Intellectual Property Law Commons^™

Technology Law, J. Douglas Cuthbertson, Glen L. Gross

University of Richmond Law Review

No abstract provided.

Pliability Rules, Abraham Bell, Gideon Parchomovsky

Michigan Law Review

In 1543, the Polish astronomer, Nicolas Copernicus, determined the heliocentric design of the solar system. Copernicus was motivated in large part by the conviction that Claudius Ptolemy's geocentric astronomical model, which dominated scientific thought at that time, was too incoherent, complex, and convoluted to be true. Hence, Copernicus made a point of making his model coherent, simple, and elegant. Nearly three and a half centuries later, at the height of the impressionist movement, the French painter Claude Monet set out to depict the Ruen Cathedral in a series of twenty paintings, each presenting the cathedral in a different light. Monet's …

Golden Rice: A Case Study In Intellectual Property Management And International Capacity Building, Stanley P. Kowalski, R. David Kryder

RISK: Health, Safety & Environment (1990-2002)

The authors examine the management of risks associated with intellectual property linked to agri-biotech products, with emphasis on the international movement of agri-biotech intellectual property from industrialized to developing nations.

Harmonizing Scope And Allocation Of Patent Rights In Europe - Towards A New European Patent Law, Christopher Heath

Marquette Intellectual Property Law Review

A rise in European Patent litigation has increased awareness of patent enforcement and its difficulty given the lack of harmony between the European Patent Convention (EPC) and the European Community (Community) patent laws. The EPC and the Community have both attempted to harmonize certain aspects of their patent laws. In 1999, the EPC Member States developed four options for structuring a European system of patent enforcement. In 2000, the Community developed its regulation system known as the Community Patent Regulation. The author believes that the two proposals are great attempts but fail to address two key aspects: (1) the allocation …

Will The United States Take The Plunge Into Global Patent Law Harmonization? A Discussion Of The United States' Past, Present, And Future Harmonization Efforts., Anneliese M. Seifert

Marquette Intellectual Property Law Review

Ms. Seifert discusses the factors that shape harmonization of a global patent law system. She touches on how the philosophical differences of the United States, Japanese, and European patent systems have created difficulty in establishing a cohesive patent law system. The author then discusses international harmonization efforts such as WIPO and TRIPs and national patent law changes, such as the eighteen-month publication period created under the American Inventors Protection Act. In conclusion, the author discusses the future of patent harmonization, suggesting the need for a global, uniform method of patent interpretation for meaningful harmonization.

Legal Protection For Software: Still A Work In Progress, Robert W. Gomulkiewicz

Articles

Software began as geekware-something written by programmers for programmers. Now, software is a business and consumer staple. Cryptic character-based user interfaces have given way to friendly graphical ones; multi-media is everywhere; people own multiple computers of varying sizes; computers are connected to one another across the globe; email and instant electronic messages have replaced letters and telephone calls for many people.

The issue of whether the law should protect software seems quaint to us now. Over the past twenty-five years, legislatures and courts have concluded that copyright, patent, trade secret, trademark, and contract law all can be used to protect …

Thoughts On Dastar From A Copyright Perspective: A Welcome Step Toward Respite For The Public Domain, Lynn Mclain

All Faculty Scholarship

Though other questions remain unresolved and other leaks unstemmed, Dastar is a welcome step towards regaining the public domain, and towards establishing that the confines of the public domain, with regard to nondeceptive reproduction of public domain works, and preparation of derivative works based upon them, must be delimited by only the copyright and patent laws.

This article will provide a background discussion of the copyright and patent schemes and their delineation of the public domain. It then will discuss the role of trademark law in that balance, and some of the case law regarding both § 43 of the …

Current Developments In Cyberspace, Eric Easton

All Faculty Scholarship

No abstract provided.

The United States Court Of Appeals For The Federal Circuit: The Promise And Perils Of A Court Of Limited Jurisdiction , Randall R. Rader

Marquette Intellectual Property Law Review

Honorable Randall Rader, of the United States Court of Appeals for the Federal Circuit discusses current criticisms of the Federal Circuit and the speed of which the Circuit sets precedent. Before addressing these issues, Judge Rader posits a belief that the standard by which the Circuit is being judged is incorrect. Judge Rader's speech gives a foundation by which a correct standard should be exacted, examples of the current atmosphere leading to the precedents being set, and generally addresses why the Federal Circuit is fundamentally unique from other jurisdictions.

Better Patent Law For International Commitment - The Amendment Of Chinese Patent Law, Jiwen Chen

Richmond Journal of Global Law & Business

On August 25, 2000, the Chinese National People’s Congress (“NPC”) passed and amendment to the Chinese Patent Law. The Chinese Patent Law was enacted in 1984 and first amended in 1992. This second Amendment, in August of 2000, was made in anticipation of China’s accession to World Trade Organization (“WTO”) and in response to the need for protection of domestinc intellectual property rights.

