Intellectual Property Law Commons^™

Pledging Patents For The Public Good: Rise And Fall Of The Eco-Patent Commons, Jorge L. Contreras, Bronwyn H. Hall, Christian Helmers

Utah Law Faculty Scholarship

Commons and pledge structures have been used to achieve various goals of patent holders, including the advancement of social and philanthropic aims. The article analyzes the formation and structure of a widely acclaimed effort to pool patents for the promotion of green/clean technologies – the Eco-Patent Commons (EcoPC) – as well as its actual impact on technology diffusion and the factors leading to its demise in 2016. We combine quantitative econometric techniques with qualitative interviews to paint the most complete picture of this innovative and ambitious effort to date. Our quantitative results show that the patents contributed to the EcoPC …

Foreign Patent Decisions And Harmonization: A View Of The Presumption Against Giving Foreign Patent Decisions Preclusive Effect In United States Proceedings In Light Of Patent Law International Harmonization, Roberto Rosas

Faculty Articles

Where there is a United States patent, there are also likely multiple foreign counterpart patents. Armed with a patent, a holder can then move to stop others from infringing on his invention, and more often than not, the defendant will argue that the United States patent is invalid, often citing foreign decisions and proceedings in support of that claim. Given the territorial nature of patents and the fact that countries have different requirements and standards for granting patents, United States courts have applied a presumption against giving preclusive effect to foreign patent decisions. The courts, however, have made clear that …

Transparency And Fairness In Machine Learning Applications, Jim Shook, Robyn Smith, Alex Antonio

Texas A&M Journal of Property Law

Businesses and consumers increasingly use artificial intelligence (“AI”)— and specifically machine learning (“ML”) applications—in their daily work. ML is often used as a tool to help people perform their jobs more efficiently, but increasingly it is becoming a technology that may eventually replace humans in performing certain functions. An AI recently beat humans in a reading comprehension test, and there is an ongoing race to replace human drivers with self-driving cars and trucks. Tomorrow there is the potential for much more—as AI is even learning to build its own AI.

As the use of AI technologies continues to expand, and …

Ethics Of Using Artificial Intelligence To Augment Drafting Legal Documents, David Hricik, Asya-Lorrene S. Morgan, Kyle H. Williams

Texas A&M Journal of Property Law

This article focuses on the second step in the due diligence process. While it addresses the question of competency, it focuses more on the further steps a lawyer must take to ensure that the use of the service as part of the representation of a client is consistent with the lawyer’s other ethical obligations. While it is important to emphasize that competency requires that the lawyer must be able to assess whether the work product is comparable to what a human would produce, competency is of course a fact-depending inquiry: whether a will is competently drafted turns on the standard …

Bridges Ii: The Law–Stem Alliance & Next Generation Innovation, 112 Nw. U. L. Rev. Online 147 (2018), Daryl Lim

UIC Law Open Access Faculty Scholarship

No abstract provided.

Truth, Justice, And The Shaanxian Way: Revisiting The Story Of Qiu Ju, Ilhyung Lee

Cardozo Journal of Conflict Resolution

Qiu Ju da guansi is a Chinese film by renowned director Zhang Yimou. Known as The Story of Qiu Ju in the West, the main character is a woman in rural China who seeks a satisfactory resolution after her husband is physically assaulted by the local representative of a state agency. After its release in 1992, the film received significant attention from reviewers, and, over the years, commentators from various disciplines. This Article builds on that commentary, with a focus on the film's lessons about culture, dispute resolution, the legal process, and their intersection. After a summary of the story's …

Ai & Ip Innovation & Creativity In An Age Of Accelerated Change, 52 Akron L. Rev. 813 (2018), Daryl Lim

UIC Law Open Access Faculty Scholarship

From a glimmer in the eye of a Victorian woman ahead of her time, AI has become a cornerstone of innovation that “will be the defining technology of our time.” Around 2016, the convergence of computing power, funding, data, and open-source platforms tipped us into an AIdriven 4IR. AI can make a difference in accelerating disruptive innovation by bringing a data-driven approach to invention and creation. To do so, the law must embrace change and innovation as an imperative in a journey towards an ever-shifting horizon. In the creative arts, the work for hire doctrine provides a pragmatic legal vehicle …

Non-Conventional Copyright: Do New And Atypical Works Deserve Protection?, Enrico Bonadio & Nicola Lucchi Eds., Edward Elgar Publishing, 2018, 128-149., Cathay Y. N. Smith

Faculty Books & Book Chapters

No abstract provided.

