Intellectual Property Law Commons^™

Data-Generating Patents, Brenda M. Simon, Ted Sichelman

Northwestern University Law Review

Patents and trade secrets are often considered economic substitutes. Under this view, inventors can decide either to maintain an invention as a trade secret or to seek a patent and disclose to the public the details of the invention. However, a handful of scholars have recognized that because the patent disclosure requirements are not always rigorous, inventors may sometimes be able to keep certain aspects of an invention secret, yet still receive a patent to the invention as a whole. Here, we provide further insight into how trade secrets and patents may act as complements. Specifically, we introduce the concept …

Future Of Innovation In Medicine: Incentives For New Medical Treatments And Global Health, Robin Jacob

Washington Journal of Law, Technology & Arts

The Future of Innovation in Medicine Conference (“Conference”) proceedings contained in this Symposium Issue are about the problem of incentivizing research into new uses for established medicines. Putting the problem into the wider context of financing pharma research generally gives an important perspective.

Brazil’S New Path To Meaningful Intellectual Property Protection, Luiz Miranda

University of Miami Inter-American Law Review

Today in Brazil, it takes over eleven years to receive legal rights to an invention by means of a patent. This state of affairs provides inadequate intellectual property protection for inventors and businesses, hampering Brazil’s desire to accelerate innovation, entrepreneurship, and economic growth through a national patent system. But a new Joint Agreement between the Government of the United States and the Government of the Federative Republic of Brazil could mean rescue is on the way. Both governments agreed to engage in patent work sharing programs between the two patent offices, in hopes of increased efficiency. Yet, some scholars have …

3d Printing The Road Ahead: The Digitization Of Products When Public Safety Meets Intellectual Property Rights-A New Model, Shlomit Yanisky-Ravid, Kenneth S. Kwan

Cardozo Law Review

This Article addresses the threats of 3D printing to both the physical and legal world. Not only does 3D printing impact products protected by intellectual property rights, it also poses risk, threats, and challenges to many other regimes, including products governed by product liability and criminal laws, which consequently threatens public safety. 3D printing virtually possesses threats to medical devices and products, threats to legal and illegal drugs, threats to human organs, threats to the food industry, and to the transportation industry, including cars, trains, and aircrafts. Ultimately, 3D printing also threatens environmental protection, workplace protections, households, and even the …

The Patent And Non-Patent Incentives For Research And Development Of New Uses Of Known Pharmaceuticals In Japan, Toshiko Takenaka

Washington Journal of Law, Technology & Arts

Japan is one of most innovative drug manufacturer-friendly countries because it revised its patent and drug regulation systems for providing patent and non-patent incentives for new use and treatment R&D based on its pro-patent and pro-medical science policies. This article provides an overview of the pharmaceutical industry and examines patent and non-patent incentives for drug R&D in focusing on incentives for developing new uses of and treatments for known drugs from a comparative law perspective. After discussing the difficulties in establishing infringement and in obtaining injunctions against generic drug manufacturers who infringe new use product patents, the article reviews measure …

Infringement Of Swiss-Type Second Medical Use Patent Claims In Germany—Recent Developments In Case Law, Matthias Zigann

Washington Journal of Law, Technology & Arts

Following recent regional court decisions on the infringement of second medical use patent claims, the German concept of manifest arrangement—previously believed to provide a safe harbor for generic pharmaceutical companies as long as they skinny-labeled their products—may be subject to a new interpretation. The German decisions are part of a Europe wide series of decisions on the same or similar subject matter and prove to be patent owner friendly.

Innovation In Known Drugs—The European Angle, Galit Gonen

Washington Journal of Law, Technology & Arts

Research into new uses for known drugs should be encouraged because the “repurposing” of known drug molecules can be a highly effective route of innovation for pharmaceutical companies. Investment in the development of these products should be rewarded. However, incentives that are designed to reward innovation must be in line with the size and value of the innovation in order to maintain a sustainable balance between incentivizing research and developing and encouraging a competitive market. In the context of encouraging innovation of new uses for known drugs, factors that facilitate access to drug development and innovation should also be considered …

The Investment-Related Aspects Of Intellectual Property Rights, Peter K. Yu

Faculty Scholarship

From the debate among presidential candidates on whether the United States should ratify the Trans-Pacific Partnership (TPP) Agreement to the arbitrations Philip Morris and Eli Lilly have sought through the investor-state dispute settlement (ISDS) mechanism, the investment-related aspects of intellectual property rights have recently garnered considerable policy, scholarly and media attention.

This growing attention, to some extent, has brought back memories about the time when the WTO TRIPS Agreement began to transform intellectual property law and policy by redirecting our focus to the trade-related aspects of intellectual property rights. Whether the recent developments on the investment front represent yet another …

United States Response To Questionnaire Concerning Copyright: To Be Or Not To Be, Jane C. Ginsburg, June M. Besek, Nathalie Russell

Faculty Scholarship

ALAI-USA is the U.S. branch of ALAI (Association Littèraire et Artistique Internationale). ALAI-USA was started in the 1980's by the late Professor Melville B. Nimmer, and was later expanded by Professor John M. Kernochan.