Internet Business Model Patents: Obvious By Analogy, Margo A. Bagley

Faculty Articles

Part I of this Article provides a look at Internet business model patents in light of key patentability requirements mandated by the Patent Act. Part II traces the evolution of the analogous art component of the non-obviousness determination and illustrates how the malleability of the doctrine, as exemplified in several Court of Appeals for the Federal Circuit decisions, has particular relevance to prior art definitions for Internet business model patents. Part III of this Article then examines the doctrine of equivalents and explores how the likelihood of improper application of this doctrine in the Internet business model context is increased. …

Taking A Step Beyond Maxwell To Tame The Doctrine Of Equivalents, Matthew C. Phillips

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Analyze This: A Law And Economics Agenda For The Patent System, Rebecca S. Eisenberg

Vanderbilt Law Review

Patent law as a field of academic study has benefited enormously from the attention of economists. Indeed, law professors are relative newcomers to the academic patent field, trickling in behind the economists in small but growing numbers as patent law evolves from an arcane, practitioner-taught specialty to a less marginal role in law school curriculums.' Yet considering the prominence of economists in academic discourse about the patent system, they have had relatively little impact on patent law and policy. One reason for this disparity between the role of economists in the academy and in policy arenas may be the indeterminacy …

Review Of The 1999 Patent Law Decisions Of The United States Court Of Appeals For The Federal Circuit , Phil N. Makrogiannis

American University Law Review

No abstract provided.

The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

Section 102(b) of Title 35 precludes an inventor from receiving a patent if the invention was on sale in the United States more than one year prior to filing a patent application. The statutory structure of the on-sale bar has left the term "invention" ill-defined, leading to considerable uncertainty in the courts. Hoping to add predictability to this unsettled area of law, the Supreme Court in Pfaff v. Wells Electronics, Inc. articulated a new standard that requires an invention be "ready for patenting" in order for the bar to apply.

This new test, as applied by the lower courts, has …

Death Of A Myth: The Patenting Of Internet Business Models After State Street Bank, William D. Wiese

Marquette Intellectual Property Law Review

The case of State Street Bank & Trust Co. v. Signature Financial Group, Inc., which extended patent protection to a computerized financial method, was regarded by many as a revolutionary expansion of patentable subject matter. The author, however, argues that this notion is overstated. The author explains that the State Street Bank decision will be of little consequence because the business exception was a myth in the first place. The author reasons that courts often cited other bars to patentability when denying business methods protection. Furthermore, the author argues that the recent relaxation of the patentability requirements of computer related …

A Higher Nonobviousness Standard For Gene Patents: Protecting Biomedical Research From The Big Chill, Sara Dastgheib-Vinarov

Marquette Intellectual Property Law Review

In In re Deuel, the United States Court of Appeals for the Federal Circuit ruled in favor of a patent applicant and found that DNA molecules encoding a protein were nonobvious under section 103 of the Patent Act. Since then, companies specializing in genomic research have filed numerous DNA sequence applications, instigating a troubling trend of patent filings within the biotechnology field. Currently these companies are stockpiling partial DNA sequence patents which have no known function. This Comment presents scientific, political, religious, and ethical justifications for heightening the nonobviousness standard for gene-related patents under section 103 of the Patent Act. …

Global Technology Protection: Moving Past The Treaty, Todd M. Rowe

Marquette Intellectual Property Law Review

This Comment examines whether the conformity achieved by international technology treaties is at the expense of utility. Specifically, the author posits that international agreements do not serve the needs of rich and poor nations alike. Instead, the author advocates for increased autonomy by claiming better solutions will be produced when nations enter bi-lateral agreements. In reaching this conclusion, the Comment analyzes the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and the problems created for developing nations through global technology protections. The author uses the United States' patent, copyright, and trademark protections as an illustrative example of how successful …

Dickinson V Zurko: An Amicus Brief, Thomas G. Field, Craig Allen Nard, John F. Duffy

Marquette Intellectual Property Law Review

Professors Field, Nard, and Duffy submitted an amicus brief to the Supreme Court in the case of Dickinson v. Zurko. In Dickinson, the Federal Circuit concluded that the Patent and Trademark Office's factual findings must be reviewed under a clearly erroneous standard and not the substantial evidence standard set out in the Administrative Procedure Act. However, the amicus brief asserted that the PTO is subject to the standards of judicial review set forth in the APA.

No Trade Dress Protection For Anything Disclosed In A Patent: A Defense Of The Supreme Court's Per Se Restriction, Glen A. Weitzer

Marquette Intellectual Property Law Review

Conflicts between patent and trademark law arise when the owner of a patent seeks to protect the physical configuration disclosed in a patent. Patent law requires that information in a patent be dedicated to the public upon expiration of the patent; however, trademark law can be used upon expiration of the patent to continue to exclude certain aspects of the art disclosed in the patent. This note explores existing jurisprudence on the conflict between patent and trademark law and proposes a remedy to this conflict.

