Intellectual Property Law Commons^™

Reconsidering Experimental Use, Rochelle Cooper Dreyfuss

Akron Law Review

In the years since the Supreme Court began to narrow the scope of patentable subject matter, uncertainties in the law have had a deleterious impact on several important innovation sectors, including, in particular, the life sciences industry. There are now initiatives to expand patentable subject matter legislatively. In this article, I suggest that the Supreme Court’s jurisprudence is an outgrowth of the concern that patents on fundamental discoveries impede scientific research. To deal with that issue, any measure to expand the subject matter of patenting should be coupled with a parallel expansion of defenses to infringement liability, including the restoration …

Patent Submission Policies, Ryan T. Holte

Akron Law Review

This Article focuses on the early stage of commercialization communication when a third-party inventor owns an invention protected by a patent that a manufacturer-commercializer may profit from producing—long before any allegation of infringement or litigation. These submission-review communications by unaffiliated third parties are covered by corporate policies known as “patent submission policies.” They are the figurative “front doors” to a company for any third-party inventor, crucial to the commercialization of inventions generally. Unfortunately, patent submission policies have thus far remained unstudied in legal academic scholarship.

This Article collects and analyzes the current variations of patent submission policies adopted by the …

Print Your Own Pandora's Box: 3d Printing, Intellectual Property Law, And The Internet For Lay-Lawyers, Adam Lewental

The Business, Entrepreneurship & Tax Law Review

This comment’s main purpose is to explore intellectual property law meant to protect against manufacturing infringement after manufacturing becomes decentralized. Part II glimpses into the applicable 3D printing technology, with a focus on its current capabilities and future application. Part III explores the rift between utility and design intellectual property protection within the framework of intellectual property protection. Part IV analyzes the overlap of the technology and the law. Part V projects the potential impact of inaction by drawing comparisons to parallel issues, as well as the potential impact of the technology itself.

Brexit And Ip: The Great Unraveling?, Graeme Dinwoodie, Rochelle Dreyfuss

All Faculty Scholarship

In theory, exit from Brexit will free the United Kingdom from the constraints and burdens of EU membership. It will transfer sovereignty back to the people from the technocratic rule of Brussels; replace the jurisprudence of the Court of Justice with the adjudicative power of national courts; and allow the UK to tailor its market regulation in the particular exigencies of the UK economy. Whether, as a general matter, the restoration of a classic Westphalian state enhances value either nationally or globally is an issue we leave to others to debate.We ask a different question: we explore how well the …

From Creativity To Classification: A Logical Approach To Patent Searching, Marian G. Armour-Gemmen

Faculty & Staff Scholarship

Engineering students and professors need to understand and search intellectual property. In the past, librarians have instructed them on using the United States Patent Classification (USPC). In 2015, after a period of transition, the United States Patent and Trademark Office phased out the USPC and began exclusively classifying in the Cooperative Patent Classification (CPC). This adoption presented librarians a challenge of instructing students and professors in the easiest and most effective patent search. By tying patent searching to an example and presenting classification in an understandable fashion using CPC in conjunction with USPC, this writer presents a logical directed search …

The Uneasy Case For Patent Federalism, Roger Allan Ford

Law Faculty Scholarship

Nationwide uniformity is often considered an essential feature of the patent system, necessary to fulfill that system’s disclosure and incentive purposes. In the last few years, however, more than half the states have enacted laws that seek to disrupt this uniformity by making it harder for patent holders to enforce their patents. There is an easy case to be made against giving states greater authority over the patent system: doing so would threaten to disrupt the system’s balance between innovation incentives and a robust public domain and would permit rent seeking by states that disproportionately produce or consume innovation.

There …

Brief Of Amici Curiae Intellectual Property Law Professors In Favor Of Judgement As A Matter Of Law, John A. Conway, Mark Mckenna

Court Briefs

No. 3:14-cv-01849-K
Zenimax Media Inc. v. Oculus VR, LLC

From the Summary of ArgumentPlaintiff’s false designation of origin and false endorsement claims, such as they are, rest on the assertion that defendants falsely represented themselves as the origin of intellectual property on which the Oculus Rift is based. Those claims are barred by Dastar v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), which holds that only confusion regarding the origin of physical goods is actionable under the Lanham Act.