Preserving Film Preservation From The Right Of Publicity, Christopher Buccafusco, Jared Vasconcellos Grubow, Ian J. Postman

Cardozo Law Review de•novo

In this comment, we argue that whatever courts and legislatures decide to do about the other issues raised by digital animation, they should preserve the ability to use digital technology to restore and remaster existing works. In this case, at least, the benefits of digital reanimation thoroughly swamp any possible costs (and frankly, we have a hard time finding any meaningful costs). Courts and legislators should ensure that publicity rights are never allowed to trump society’s interest in having access to already created works of culture.

Masthead

Catholic University Journal of Law and Technology

No abstract provided.

Deepfake Videos: When Seeing Isn't Believing, Holly Kathleen Hall

Catholic University Journal of Law and Technology

Videos, known as deepfakes, use readily available software to create a work that shows people saying and doing things they may never have uttered or engaged in. The technology making the videos appear very authentic is advancing at such a rate that people may not be able to detect if the videos are fact or fiction. Given the hasty acceptance of other forms of fake news in society, deepfake videos have the ability to affect the nature of information the public receives about candidates and policies. This study examines the potential use of deepfake videos in the democratic process, analyzes …

Intellectual Property And The Prisoner’S Dilemma: A Game Theory Justification Of Copyrights, Patents, And Trade Secrets, Adam D. Moore

Fordham Intellectual Property, Media and Entertainment Law Journal

In this article, I will offer an argument for the protection of intellectual property based on individual self-interest and prudence. In large part, this argument will parallel considerations that arise in a prisoner’s dilemma game. In brief, allowing content to be unprotected in terms of free access leads to a sub-optimal outcome where creation and innovation are suppressed. Adopting the institutions of copyright, patent, and trade secret is one way to avoid these sub-optimal results.

Presuming Patent Inventorship Without Further Examination: A Double-Edged Sword For Aerospace Companies, Jake Winslett

Journal of Air Law and Commerce

No abstract provided.

The Erie/Sears/Compco Squeeze: Erie’S Effects On Unfair Competition And Trade Secret Law, Sharon Sandeen

Faculty Scholarship

On the occasion of the 80th anniversary of the Supreme Court's famous decision in Erie Railroad v. Tompkins, this article explores the consequences of that decision on the development of unfair competition law in the United States. It details efforts by lawyers and legislators to grapple with those consequences and provides an overview of the evolution of unfair competition law in the U.S. since Erie, with a particular focus on trade secret law.

The Drug Repurposing Ecosystem: Intellectual Property Incentives, Market Exclusivity, And The Future Of "New" Medicines, Sam F. Halabi

Faculty Publications

The pharmaceutical industry is in a state of fundamental transition. New drug approvals have slowed, patents on blockbuster drugs are expiring, and costs associated with developing new drugs are escalating and yielding fewer viable drug candidates. As a result, pharmaceutical firms have turned to a number of alternative strategies for growth. One of these strategies is "drug repurposing"-finding new ways to deploy approved drugs or abandoned clinical candidates in new disease areas. Despite the efficiency advantages of repurposing drugs, there is broad agreement that there is insufficient repurposing activity because of numerous intellectual property protection and market failures. This Article …

The Trademark Disclaimer Provision Of The Lanham Act: Is Uspto Flexibility Worth Litigant Ambiguity?, 17 J. Marshall Rev. Intell. Prop. L. 305 (2018), Scott Locke

UIC Review of Intellectual Property Law

Most trademark applicants and the attorneys who counsel them are familiar with the requirement that they disclaim terms within their trademarks because those terms are descriptive or generic. The United States Patent and Trademark Office’s authority to direct applicants to disclaim terms is codified in the Trademark Disclaimer Provision of the Lanham Act, which provides examiners with a great deal of discretion. The same provision has been interpreted as providing applicants with the options of: taking conflicting positions, e.g., that the term is neither descriptive nor generic in the context of their marks, when asserting common law rights; and pursuing …

Patent Pilot Program Perspectives: Patent Litigation In The Northern District Of Illinois, 17 J. Marshall Rev. Intell. Prop. L. 348 (2018)

UIC Review of Intellectual Property Law

A Patent Pilot Program, or PPP, is geared towards giving designated judges in various districts more experience with patent cases. The Volume 17 RIPL Executive Board interviewed several participating judges in the Northern District of Illinois’ PPP.

