Science and Technology Law Commons^™

Interview By Zach Shepard And Chris Mcmillan With David Gindler, Partner, Milbank Llp, And Jasper Tran, Associate, Milbank Llp

IP Theory

No abstract provided.

Cyber Trespass And Property Concepts, Adam Macleod

IP Theory

No abstract provided.

The Future Of Female Inventors In The United States: A Comparative Analysis To The Republic Of Korea, Payton Hoff

IP Theory

No abstract provided.

Saving Face; The Unconstitutional Use Of Facial Recognition On Undocumented Immigrants And Solutions In Ip, Audrey Knutson

IP Theory

No abstract provided.

The Patent Bar Gender Gap: Expanding The Eligibility Requirements To Foster Inclusion And Innovation In The U.S. Patent System, Mary T. Hannon

IP Theory

No abstract provided.

When Standards Collide With Intellectual Property: Teaching About Standard Setting Organizations, Technology, And Microsoft V. Motorola, Cynthia L. Dahl

IP Theory

No abstract provided.

Using Ai To Analyze Patent Claim Indefiniteness, Dean Alderucci, Kevin Ashley

IP Theory

We describe how to use artificial intelligence (AI) techniques to partially automate a type of legal analysis, determining whether a patent claim satisfies the definiteness requirement. Although fully automating such a high-level cognitive task is well beyond state-of-the-art AI, we show that AI can nevertheless assist the decision maker in making this determination. Specifically, the use of custom AI technology can aid the decision maker by (1) mining patent text to rapidly bring relevant information to the decision maker’s attention, and (2) suggesting simple inferences that can be drawn from that information.

We begin by summarizing the law related to …

A Production View On Patent Procurement, Ian C. Schick

IP Theory

When we think of a “production environment,” a law firm patent practice is not usually the first thing that comes to mind. But why not? Patent practices are highly process-oriented, and they certainly involve “manufacturing” work product, primarily in the form of new patent applications and office action responses. This article discusses how, with a production view on patent procurement, exploiting the principles of lean production can be a compelling way to adapt to tough issues presently roiling the patent ecosystem.

Artificial Creativity: A Case Against Copyright For Ai-Created Visual Artwork, Megan Svedman

IP Theory

Artificial intelligence is becoming increasingly complex, and provides examples of compelling, human-like performances. One such artificial intelligence technology is known as Creative Adversarial Network (“CAN”) technology, which relies on inputs of preexisting pieces of art to create pieces of original art that pass as human-made. Whether the coders responsible for CAN-technology should be granted coverage for the resultant art remains an open question in United States jurisprudence. This paper seeks to explore why, given both software’s historical legacy in copyright law and bedrock copyright justifications, extending copyright coverage to the coders responsible for CAN technology would be a grave misstep …

Internet (Re)Search By Judges, Jurors, And Lawyers, H. Albert Liou, Jasper L. Tran

IP Theory

How can Internet research be used properly and reliably in law? This paper analyzes several key and very different issues affecting judges, jurors, and lawyers. With respect to judges, this paper discusses the rules of judicial conduct and how they guide the appropriate use of the Internet for research; the standards for judicial notice; and whether judges can consider a third category of non-adversarially presented, non-judicially noticed factual evidence. With respect to jurors, this paper discusses causes of and deterrents to jurors conducting Internet research during trials; and the recourse available to parties who are adversely impacted by such behavior. …

The Invention Secrecy Act: The Uspto As A Gatekeeper Of National Security, Scott Locke

IP Theory

The United States Patent and Trademark Office (“USPTO”) has the privilege of reviewing hundreds of thousands of inventions each year before the public learns about them. Consequently, the USPTO is uniquely positioned as a funnel through which the Government can collect information about new technologies and determine which ones have implications for the safety and welfare of the nation. Under the Invention Secrecy Act, the Commissioner for Patents may order that an invention for which patent protection is sought be kept secret if disclosure of the invention might be detrimental to national security.

In order for the USPTO to review …

Tc Heartland: It’S Time To Take Stock, Daniel Kazhdan, Sanjiv P. Laud

IP Theory

It has been a little over a year and a half since the Supreme Court issued its groundbreaking venue decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, shaking up the status quo in U.S. patent infringement litigation. The first months after TC Heartland saw a flurry of activity as litigants and courts wrestled with the impact of the decision on pending cases, pondered the true meaning of a “regular and established place of business,” and explored many other questions left by the TC Heartland decision. Eighteen months and several writs of mandamus later, it is now …

Our 19th Century Patent System, Gregory Reilly

IP Theory

The patent system is in flux. Concerns abound about the imperfect fit between traditional patent rights and the Information Age, excessive numbers of patents, overbroad patent rights, poor patent quality, and allegedly exploitative actors, like so-called “patent trolls.” In response, courts, commentators, and Congress have proposed, debated, and sometimes adopted a series of reforms and changes to patent rights, patent doctrines, and patent institutions. The America Invents Act of 2011 (AIA) introduced the most significant changes to the patent system since 1952 and was even described by one commentator (hyperbolically, as we will see) as “the most significant overhaul to …