Looking Into Pandora's Box: The Content Of Sci-Hub And Its Usage, Bastian Greshake

Copyright, Fair Use, Scholarly Communication, etc.

Despite the growth of Open Access, potentially illegally circumventing paywalls to access scholarly publications is becoming a more mainstream phenomenon. The web service Sci-Hub is amongst the biggest facilitators of this, offering free access to around 62 million publications. So far it is not well studied how and why its users are accessing publications through Sci-Hub. By utilizing the recently released corpus of Sci-Hub and comparing it to the data of ~28 million downloads done through the service, this study tries to address some of these questions. The comparative analysis shows that both the usage and complete corpus is largely …

Antitrust And Intellectual Property: A Brief Introduction, Keith N. Hylton

Faculty Scholarship

Intellectual property law and antitrust have been described as conflicting bodies of law, and the reason is easy to see. Antitrust law aims to protect consumers from the consequences of monopolization. Intellectual property law seeks to enhance incentives to innovate by granting monopolies in ideas or expressions of ideas. The purpose of this chapter is to explore the purported conflict between antitrust and intellectual property. The chapter is largely descriptive, and focuses on current or developing litigation rather than historical controversies. Many of the modern examples of conflict can be attributed to problems of classification.

How Can The Supreme Court Not “Understand” Patent Law?, Gregory Reilly

Chicago-Kent Journal of Intellectual Property

The Supreme Court does understand patent law. This invited Essay responds to Federal Circuit Judge Dyk’s remarks at the Chicago-Kent Supreme Court IP Review, in particular, his observation that the patent “bar and the academy have expressed skepticism that the Supreme Court understands patent law well enough to make the governing rules” (a view Judge Dyk did not endorse). The idea that the Supreme Court does not understand the law of patents is implausible. Even more generous interpretations of this criticism – that the Supreme Court insufficiently understands innovation policy, insufficiently understands the patent system that Congress desired in creating …

Counter-Ip Conspiracies: Patent Alienability And The Sherman Antitrust Act, Hannibal Travis

University of Miami Law Review

Anticompetitive collusion by intellectual property owners frequently triggered antitrust enforcement during the twentieth century. An emerging area of litigation and scholarship, however, involves conspiracies by potential licensees of intellectual property to reduce or eliminate opportunities by a property’s holders to profit from it, or even to recoup their investments in creating and protecting it. The danger is that potential licensees will collude with one another to suppress royalties or sale prices. This Article traces the history of such litigation, provides an overview of the scholarly and theoretical arguments against monopsonistic or oligopsonistic collusion against licensors of intellectual property, and summarizes …

Food Safety And Security In The Monsanto Era: Peering Through The Lens Of A Rights Paradigm Against An Onslaught Of Corporate Domination, Saby Ghoshray

Maine Law Review

Since our earliest ancestors’ desire for a better hunting weapon to procure food or a better storage facility to avoid spoilage, food safety and security has shaped human social and technological evolution like no other essential element. The need to procure food has shaped our civilization since the first human graced our planet. Food continues to be a pivotal force in humankind’s saga for life and death. Yet, despite stratospheric progress in scientific application surrounding food, food security and safety for all citizens continues to elude mankind. Why do some enjoy a feast, while others suffer in famine? This essay …

Using Signal Theory To Determine Nonobviousness Of Inventions, Michael O'Brien, Idonah Molina

Journal of Intellectual Property Law

No abstract provided.

Intellectual Property Rights In The Kingdom Of Saudi Arabia In Light Of Sharia And The Trips Agreement, Abdulrahman Alabdulkarim

SJD Dissertations

This study aims to illustrate the current state of intellectual property rights (IPR) in Saudi Arabia in light of certain international agreements, specifically TRIPS, as well as Sharia law, that have informed the Saudi legislature in its creation and handling of intellectual property matters. Various matters of IP today may be debated among Saudi's Islamic jurists, which in turn may bring such issues into conflict with Sharia. Such conflicts over matters of IP cannot be dismissed lightly by the Saudi legislators. They must determine the proper enforcement and protection of IRP as stipulated by modern Saudi IP laws and/or by …

Trust: A Model For Disclosure In Patent Law, Ari Ezra Waldman

Indiana Law Journal

How to draw the line between public and private is a foundational, first-principles question of privacy law, but the answer has implications for intellectual property, as well. This project is one in a series of papers about first-person disclosures of information in the privacy and intellectual property law contexts, and it defines the boundary between public and nonpublic information through the lens of social science —namely, principles of trust.

