Intellectual Property Law Commons^™

The Balance Of Power In Patent Law: Moving Towards Effectiveness In Addressing Patent Troll Concerns, Ahmed J. Davis, Karolina Jesien

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Internet Immunity: The Limits Of Contributory Trademark Infringement Against Online Service Providers, Rebecca Dunlevy

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Trademark Apologetic Justice: China And The Three Laws, Xuan-Thao Nguyen

Articles

The article will proceed as follows. Part I discusses the three bodies of law constituting China’s trademark jurisprudence by tracing the development of Trademark Law, Anti-Unfair Competition Law and Civil Law. All of these laws contain relevant provisions pertaining to trademark reputation and remedies, including injunction, damages and public apology to eliminate any bad effects. As China Supreme People’s Court has a significant role in shaping trademark jurisprudence and apologetic justice, Part I also analyzes judicial directives that provide guidance and instructions to the lower courts in addressing trademark reputation remedies.

An analysis of only statutes and judicial directives, however, …

Apologies As Intellectual Property Remedies: Lessons From China, Xuan-Thao Nguyen

Articles

It is a frequent refrain that “the world is shrinking.” In this same vein, the global influence of China is clearly rising. Chinese businesses are becoming more prominent in the global market, and as such, the influence and effect of Chinese law is likewise gaining in import. Chinese intellectual property law is no different.

One notable aspect of Chinese intellectual property law is the availability of apology as a remedy. Despite a culture that places a high value on apology, and considerable legal scholarship and precedent regarding apology as remedy, many in the United States scoff at the notion of …

Patents As Promoters Of Competition: The Guild Origins Of Patent Law In The Venetian Republic, Ted Sichelman, Sean O'Connor

Articles

Part II of this Article describes the artisan and merchant guild systems of the Venetian Republic. Part III explores the emergence of the patent system as a means for foreigners and Venetian citizens to compete with the guilds, as well as the eventual addition of negative exclusive rights to the basic license form of positive patent privileges. In so doing, contrary to the speculation of some scholars, we reject with near certainty the contention that the first patent law statute granting exclusionary rights for—in modern parlance—technological inventions was a silk-specific directive enacted by the Venetian Grand Council in the late …

Hired To Invent Vs. Works Made For Hire: Resolving The Inconsistency Among Rights Of Corporate Personhood, Authorship, And Inventorship, Sean M. O'Connor

Articles

This Essay focuses on the interrelation of three legal doctrines that affect the allocation of ownership and attribution of products of the human mind. The first, corporate personhood, grants corporations rights of personhood similar to those of natural persons. The second, the work-made-for-hire doctrine (WMFH) under copyright law, allocates ownership and attribution for copyrightable works to the employer of the natural-person author—even where that employer is a nonnatural, legal person such as a corporation. And the third, shop rights and the hired-to-invent exception, permits courts to grant equitable licenses or assignments to employers for their employees’ inventions.

These three doctrines …

Princo Corp. V. Int'l Trade Comm'n: Patent Misuse No Longer A Deterrent To Anticompetitive Behavior In The Group Venture Context, Brian D. Hill

Journal of Business & Technology Law

No abstract provided.

An Information-Gathering Approach To Copyright Policy, Matthew Sag

Faculty Publications & Other Works

For over a century and with increasing frequency, major controversies have erupted between large distributors of copyrighted works (song publishers, movie studios, record labels, book publishers, etc.) and makers of new technologies for experiencing those works (player piano manufacturers, VCR manufacturers, the creators of file sharing software, Google Books, etc.). Usually, the copyright owners and the technology firms reach a licensing deal-but not without some form of government intervention. Various institutions within the federal government have become involved in these disputes, using a variety of different mechanisms. This Article is a theoretical investigation of government intervention in these content-technology copyright …

Ap V. Meltwater, United States District Court For The Southern District Of New York

Historical and Topical Legal Documents

No abstract provided.

