useful and provides a written description that enables others to practice the invention, then the applicant is rewarded with the right to exclude others from making, using, selling, or offering to sell for a limited time the invention. The Patent Act provides an incentive to invest in innovation leading to new inventions and "reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in …

No Method To The Madness: The Failure Of Section 14 Of The Patent Reform Act Of 2011 To Make Any Obvious Changes For The Better, Darryl C. Wilson

Akron Intellectual Property Journal

This article briefly examines the short history of openly expressed concerns regarding tax patents and the legislative response crafted to address them. The goal here is not so much to argue in favor of tax patents, although there is nothing wrong with them in terms of basic legal principles, as it is to criticize the weak language of the bill, which in attempting to satisfy so many, or perhaps based on the substantive lack of understanding of the bill sponsors, led to the poor draftsmanship of an unnecessary part of the new patent act.

Smoke And Mirrors: America Invents Act 2011: A Chill In The Air, Robert I. Reis

Akron Intellectual Property Journal

The primary focus of this article is on but a few of the distinct representations reflected in the provisions of the Act and their implications as America Invents is phased in over the next eighteen months. These first three changes address (1) the backlog in the Patent Office by hiring additional examiners, (2) the elimination of the best mode requirement as a defense in an infringement action, (3) the expanding adjudicatory role of the Patent Office in supplemental reviews, derivation proceedings, intra partes review or a post-grant review relative to constitutional due process and separation of powers questions, and (4) …

Minority Report: Real Patent Reform, Maybe Later - The America Invents Act And The Quasi-Recodification Solution, Thomas C. Folsom

Akron Intellectual Property Journal

This Article has three parts. In Part One, I describe what Congress claims to have done, then what the Act actually has done, and therefore what is the most that can be hoped to come from it. In considering what Congress has done, I briefly outline the theoretical basis of the new hybrid system, neither first-to-invent nor first-to-file, but rather a "first to declare" system with a one-year grace period that is both a shield and a sword to the declarant. More importantly, Congress has indicated it believes the new system is compatible with the Constitutional grant, and I suggest …

America Invents The Supplemental Examination, But Retains The Duty Of Candor: Questions And Implications, Lisa A. Dolak

Akron Intellectual Property Journal

This paper considers these duty-of-candor-related issues-issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA's provisions relating to supplemental examination, But first, by way of background, Part II presents an overview of the legislation relating to supplemental examination and explores how supplemental examination might operate, in light of its apparent goals. Part III considers questions relating to the overlay of supplemental examination on the existing U.S. patent application and enforcement regime, with particular focus on its interplay with the applicant's duty of candor. As that section illustrates, the …

Patent Attorney Malpractice: Case-Within-A-Case-Within-A-Case, A. Samuel Oddi

Akron Intellectual Property Journal

This article will first provide a brief history of the jurisdictional controversy between federal courts and between federal courts and state courts. Then, the question will be examined of how the subject matter jurisdictional question has been resolved with respect to patent attorney malpractice cases to the extent it has been to date in the federal and state courts. The manner in which the case-within-a-case doctrine or methodology has been used in deciding the jurisdictional question will also be investigated. In addition, the relevance of the use of the judgment or non-judgment model to determine patent attorney malpractice will be …

Trademarks In 2010 (And 2011): Dilution Takes Center Stage, David S. Welkowitz

Akron Intellectual Property Journal

From the hundreds of trademark cases decided in any year, it is often difficult to discern any particular theme. There are cases from many different areas raising very disparate issues. In 2010, however, trademark dilution stands out as the area with the most prominent doctrinal opinions. In addition to three court of appeals decisions, there were five significant Trademark Trial and Appeal Board (“TTAB”) decisions from an entity whose prior involvement in dilution had been very much the exception. These dilution opinions form the centerpiece of this discussion.