This note is comprised of interviews with Judge Thomas M. Durkin, Judge Matthew F. Kennelly, and Judge Rebecca R. Pallmeyer of the United States District Court, Northern District of Illinois; taken over the course of May and June of 2017 by the Volume 17 RIPL Board members Kaylee Willis and Benjamin Lockyer. Its contents compile a uniform effort by both the judges interviewed …

Deja Vu Or Copyright Infringement? Why Melania Trump Infringed On Michelle Obama's Copyrighted Speech Through Subconscious Copying, 17 J. Marshall Rev. Intell. Prop. L. 360 (2018), Danielle Mobley

UIC Review of Intellectual Property Law

In 2016, Melania Trump recited a beautiful speech at the Republican National Convention that had portions which sounded exactly like a speech given by Michelle Obama at the Democratic National Convention in 2008. Mrs. Trump feigned ignorance of the 2008 DNC speech, and essentially the speech was superseded by another news story within a week. While some critics claim plagiarism, Mrs. Obama could have a potential copyright infringement claim against Mrs. Trump based on the context of the speech, the actual portions lifted from Mrs. Obama’s speech, and the doctrine of subconscious copying. This article first examines the elements Mrs. …

The Supreme Court: A Help Or A Hindrance To The Federal Circuit's Mission?, 17 J. Marshall Rev. Intell. Prop. L. 298 (2018), Donald Dunner

UIC Review of Intellectual Property Law

Before the establishment of the Federal Circuit, the system of patent enforcement was deeply flawed, with the circuit courts then responsible for reviewing district court patent decisions harboring widely varying attitudinal views in the interpretation of the patent law. Suggestions for solving the problem through a single specialized appellate patent court were consistently rejected due to general hostility to specialized courts. The formation of the Federal Circuit in 1982 initially appeared to solve the problem in providing uniform and predictable rules governing the enforcement of patents, an essential aspect of the court’s mission. The Supreme Court did not provide any …

Knowledge/Skill Standards Of A "Person Skilled In Art": A Concern Less Visited, 17 Marshall Rev. Intell. Prop. L. 588 (2018), Naina Khanna, Jasmeet Gulati

UIC Review of Intellectual Property Law

The law is differential across jurisdictions when it comes to the skill standard required for the PSITA/PHOSITA in Patent Law. This article will analyze the various levels of skill addressed throughout European, Indian, and U.S. Patent Law. Whether the level of skill be ‘ordinary’, ‘extraordinary’ or otherwise, discrepencies exist throughout the court systems, manuals of examination and the like. Much hinges on the determination of patentability when the expertise or level of skill of the PSITA/PHOSITA is often vague and indeterminative. It is submitted that since the advancement in technology is taking place at a very rapid scale and every …

The Balances Of Two Trademark Rights: Generation Systems In Japan's Trademark Laws, 17 J. Marshall Rev. Intell. Prop. L. 608 (2018), Weiguang Wu

UIC Review of Intellectual Property Law

This article consists of 6 sections. In Section I, the article mainly introduces the basic theory of a trademark right as a private right and its purpose. A trademark right as a private right is purposeful to protect goodwill of trademark users, which is their labor fruits during trademark use in the course of business. A trademark right generated by use is called a right subsisting upon use (RSUU) system, which is mainly adopted in common law countries. A trademark right generated by registration is called a right subsisting upon registration (RSUR) system, which is mainly adopted by civil law …

Law, Brands, And Innovation: How Trademark Law Helps To Create Fashion Innovation, 17 J. Marshall Rev. Intell. Prop. L. 492 (2018), Dayoung Chung

UIC Review of Intellectual Property Law

This Article explores the role of trademark law in the fashion industry. For years, the fashion industry has drawn legal scholars’ attention for its maintenance of creative endeavors within a legal environment that offers limited protection against design copying. Some influential legal studies argued that copying paradoxically helps the fashion industry as unregulated copying stimulates the creation of new designs. Yet, this Article observes that the driver for new design creation is already built into the contemporary fashion industry. The question should rather be directed at who creates fashion and how the role of the law, if any, aids the …

The Slants Decision Understates The Value Of Trademark Registration In Promoting Speech - Correctly Decided With A Conclusory Analysis, 17 J. Marshall Rev. Intell. Prop. L. 380 (2018), David Brezina

UIC Review of Intellectual Property Law

The highly anticipated case of Matal v. Tam resulted in the band, The Slants, eventually being able to register their band name as a trademark, with a goal in mind to reclaim Asian stereotypes. Despite this decision, it is not immediately clear how having a registration enhances the registrant’s right to use the mark as a part of free speech, when the Court observes that Tam could call his band The Slants even without registration. This article touches on the Tam case, by analyzing both the positive and negative rights that federal trademark registration yields. By expanding on a variety …