Patent law’s public use bar confronts the question of whether legal protection should extend to information previously disclosed to a small group of people. I present evidence that shows that current …

Introduction: Negotiating Ip's Boundaries In An Evolving World, Stephen Yelderman

Journal Articles

The common element of the articles that make up this Symposium Issue is a refusal to dismiss difficult questions with mechanical formality, to paper over the wrinkles that emerge when the simple models that function in the middle flounder at the edge. As this Symposium Issue will show, those wrinkles have a lot to tell us.

Patent Injunctions On Appeal: An Empirical Study Of The Federal Circuit's Application Of Ebay, Christopher B. Seaman, Ryan T. Holte

Scholarly Articles

More than ten years after the United States Supreme Court’s landmark decision in eBay v. MercExchange, the availability of injunctive relief in patent cases remains hotly contested. For example, in a recent decision in the long-running litigation between Apple and Samsung, members of the United States Court of Appeals for the Federal Circuit divided sharply on whether an injunction was warranted to prevent Samsung from continuing to infringe several smartphone features patented by Apple. To date, however, nearly all empirical scholarship regarding eBay has focused on trial court decisions, rather than the Federal Circuit.

This Article represents the first …

The Field Of Invention, Saurabh Vishnubhakat

Faculty Scholarship

Federal courts can ill afford to ignore, assume, or improvise a pervasively important administrative power that the Patent Office exercises regularly and effectively: technology classification. This agency-court asymmetry has persisted for decades but has now become unmanageably problematic for two related reasons. First, Supreme Court guidance, patent reform legislation, and academic commentary have all broadly rejected long-standing patent exceptionalism in administrative law, while making the Patent Office a major substitute for federal courts in resolving patent disputes. Still, patent doctrine has been slow to correct, particularly in judicial deference to agency action. Second, criticisms of the patent system are highly …

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 …

'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 …

The Defend Trade Secrets Act: Why Interpreting The New Law On Its Own Terms Promotes Uniformity, Patrick Ruelle

Marquette Intellectual Property Law Review

Trade secrets, a category of intellectual property recognized at state and federal law, are integral parts of many corporations’ intellectual property portfolios. A trade secret is a type of intellectual property that is not disclosed by its owner, and is therefore unlike patents, trademarks, or copyrights—all types of information that are disclosed to the public. As a result, trade secrets may represent a viable alternative to patents and copyrights since its value is derived from its secrecy.

In the United States, the laws governing trade secrets have typically been the offspring of the state common law. As each state developed …

Humanizing Intellectual Property: Moving Beyond The Natural Rights Property Focus, J. Janewa Oseitutu

Faculty Publications

This Article compares the natural rights property framework with the human rights framework for intellectual property. These two frameworks share a common theoretical basis in the natural rights tradition, but they appear to lead to conflicting outcomes. Proponents of natural rights to intellectual property tend to support more expansive intellectual property protections. Advocates of a human rights approach to intellectual property contend, however, that human rights will have a moderating influence on intellectual property law. This Article is among the first scholarly works to explore the apparent conflict between these two important frameworks for intellectual property. It concludes that a …

Incentivizing Graffiti: Extending Copyright Protection To A Prominent Artistic Movement, Sara Cloon

Notre Dame Law Review Reflection

This Note outlines a brief history of graffiti, emphasizes the growing importance of graffiti as an accepted and widespread artistic movement, and applies the copyright requirements under the Copyright Act and the Visual Artists Rights Act to graffiti. Finally, this Note argues that under an incentive-based theory of intellectual property, copyright law should not exclude graffiti when it already fits within statutory law, as this would create inefficiency and contradiction in copyright law, which is meant to continually expand to accept new art forms.