There were, of course, other notable decisions involving contributory infringement and the …

The First Sale Doctrine After Costco: Brilliantly Reconciling Decades Of Legislative Revision; The Forgotten Curse Of The Manufacturing Clause; Or Just Plain Bad Statutory Drafting?, Patrick J. Coyne

Akron Intellectual Property Journal

This paper presents the case for two alternative results: (1) The first sale defense applies in Costco for the same reasons that required its application in Quality King. As Justice Stevens wrote in Quality King, “once the copyright owner places a copyrighted item in the stream of commerce by selling it, he has exhausted his exclusive statutory right to control its distribution”; or (2) The first sale defense does not limit infringement liability for unauthorized importation under 17 U.S.C. § 602(a) because the act of importation involves neither a sale nor disposition of a copy that would trigger …

The Ethics Of Deception: Pretext Investigations In Trademark Cases, Phillip Barengolts

Akron Intellectual Property Journal

Pretext investigations of trademark infringement usually implicate one or more of four rules of professional responsibility: truthful communications, communications with adverse parties represented by counsel, communications with parties unrepresented by counsel, and the prohibition of deceptive behavior. There is an additional rule on using paralegals or non-lawyer assistants to do the actual investigation which also comes into play on occasion.

The Imperfect State Of Patent Perfection, Yongae Jun

Akron Intellectual Property Journal

The state of the law regarding perfection of security interests in patents is uncertain. Attorneys advise their clients to record with both the state and the federal registration systems in order to perfect their security interests. Moreover, the Supreme Court missed its opportunity to clarify the ambiguity when it denied certiorari to Cybernetic Services. This comment will attempt to make sense of this area of the law and formulate an opinion as to what the law should be. Part II of this comment will interpret Section 261 through textual analysis, canons of construction, and legislative history. Part III will explore …

Checks, Balance And Judicial Wizardry: Constitutional Delegation And Congressional Legislation, Robert I. Reis

Akron Intellectual Property Journal

Recent Supreme Court activity regarding "intellectual property" may lead some to believe the increase in cases has some further meaning beyond the decisions themselves. The interests they represent and the source of power to enact legislation in the field raise distinct issues that may inform of current judicial interest and concern. These don't necessarily delineate the constitutional role of the Court relative to the delegation under Article I, Section Eight, Clause 8 of the United States Constitution. A gathering of cases using conventional search resources and techniques yielded 666 patent cases and 73 copyright cases. This essay is not intended …

What Is The Mclaw In Malaysia?, Amy Moscato-Wolter

Akron Intellectual Property Journal

This article will discuss the extent of protection given to McDonald's interest in the prefix "Mc" in the United States as a result of the case McDonald's Corp. v. Druck & Gerner, D.D.S., P.C., d/bla McDental (hereinafter McDental), where it was determined that the "Mc" family of marks can even be protected when affixed to the name of a generic non-food item. Such success, however, has not been matched in other parts of the world. I will also discuss McCurry Restaurant (KL) Sdn Bhd v. McDonalds Corp. (hereinafter McCurry), where a Malaysian court determined that the "Mc" prefix coupled …

Threatening The Founding Ideal Of A Republic Of Letters: An Assessment Of The Supreme Court's Copyright Decisions Over The First Decade Of The Twenty-First Century, Susanna Frederick Fischer

Akron Intellectual Property Journal

Disregard for the social value of a modern Republic of Letters like that so revered by Madison and Jefferson is a conspicuous hallmark of the Supreme Court's recent copyright case law. The four decisions in which the Court has issued full opinions since 2001 (New York Times Co. v. Tasini (2001), Eldred v. Ashcroft (2003), MGM Studios, Inc. v. Grokster, Ltd. (2005), and Reed Elsevier, Inc. v. Muchnick (2010)) indicate that a majority of the Court does not share with Jefferson and Madison a belief in the civic importance of protecting widespread public access to creative works and knowledge. …

The Supreme Court And The Federal Circuit: A Case Of Supervision By Generalists, Jay Dratler Jr.