Proximate Vs. Geographic Limits On Patent Damages, Stephen Yelderman

IP Theory

The exclusive rights of a U.S. patent are limited in two important ways. First, a patent has a technical scope—only the products and methods set out in the patent’s claims may constitute infringement. Second, a patent has a geographic scope—making, using, or selling the products or methods described in the patent’s claims will only constitute infringement if that activity takes place in the United States. These boundaries are foundational features of the patent system: there can be no liability for U.S. patent infringement without an act that falls within both the technical and geographic scope of the patent.

Once liability …

Intellectual Property, Surrogate Licensing, And Precision Medicine, Jacob S. Sherkow, Jorge L. Contreras

IP Theory

The fruits of the biotechnology revolution are beginning to be harvested. Recent regulatory approvals of a variety of advanced therapies—Keytruda (pembrolizumab), Kymriah (tisagenlecleucel), and patisiran—have ushered in an age of “precision medicine” treatments that target patients’ specific genetic, physiological, and environmental profiles rather than generalized diagnoses of disease. Therapies like these may soon be supplemented by gene editing technologies such as CRISPR, which could enable the targeted eradication of deleterious genetic variants to improve human health. But the intellectual property (IP) surrounding precision therapies and their foundational technology remain controversial. Precision therapies ultimately rely—and are roughly congruent with—basic scientific information …

Registration Is Fundamental, Nicole Pottinger, Brian L. Frye

IP Theory

Under the Copyright Act, copyright owners can file infringement actions only if registration of their copyright claim with the Copyright Office “has been made” or “has been refused.” The United States Supreme Court recently granted certiorari in Fourth Estate v. Wall-Street.com, in order to decide whether registration is “made” when a claimant files a registration application or when the Copyright Office registers the claim.

This article argues that the Court should hold that registration occurs when the Copyright Office registers the claim, in order to ensure that federal courts can benefit from the expertise of the Copyright Office. The Copyright …

Background Note: Standard Essential Patents, Innovation And Competition: Challenges In India, Arpan Banerjee

IP Theory

In September 2014, a few months after a landslide election victory, the Indian Prime Minister Narendra Modi announced the launch of “Make in India,” an ambitious program designed to turn India into a global manufacturing hub. One of the factors widely thought to be responsible for Modi’s victory was support from India’s “neo-middle class”—a young, newly- urbanized section of the electorate seeking employment and improved living standards but struggling amidst an economic downturn. In a speech inaugurating Make in India, Modi linked the program with the aspirations of this section of society. Modi stated the need to elevate the status …

How Malleability Matters, Jason Rantanen

IP Theory

In The Malleability of Patent Rights^₁, I developed the concept that patent rights are malleable rather than static and fixed, distinguishing malleability from the idea that patent rights are merely uncertain. Malleability refers to the idea that the strength and scope of patent rights can be altered by the actors who interact with a patent well after it has issued. Patent law is full of mechanisms that allow for these post-issuance changes, yet there seems to be no good theoretical argument that supports malleability. At best, I concluded, the costs of malleability must be weighed against the doctrinal …

Kamil Kubik: The Artist And Copyright Observed, Elizabeth Townsend Gard, Yvette J. Liebesman

IP Theory

For over 60 years—from the time he fled his native Czechoslovakia in 1948 until his death in August 2011—Kamil Kubik created amazing oil paintings and pastels. His art graces the walls of The Breakers in Palm Beach, Florida, the Old Ebbett Grill in Washington, DC, and the homes of Presidents, Governors, and celebrities. Many of his works were also printed as lithographs and serigraphs, and sold at more affordable prices than the four-to-five figures that he received for the originals. Fortunately, he was not dependent on the sale of these prints, as most of the original works were unprotected by …

The Protection Of Performers Under U.S. Law In Comparative Perspective, Daniel Gervais

IP Theory

The majority opinion of the Ninth Circuit panel in Garcia v. Google, Inc. stands for the proposition that an actor has copyright in her performance. The case was described as horrific and generated a significant amount of traffic on listservs and social media.