Sweeping The E-Commerce Patent Minefield: The Need For A Workable Business Method Exception, William Krause

Seattle University Law Review

This Comment will trace the history of patent protection for methods of doing business over the past two decades, then it will inspect the problems that this protection has wrought: litigation, increased barriers to e-commerce entrepreneurs, and the threat of a less vibrant electronic marketplace. Because each traditional method of protecting intellectual property -- patent, copyright, and trade secret -- has strengths and limitations in protecting advancements in software technology, this Comment will examine the relative benefits of each method. Finally, this Comment will suggest a simple, easily applied test that will offer patent protection to true innovations while reserving …

The More Things Change, The More They Stay The Same: Implications Of Pfaff V. Wells Electronics, Inc. And The Quest For Predictability In The On-Sale Bar, Timothy R. Holbrook

Faculty Articles

This Article posits a two prong approach to the on-sale bar. First, for the anticipatory version, the courts should expressly incorporate the law of enablement under 35 U.S.C. § 112 and of utility under 35 U.S.C. § 101 into the on-sale bar, thus providing a well-known body of law to promote predictability. Procedurally, the courts should establish a hierarchy of evidence, similar to the approach used in claim construction, that considers certain, more readily available information as the most pertinent while eschewing the use of expert testimony and other litigation based evidence. Second, for the obviousness version of the on-sale …

The Paradoxes Of Free Software, Stephen M. Mcjohn

Suffolk University Law School Faculty Works

This paper describes the legal structure of open source software and analyzes the likely issues to arise. A combination of copyright law and trademark law serves to permit the free distribution of open source software. The software is kept under copyright, but freely licensed under one of various open source licenses. The legal structure of open source is an elegant and robust use of intellectual property law that turns the customary use of intellectual property on its head, by using intellectual property laws, which normally are used to guard exclusive rights, to safeguard free access to and use of software. …

Obviousness And New Technologies, John Kasdan

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Echoes Of Scientific Truth In The Halls Of Justice: The Standards Of Review Applied By The United States Court Of Appeals For The Federal Circuit In Patent-Related Matters , Lawrence M. Sung

American University Law Review

No abstract provided.

Using Alternative Dispute Resolution To Resolve Patent Litigation: A Survey Of Patent Litigators , Eugene R. Quinn, Jr.

Marquette Intellectual Property Law Review

Mr. Quinn provides an empirical overview of patent litigation, after which, he notes that the true growth in patent litigation has not occurred in the courtroom trial of disputes, but in the pretrial process. He concludes that increasing reliance on alternative dispute resolution, particularly mediation, is responsible for both the dramatic number of cases terminating during the pretrial process and the constant number of patent trials. The author reports the results of a survey taken of over one hundred patent litigators. The focus of the survey was to determine the attitude of patent litigators toward mediation or arbitration and their …

The Supreme Court And Patent Law: Does Shallow Reasoning Lead To Thin Law, Donald S. Chisum

Marquette Intellectual Property Law Review

Professor Chisum explains that the role of the Federal Circuit Court as the "Supreme Court" of patent law may be changing. He notes the significance of recent United States Supreme Court cases addressing patent law issues. In addition, Professor Chisum evaluates the quality of recent landmark decisions in which the Court has examined patent issues. Chisum first notes that the general attitude of the Court reflects skepticism and hostility toward the patent system. In addition, Chisum considers the quality of reasoning undertaken by the Supreme Court and argues that, as opposed to the Federal Circuit, it is often weak, illogical, …

Is This Conflict Really Necessary?: Resolving An Ostensible Conflict Between Patent Law And Federal Trademark Law, Thomas F. Cotter

Marquette Intellectual Property Law Review

Professor Cotter discusses the inherent conflict between patent and trademark law in product configuration - a species of trade dress - that is disclosed within the text of a utility patent or on which the claims of a utility patent read. Commentators have disagreed as to whether or not such disclosed features should enter the public domain upon expiration of the patent, regardless of whether they would otherwise qualify for trademark protection. Professor Cotter illustrates why the conventional belief that patents are monopolies is, in general, false. He then provides a brief overview of relevant trademark law principles. Professor next …

A Right Without A Remedy: The Unenforceable Medical Procedure Patent , Scott D. Anderson

Marquette Intellectual Property Law Review

Mr. Anderson discusses the current status of medical procedure patents in the United States through the examination of a survey conducted on patent law and the patentability of inventions. Mr. Anderson examines the history of medical process patents and the controversy surrounding such patents and offers an analysis of current law. The analysis focuses on the Pallin v. Singer decision and the congressional reaction to the holding that eventually led to the passage of 35 U.S.C. § 287(c). As a result of the Pallin decision and 35 U.S.C. § 287(c), a patent may be granted for a medical procedure, but …

March-In Rights Under The Bayh-Dole Act: Public Access To Federally Funded Research , Mary Eberle

Marquette Intellectual Property Law Review

Ms. Eberle examines the Bayh-Doyle Act of 1980, which allows small entities to retain patent title to inventions arising from federally funded research. The Act includes a march-in rights provision, which permits a petitioning third party to force the small entity to grant the petitioner a license where the original licensee fails to commercialize the technology. Ms. Eberle discusses the substance of the Act, focusing on its march-in rights provision. Next, Eberle chronicles a march-in rights attempt by the biotechnology company CellPro to obtain a license to Johns Hopkins University patents and the subsequent court battle. After offering an analysis …