Akron Intellectual Property Journal

Many of the "general rules" that the Federal Circuit developed in its effort to simplify patent law turned out to be too crabbed and formalistic to do the job that Jefferson intended. As a result, the Supreme Court has had to step in. In virtually every case where it has done so, the High Court has rejected a narrow, formulaic rule proposed by the Federal Circuit and opted for something more general and flexible.

This paper analyzes some key cases of that sort. In the process, it attempts to answer the question "why"? Why did a specialized court fail to …

Federal Trademark Remedies: A Proposal For Reform, Mark A. Thurmon

Akron Intellectual Property Journal

It is time to take this problem seriously and reform the remedial rules of the Lanham Act. This article presents a specific proposal for reform that includes the following key changes:

• statutory damages are available as an alternative to actual damages, and this new remedy is available to prevailing trademark owners in all actions under the Lanham Act;
• the defendant's profits remedy is limited to those profits attributable to the infringement, but this remedy is available to prevailing trademark owners in all actions under the Lanham Act (i.e., proof of willful infringement or some other type of bad faith is …

Extending Copyright Misuse To An Affirmative Cause Of Action, Michael E. Rubinstein

Akron Intellectual Property Journal

This Comment will discuss the copyright misuse doctrine. Part I will introduce Redbox, explain how its business model functions, and describe the history between Redbox and the movie studios involved in the recent litigation. Part II will provide a history and background of the copyright misuse doctrine and how it has been applied in the various circuit courts that have adopted the doctrine. Part II will also touch upon the first sale doctrine, which will be applied to the litigation between Redbox and the studios. Part III will present a proposal for extending the copyright misuse doctrine into an affirmative …

Managing Inequitable Conduct By Legislation And/Or Regulation, Alan J. Kasper

Akron Intellectual Property Journal

The defense of “inequitable conduct” in patent litigation is rooted in equity and derives, not from any legislative formulation or regulatory construct, but instead from the principles of “unclean hands.” In Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co., the United States Supreme Court dismissed a case brought by a patent owner because the patent in suit and certain related contracts were “perjury tainted” and “inequitable conduct impregnated Automotive’s entire cause of action.” The Precision Instrument case and the only two other earlier decisions by the Supreme Court to consider an unclean hands defense, “involved overt fraud, …

Legal Interpretation By Computer: A Survey Of Interpretive Rules, Eric Engle

Akron Intellectual Property Journal

This article presents a survey of legal interpretive rules. The rules presented in this survey are used as the rule base in the computer program accompanying this article, an expert system. The computer program models legal decision-making and uses the rules presented to make legal decisions, generating a report to justify the decision reached. Legal interpretation is chosen as a model for computation representation because understanding interpretive methods is useful for any jurist seeking creative arguments. This survey of legal interpretive rules is of both a theoretical and practical interest.

Trademarks And Related Rights: Highlights For 2009-10, David S. Welkowitz

Akron Intellectual Property Journal

However, the most important part of the [Rescuecom Corp. v. Google, Inc.] opinion was not the decision itself, or its reasoning. Rather, it was the Appendix that the court annexed to its opinion that made the decision extraordinary. As law students, we are all taught that federal courts will not issue advisory opinions. But it is difficult to view the Rescuecom Appendix as anything other than an advisory opinion. And its breadth is rather sweeping. The court embarked on a fairly lengthy discussion of the history and purpose of the “use in commerce” definition. It concluded that it …

Intersection Between The Patent System And Antitrust Laws: Patents Speeding, Antitrust Yielding, Innovation Bleeding!, Stijepko Tokic

Akron Intellectual Property Journal

In this article, I explain the interaction between the two laws and describe the ways in which these two extremely important areas of government regulation are and are not in tension. I argue that the conflict between the two laws is overstated, but the proper balance is far from being found. The reason for that is a notion that the current state of the patent system is more of a hindrance than a spur to innovation and competition due to overprotection and broadening of patent rights, lowering of standards to grant patents, chronic inefficiency of the Patent and Trademark Office …