In the opinion, Chief Judge Kozinski made three key points. First, that there was originality in the performance, as required under Feist. The Feist court found that creative choices were necessary to generate sufficient originality to warrant copyright protection. Using Feist as backdrop, the Garcia majority found that:

An actor’s performance, when fixed, is copyrightable if …

Copyright And Cross-Cultural Borrowing: Indo-Western Musical Encounters, Arpan Banerjee

IP Theory

This article traces the history of how Western rock musicians and hip-hop musicians, separated by many decades, have borrowed elements from Indian music. Conversely, the article also discusses how Indian film music composers have frequently, and rather blatantly, copied Western melodies. While cross-cultural borrowing raises complex socio-political questions, this article focuses on some practical legal questions that arise from such borrowing. The article discusses lawsuits filed by artists in India and the United States — from a much-publicized lawsuit against Dr. Dre by the Indian film music composer Bappi Lahiri, to a more recent lawsuit against another Indian film composer …

No Comment: Will Cariou V. Prince Alter Copyright Judges’ Taste In Art?, Christine Haight Farley

IP Theory

Even before Campbell v. Acuff-Rose Music, Inc. made transformativeness the name of the game in fair use law, judges have been in search of artistic speech in their copyright fair use determinations, especially in appropriation art cases. Judges often find themselves ascribing meaning both to the defendant’s work and the plaintiff’s work when comparing the two in order to determine whether defendant’s art is new. So while many commentators attribute appropriation artist Jeff Koons’s victory in Blanch v. Koons after a string of losses to the development in fair use law contributed by Campbell, I instead argue that …

Are The Courts Singing A Different Tune When It Comes To Music?: What Ever Happened To Fair Use In Music Sampling Cases?, Michael B. Landau

IP Theory

As "fair use" has become more common as a defense to copyright infringement, often successfully, it has not gained any ground in cases involving music sampling. In the years since Campbell v. Acuff-Rose Music, Inc., we have seen the introduction of "transformative use" to fair use analysis. "Transformative use" has led to the holdings that thumbnail reproductions of photographs, parodies of novels, parodies of advertisements, changed artworks, the inclusion of legal briefs in searchable databases, the inclusion of music in film, and the mass digitization of millions of books are all "fair use." Almost every day we read of …

Commentary: Revisiting The Derivative Works Exception Of The Copyright Act Thirty Years After Mills Music, Robert S. Meitus

IP Theory

No abstract provided.

Living Gardens, Living Art, Living Tradition, Roberta R. Kwall

IP Theory

Copyright protection in the United States begins from the moment of a work’s “creation.”1 Although this rule is codified in the statute, the underlying issues of how and when “creation” occurs are rarely, if ever, explored. Under the current law, as soon as an author creates a copyrightable work of authorship and fixes that work in a tangible medium of expression, the work is entitled to protection. This formulation ignores the critical issues of whether fluid works of authorship that are constantly evolving can be subject to copyright protection and, if so, what is the scope of such protection. Not …

Are We Serious About Performers’ Rights?, Mary Lafrance

IP Theory

Do performers have rights in the expressive works they help to create? Historically, the rights of performers have received far less attention that the rights of traditional authors. The law has been reluctant to recognize performers as authors and, to the extent that performers’ rights are recognized, they are secondary to, and more limited than, the rights of traditional authors. Recent developments, however, have brought performers’ intellectual property rights to the forefront. For a number of reasons, performers in the United States have increasingly begun to assert authorship rights in the works they help to create. In addition, recent international …

Pre-1972 Sound Recordings: Why Does The Law Treat Them Differently?, June M. Besek

IP Theory

No abstract provided.

Generic Entry Jujitsu: Innovation And Quality In Drug Manufacturing, W. Nicholson Price Ii

IP Theory

The manufacturing side of the pharmaceutical industry has been neglected in innovation theory and policy, with the unfortunate result of stagnant manufacturing techniques driving major problems for the healthcare system. This innovation failure has roots in ineffective intellectual property incentives and high regulatory hurdles to innovative change. Changes in pure regulation or intellectual property incentives have significant potential to help the innovation deficit, but are not the only possibility for change. A relatively minor regulatory change could harness the powerful dynamics of pioneer/generic competition surrounding generic drug market entry. If pioneer firms were permitted to make label claims committing to …

Duty And Control In Intermediary Copyright Liability: An Australian Perspective, Kylie Pappalardo

IP Theory

In the internet age, copyright owners are increasingly looking to online intermediaries to take steps to prevent copyright infringement. Sometimes these intermediaries are closely tied to the acts of infringement; sometimes – as in the case of ISPs – they are not. In 2012, the Australian High Court decided the Roadshow Films v iiNet case, in which it held that an Australian ISP was not liable under copyright’s authorization doctrine, which asks whether the intermediary has sanctioned, approved or countenanced the infringement. The Australian Copyright Act 1968 directs a court to consider, in these situations, whether the intermediary had the …

Cultural Cognition Of Patents, Lisa Larrimore Ouellette

IP Theory

Simply making empirical progress is not always enough to influence policy, as demonstrated by the polarized public discourse over issues ranging from climate change to gun control. The current discourse over patents appears to have a similar pathology, in which cultural values — such as respect for strong property rights or concern about limiting access to knowledge — shape priors and affect the weight given to new information, such that advocates and policymakers on both sides of the patent wars often fail to acknowledge the ambiguity of existing evidence. This Essay suggests that the “cultural cognition” framework might help scholars …