Whittling Away At Trademark Law’S Notions Of Harm, Stacey Dogan

Shorter Faculty Works

In recent decades, numerous scholars have challenged trademark law’s various conceptions of harm. Unlike copyright and patent law, trademark law positions itself as a harm-avoidance regime, rather than a mechanism for capturing economic rents. At least under the dominant theoretical model, the law seeks to promote competition by ensuring the accuracy and reliability of source-indicating symbols in markets. In practice, however, the harm narrative often breaks down under scrutiny. Recent articles have taken issue with the assorted harms that trademark law purports to prevent. From dilution by blurring to “irrelevant” confusion, critics have argued that at least some of the …

An Intentional Tort Theory Of Patents, Saurabh Vishnubhakat

Florida Law Review

This Article challenges the dogma of U.S. patent law that direct infringement is a strict liability tort. Impermissibly practicing a patented invention does create liability even if the infringer did not intend to infringe or know about the patent. The consensus is that this is a form of strict liability. The flaw in the consensus is that it proves too little, for the same is true of intentional torts: intent to commit the tort is unnecessary, and ignorance of the legal right is no excuse. What is relevant is intent to perform the action that the law deems tortious. So …

Removing The Troll From The Thicket: The Case For Enhancing Patent Maintenance Fees In Relation To The Size Of A Patent Owner’S Patent Portfolio, David S. Olson

Florida Law Review

This Article proposes a novel solution to part of the problem that large patent portfolios can cause. Both so-called “patent trolls” and firms that commercialize the patents that they own can accumulate and then abuse large patent portfolios, even if most of the patents in the portfolio are of little value. Instead of suggesting reforms to better determine the value and boundaries of individual patents, as many others have already done, this Article proposes that the U.S. Patent and Trademark Office (PTO) multiply the amount owed to keep a patent in force (patent maintenance fees) based on the size of …

Manhattan_Project.Exe: A Nuclear Option For The Digital Age, David Laton

Catholic University Journal of Law and Technology

This article explores the possible implications and consequences arising from the use of an artificial intelligence construct as a weapon of mass destruction. The digital age has ushered in many technological advances, as well as certain dangers. Chief among these pitfalls is the lack of reliable security found in critical information technology systems. These security gaps can give cybercriminals unauthorized access to highly sensitive computer networks that control the very infrastructure of the United States. Cyberattacks are rising in both frequency and severity and the response by the U.S. has been ineffective. A cyber-weapon of mass destruction (CWMD) implementing an …

Is Wifi Worth It: The Hidden Dangers Of Public Wifi, Ellie Shahin

Catholic University Journal of Law and Technology

No abstract provided.

Table Of Contents

Catholic University Journal of Law and Technology

No abstract provided.

Targeted Advertising And The First Amendment: Student Privacy Vs. Protected Speech, Marco Crocetti

Catholic University Journal of Law and Technology

No abstract provided.

Masthead

Catholic University Journal of Law and Technology

No abstract provided.

How Many Likes Did It Get? Using Social Media Metrics To Establish Trademark Rights, Caroline Mrohs

Catholic University Journal of Law and Technology

This comment asserts that there is a need for an update to the multifactor test considered by courts in determining the strength of a trademark. Traditional factors include the expenses an entity can afford to pay in advertising, but do not give any weight to the presence of the entity on social media to reach its target consumer group.

'Pyrates' Of The Lyceum: Big Pharma, Patents, And Academic Freedom In Neoliberal Times, James Mcgillivray

PhD Dissertations

Academic freedom and freedom of expression are threatened by the corporatised university. As neoliberal policies embed themselves in all aspects of public (if not private) life, freedom of expression and academic freedom are being degraded and denigrated in the university, in the popular press, in the law, and in public life. The influence of intellectual property rights and proprietary claims surrounding patents are muzzling freedom of thought by corporate interests. Universities and the freedom of academic researchers to explore their fields have become casualties on this neoliberal battlefield. This political economy seeks to expose the free market contagion involved with …

Personal Jurisdiction In Hatch-Waxman Cases, Michael Marusak

Catholic University Law Review

The Hatch-Waxman Act drastically altered the way pioneer and generic pharmaceutical manufacturers litigate patent infringement disputes, allowing generic manufacturers to submit an abbreviated new drug application (ANDA) to the FDA, which states that it intends make a chemical equivalent of a patent owner’s drug. When the ANDA is accompanied by a Paragraph IV certification, representing that the generic intends to market the drug before the patent’s expiration because it believes the patent is invalid or will not be infringed by the generic’s drug, the ANDA submission itself creates an “artificial” act of infringement. With the Supreme Court’s recent tightening of …

How Could An Open Access Scholarly Journal System Look? A Scenario Analysis, Maurits Van Der Graaf, Leo Waaijers

Copyright, Fair Use, Scholarly Communication, etc.