Delaying Competition: How Sound Public Policy And Rigorous Antitrust Scrutiny Can Be Applied To Controversial Patent Settlements, 17 J. Marshall Rev. Intell. Prop. L. 655 (2018), Sam Hensel

UIC Review of Intellectual Property Law

The rising costs of prescription drugs are a growing concern for many Americans. The restraint of trade for pharmaceutical drugs is a cause of rising costs for consumers, as companies seek to push potential competitors out of the market to maintain profits. This unlawful restraint of trade will be discussed in this comment. Specifically, this comment will focus on "Pay for Delay" agreements, mostly between generic versus brand name pharmaceutical manufacturers. The proliferation of these agreements only leads to an unsustainable market that discourages innovation and advancement, and promotes fraud, as invalid patents are used as leverage to prevent generics …

A Battle Between Moral Rights And Freedom Of Expression: How Would Moral Rights Empower The "Charging Bull" Against The "Fearless Girl"?, 117 J. Marshall Rev. Intell. Prop. L. 672 (2018), Tzu-I Lee

UIC Review of Intellectual Property Law

No abstract provided.

Foreign Patent Decisions And Harmonization: A View Of The Presumption Against Giving Foreign Patent Decisions Preclusive Effect In United States Proceedings In Light Of Patent Law International Harmonization, 18 J. Marshall Rev. Intell. Prop. L. 1 (2018), Roberto Rosas

UIC Review of Intellectual Property Law

This article takes a look at the important issue of global harmonization in patent law. The article takes a snapshot at issues such as recognition and enforcement of foreign patent decisions, and how courts in the United States resolve foreign patent laws disputes brought before them. Although there are numerous legal topics that can be addressed in the subject of international patent law, this article takes special focus on the pressure put on the strong presumption of territoriality in patent law because of the rapid and still growing globalization and internalization of markets and intellectual property; while also discussing on …

Trade Secret Law: The Role Of Information Governance Professionals, 18 J. Marshall Rev. Intell. Prop. L. 27 (2018), William Lynch Schaller

UIC Review of Intellectual Property Law

Trade secrets are rapidly becoming the most important assets of many businesses. Information Governance (IG) professionals can and should play an integral part in managing company trade secrets, but not all companies have IG professionals and not all IG professionals understand the meaning of "trade secrets." This article maps the many facets of trade law and practice that are of potential interest to all IG professionals. It also highlights the different roles IG professionals can play with respect to trade secrets, from cataloging to monitoring to testifying.

When Open Source Software Encounters Patents: Blockchain As An Example To Explore The Dilemma And Solutions, 18 J. Marshall Rev. Intell. Prop. L. 55 (2018), Huang-Chih Sung

UIC Review of Intellectual Property Law

The original blockchain developers set the core programs, development interfaces, and application software of the blockchain as open source software, which are open to all developers for free. They have never thought of collecting royalties by claiming copyright, nor did they apply for patents. Since then, however, many follow-up blockchain developers applied the core programs to further developments and filed a large numbers of patent applications, causing the original blockchain developers to be very concerned about whether these patents will otherwise slow down or even endanger the innovation of blockchain technology. Consequently, finding legal solutions for the conflicts between open …

Making The List: What Does It Take To Make A Patient List A Trade Secret?, 18 J. Marshall Rev. Intell. Prop. L. 83 (2018), Sara Ghantous

UIC Review of Intellectual Property Law

What exactly makes a patient list a trade secret? This question has been a topic of heated debate for the last thirty years. It turns out that there is no right answer to this question. Long story short: it depends. The enumerated factors in the Uniform Trade Secrets Act (UTSA) lack specificity, and the courts fan to clarify how to meet the UTSA’s ambiguous standards. Because there is no clear approach to determine whether a patient list enjoys trade secret protection, there is no way for physicians to know the proper measures to take in gathering, maintaining, and protecting patient …

Insta-Fringement: What Is A Fair Use On Social Media?, 18 J. Marshall Rev. Intell. Prop. L. 102 (2018), Caroline E. Kim

UIC Review of Intellectual Property Law

The phenomena of the Internet reinforced the need for well-defined intellectual property rights. In turn, the enactment of the General Data Protection Regulation emphasized the importance of social media and privacy. However, the problem remains that the law has not yet fully embraced the relationship between many technological advancements and social media. The widespread use of social media illustrates that contemporary copyright law must address what constitutes “shareable content.”

This article examines what social media platforms can do in order to provide a clearer definition of what constitutes a “fair-use” on their platforms. A data controller such as Instagram must …