An Introduction To U.S. Export Control: Regulations For Patent Practitioners, Michael K. Carrier

Akron Intellectual Property Journal

This article presents basic information on the U.S. export control laws most relevant to U.S. patent practice, including the preparation and filing of patent applications related to commercial items, and the intended audience of this article is the U.S. patent practitioner who does not routinely deal with export-controlled subject matter. If the patent practitioner intends to: export technical information from the U.S. for the purpose of having a patent application prepared; hire or work with foreign nationals (who may or may not actually be in the U.S.) in conducting technical research or patentability and invalidity searches; or help prepare patent …

Recent Developments In Private Enforcement Of The Can-Spam Act, Vanessa J. Reid

Akron Intellectual Property Journal

This note discusses recent developments in the area of private enforcement of the federal CAN-SPAM Act. The article is divided into four sections. The first section describes the history and background of the spam problem, while the second outlines historical attempts to combat spam, culminating in the passage of the CAN-SPAM Act. The third section details a series of recent cases in which private entities have attempted to enforce the CAN-SPAM Act, and how courts have attempted to fashion a broader standard for the Act's private standing provision without opening the door to an excessive number of lawsuits. The final …

A View Of The Hierarchy Of Patent Rights, Trips, And The Canadian Patent Act, Jacob R. Osborn

Akron Intellectual Property Journal

In this paper, Section I introduces the international dimension of intellectual property with respect to the Trade Related Aspects of Intellectual Property (TRIPS) Agreement and the Dispute Settlement Understanding for resolving conflicts thereupon. Section II proceeds to examine two facets of the Canadian Patent Act: the Regulatory Review Exception and the Stockpiling Exception. While the international judicial authority determined that the Regulatory Review Exception was in conformity with TRIPS, the authority also found the Stock Piling Exception in violation of Article 30 of the TRIPS Agreement. Finally, Section III offers an alternative, historical approach to construing TRIPS, based on the …

What Blogging Might Teach About Cybernorms, Jacqueline D. Lipton

Akron Intellectual Property Journal

While the literature on social norms as online regulators has achieved some prominence in the cyberlaw area, there is still scant examination of particular online norms and of the ways in which norms interact with other forms of regulation. The aim of this article is to reverse that trend by providing a detailed examination of one apparently emerging norm in the blogosphere-the norm against "hijacking" a blog post by hyperlinking to another blog in the comment feed for the original blog post. For example, consider a situation where Blogger A posts her advice for cooking a souffle and allows readers …

Once More Unto The Breach: An Analysis Of Legal, Technological, And Policy Issues Involving Data Breach Notification Statutes, Dana J. Lesemann

Akron Intellectual Property Journal

This Article addresses the legal, technological, and policy issues surrounding U.S. data breach notification statutes and recommends steps that state and federal regulatory agencies should take to improve and harmonize those statutes. Part I of this Article provides background on the data breaches that gave rise to the enactment of notification statutes. Part II addresses the varying definitions of "personal information" in the state statutes-the data that is protected by the statute and whose breach must be revealed to consumers. Part III analyzes how states define the data breach itself, particularly whether states rely on a strict liability standard, on …

The Criminal Liability Of Artificial Intelligence Entities - From Science Fiction To Legal Social Control, Gabriel Hallevy

Akron Intellectual Property Journal

The modem question relating to Al entities becomes: Does the growing intelligence of Al entities subject them to legal social control as any other legal entity?This article attempts to work out a legal solution to the problem of the criminal liability of Al entities. At the outset, a definition of an Al entity will be presented. Based on that definition, this article will then propose and introduce three models of Al entity criminal liability:

(1) The Perpetration-via-Another Liability Model

(2) The Natural-Probable-Consequence Liability Model

(3) The Direct Liability Model.