Ralf Schimmer’s blog “Making the moves for large scale transition toward Open Access” makes the case to achieve such a transition by means of offsetting deals. The urgency for such a transition is emphasized by the recently announced ambition of the EU to have “Open Access to scientific publications as the best option by default by 2020”i. This should be done “in a cost-effective way, without embargoes, or with as short as possible embargoes”. In this blog, we explore and analyse the scenario whereby this transition will be brought about by successful offsetting deals, meaning that ultimately all articles in …

Can Scientists And Their Institutions Become Their Own Open Access Publishers?, Karen Shashok

Copyright, Fair Use, Scholarly Communication, etc.

This article offers a personal perspective on the current state of academic publishing, and posits that the scientific community is beset with journals that contribute little valuable knowledge, overload the community’s capacity for high-quality peer review, and waste resources. Open access publishing can offer solutions that benefit researchers and other information users, as well as institutions and funders, but commercial journal publishers have influenced open access policies and practices in ways that favor their economic interests over those of other stakeholders in knowledge creation and sharing. One way to free research from constraints on access is the diamond route of …

Down The Rabbit Hole: Who Will Stand Up For Software Patents After Alice?, Daniel A. Taylor

Maine Law Review

In June 2014, the Supreme Court changed patent law completely when it issued a decision in Alice Corporation v. CLS Bank International. In one fell swoop, the Court cast doubt on the validity and enforceability of hundreds of thousands of issued software and technology patents. Since the Alice decision, federal district courts have applied the Alice test and have already invalidated more than one hundred software patents as a matter of law. This Comment discusses why the Alice decision expands the judicial doctrine of creating "exceptions" to the Patent Act, and shifts the statutory factual inquiry of "obviousness" into a …

Copyright Severability: The Hurdle Between 3d-Printing And Mass Crowdsourced Innovation, Alan Fu

Duke Law & Technology Review

3D-printing is gradually becoming widely accessible to the population, and with accessibility come enthusiasm, participation, and ingenuity. Its continued development reflects a potential surge in technological advancement, bestowing on any person with a computer and the right software the ability to design and create. So far, the utilitarian benefits of designs such as blueprints, schematics, and CAD files have always been safeguarded from copyright over-protection through the doctrine of copyright severability. However, the doctrine is applied inconsistently across different circuits and different factual scenarios. This inconsistency can chill innovation by making it impossible to distinguish aesthetic designs protected by copyright …

Drones And Privacy In The Golden State, Brandon Gonzalez

Santa Clara High Technology Law Journal

Drones and Privacy in the Golden State

Managing Cyberthreat, Lawrence J. Trautman

Santa Clara High Technology Law Journal

Managing Cyberthreat

The Territorialization Of The Internet Domain Name System, Marketa Trimble

Boyd Briefs / Road Scholars

Professor Marketa Trimble presented her paper, “The Territorialization of the Internet Domain Name System" at the 17th Annual Intellectual Property Scholars Conference held at Cardozo School of Law in New York, New York, on August 11, 2017. The presentation was one of four in a session devoted to International Trademark & Design Protection.

Abstracts and information about other sessions at the conference are available on the Intellectual Property Scholars Conference website.

Aktuální Trendy A Otázky Práva Duševního Vlastnictví V Usa ("Current Issues In U.S. Intellectual Property Law”), Marketa Trimble

Boyd Briefs / Road Scholars

Professor Marketa Trimble delivered a lecture as part of a seminar at the Ministry of Agriculture of the Czech Republic in Prague on June 13, 2017. The seminar familiarized participants with current trends and issues of intellectual property rights in the USA, in particular with the development of registration of intellectual property rights, institutional and judicial reassurance, abuse or aggressive enforcement intellectual property rights.

The Middleman - Intermediary Liability: United States, Marketa Trimble

Boyd Briefs / Road Scholars

Professor Marketa Trimble appeared on a panel at the 120th International Association for the Protection of Intellectual Property World Conference hosted in Sydney, Australia on October 16, 2017. This panel session discussed intermediary liability in the digital world in key jurisdictions, including the availability of site blocking injunctions and address the practical effects and inherent limitations of such injunctions in the digital era.

Transnational Enforcement, Marketa Trimble

Boyd Briefs / Road Scholars

Winston & Strawn and the Berkeley Center for Law and Technology hosted a seminar on Global Strategies for IP on September 14, 2017 in Palo Alto, California. Professor Marketa Trimble joined an esteemed group of panelists and guests lecturing on the underlying problem of IP infringement outside the U.S., its impact on U.S. companies, and available remedies.