2016 Trademark Year In Review, Mark P. Mckenna, Shelby Niemann

Notre Dame Law Review Reflection

This brief Essay reviews some of the most significant developments in trademark law during the past year. In most cases, we have interpreted “year” fairly liberally, particularly to highlight some longer-term trends. We focus on six areas: (1) the constitutionality of section 2(a) of the Lanham Act; (2) the Fourth Circuit’s Belmora decision and the availability of section 43(a) claims when the plaintiff has not used a mark in the United States; (3) the effect of B & B Hardware; (4) injunctive relief and the presumption of irreparable harm; (5) nominative fair use; and (6) initial interest confusion.

Inspiration Versus Exploitation: Traditional Cultural Expressions At The Hem Of The Fashion Industry, Elizabeth M. Lenjo

Marquette Intellectual Property Law Review

The fashion industry is a multitrillion dollar global industry. In 2016, consumers in the United States of America alone, spent almost $380 billion on apparel and footwear. Some may deride the fashion industry as lacking substance and mere “fluff,” but the numbers validate that it is important and extremely valuable “fluff.” After all, clothing and footwear are human necessities and are the main output from this sector that spans from high-end luxury brands to low-end necessities.

Clothing and fashion help define a culture and reflect individual identity. Throughout most of human history, regional variations in style and clothing served as …

What's Your Story? Every Famous Mark Has One: Persuasion In Trademark Opposition Briefs, Candace Hays

Marquette Intellectual Property Law Review

A key contention of legal writing scholarship is that the legal resolution is rooted in storytelling. The law consists of an endless telling and retelling of stories. Clients tell stories to their lawyers, who must figure out how to frame their client’s narrative into a legal context. Lawyers retell their clients’ stories to judges using pleadings, motions, and legal briefs. Judges and administrators retell these stories in the form of an opinion or verdict.

Storytelling in the legal context is an important element of persuasion. For the purpose of this comment, legal storytelling is defined as the use of fiction-writing …

Human Capital As Intellectual Property? Non-Competes And The Limits Of Ip Protection, Viva R. Moffat

Sturm College of Law: Faculty Scholarship

Non-compete agreements have become increasingly common in recent years, imposed on twenty to forty percent (or more) of employees in some industries, both in the knowledge-intensive fields where they might be expected but also in the service industries on low-wage workers. As non-competes have proliferated, they have become increasingly controversial. Much of the discussion revolves around whether the agreements help or hinder innovation and economic growth. While this is also accompanied by some concern about the effect of non-competes on employees, little attention has been paid to the fact that employers use non-competes as tools for protecting intellectual property and …

U.S. State Copyright Laws: Challenge And Potential, Marketa Trimble

Scholarly Works

With copyright law in the United States lying primarily in the realm of federal law, the laws of the U.S. states concerning copyright do not typically attract significant attention from scholars, practitioners, and policy makers. Some recent events have drawn attention to state copyright laws – for example, litigation against a satellite radio provider for infringement of state common-law public performance rights in pre-1972 sound recordings. However, in general, state copyright laws remain largely in the shadow of federal copyright law, and state law is typically not viewed as a particularly useful vehicle for pursuing the policies that copyright law …

Copyright, Jane C. Ginsburg

Faculty Scholarship

This chapter o􀁼ers an overview of copyright in general in common law and civil law countries, with an emphasis on the United States (US) and the European Union (EU). It addresses the history and philosophies of copyright (authors’ right), subject matter of copyright (including the requirement of 􀁿xation and the exclusion of “ideas”), formalities, initial ownership and transfers of title, duration, exclusive moral and economic rights (including reproduction, adaptation, public performance and communication and making available to the public, distribution and exhaustion of the distribution right), exceptions and limitations (including fair use), and remedies. It also covers the liability of …

The Myth Of Uniformity In Ip Laws, Sharon Sandeen

Faculty Scholarship

When Congress enacts federal laws, it is often because of the asserted benefits of a “uniform” law and the, often unspoken, assumption that federal laws are somehow more uniform than uniform state laws. In fact, the uniformity argument was a primary justification for the enactment of both the Defend Trade Secrets Act of 2016 and the EU Trade Secret Directive.

The quest for uniformity, particularly with respect to laws that relate to intellectual property rights, is an old story in the United States. During the drafting of the U.S. Constitution, the existence of inconsistent state laws was a central reason …