A Case Against Acta, Kenneth L. Port

Faculty Scholarship

The Anti-counterfeiting Trade Agreement (ACTA) is being considered by the Obama Administration as an Executive Order. If signed, this Order will greatly enhance controls placed at the borders of 36 countries to attempt to stop the international flow of so-called counterfeit goods. To remove the social, political and emotional sensitivity, I adopt the value neutral term of “imitative commodity” to describe what some call counterfeits, knockoffs, pirates, etc. This article uses just three manufacturers of luxury status goods to consider whether the ACTA will have positive or negative consequences. It concludes that the data supporting the need for the ACTA …

Patent Reform And Best Mode: A Signal To The Patent Office Or A Step Toward Elimination, Ryan Vacca

Faculty Publications

On September 16, 2011, President Obama signed the America Invents Act ("AIA") the first major overhaul of the patent system in nearly sixty years. This article analyzes the recent change to patent law's best mode requirement under the AIA. Before the AIA, patent applicants were required, at the time of submitting their application, to disclose the best mode of carrying out the invention as contemplated by the inventor. A failure to disclose the best mode was a basis for a finding of invalidity of the relevant claims or could render the entire patent unenforceable under the doctrine of inequitable conduct. …

Argh, Matey! The Faux-Pas Of The Sopa (Stop Online Piracy Act), Anna S. Han

University of Michigan Journal of Law Reform Caveat

Earlier, I posted about a network neutrality case, Verizon v. FCC, which could have far-reaching consequences for the Internet industry. Another concerted attempt to regulate the Internet, disguised in the form of a piracy protection bill, recently came before the House Judiciary Committee and garnered widespread disapproval. Representative Lamar Smith (R-TX) and a bipartisan group of twelve co-sponsors introduced the “Stop Online Piracy Act” (“SOPA”) on October 26, 2011, which punishes websites that are accused of facilitating copyright infringement. Although touted by its supporters as a weapon against foreign sites that steal and sell American inventions, SOPA is problematic because …

Usefulness Varies By Country: The Utility Requirement Of Patent Law In The United States, Europe And Canada, Jay Erstling, Amy M. Salmela, Justin N. Woo

Faculty Scholarship

The requirement that an invention have utility is one of the most fundamental of the patent laws. In the United States, for example, the concept of utility is rooted in the Constitution: Article 1, Section 8, gives Congress the power to grant exclusive rights to inventors in order “[t]o promote the progress of Science and useful Arts.” Other jurisdictions recognize utility in the form of inventions that have “industrial applicability” or are “capable of exploitation in industry,” with all of these terms and phrases generally viewed as being synonymous.

Historically, nearly every jurisdiction has excluded some type of invention from …

Chinese Patent Quality: Running The Numbers And Possible Remedies, 11 J. Marshall Rev. Intell. Prop. L. 478 (2012), Mark Liang

UIC Review of Intellectual Property Law

In an effort to improve its economic and technological prowess, China in recent years has promulgated measures that encourage patenting activity. These measures have had their intended effect. Over a million patent applications were filed at China’s State Intellectual Property Office ("SIPO") in 2010, making it the busiest patent office in the world—by comparison, a mere 600,000 were filed at the United States Patent and Trademark Office, placing it a distant second. The disparity and trend is expected to grow in the coming years. But looking behind the headline numbers raises doubts about the quality of China’s patents and the …

Extraterritorial Protection Of Trade Secret Rights In China: Do Section 337 Actions At The Itc Really Prevent Trade Secret Theft Abroad?, 11 J. Marshall Rev. Intell. Prop. L. 523 (2012), Steven E. Feldman, Sherry L. Rollo

UIC Review of Intellectual Property Law

With an ever increasing number of United States ("U.S.") companies conducting business abroad or conducting business with foreign entities there is more need than ever for the U.S. companies to consider how they can protect their intellectual property assets. The Federal Circuit‘s recent TianRui Grp.Co. v. Int’l Trade Comm’n and Amsted Indus. decision highlights the potential of section 337 of the U.S. Patent Act as a tool to prevent the exploitation of misappropriated trade secrets embodied in products that are imported into the United States. This article explores the potential impact of the TianRui decision on business practices abroad, particularly …

Comparison Of Chinese And U.S. Patent Reform Legislation: Which, If Either, Got It Right?, 11 J. Marshall Rev. Intell. Prop. L. 567 (2012), Wayne C. Jaeschke, Zhun Lu, Paul Crawford

UIC Review of Intellectual Property Law

Chinese patent law has a short history whereas the United States ("U.S.") system has a more robust history. This article chronicles important remaining differences between Chinese and U.S. patent laws including the utility model successfully employed at State Intellectual Property Office of the People’s Republic of China ("SIPO") and in the Chinese courts, but not available under U.S. law. Some differences are discussed in regard of patent appeals, reexaminations for invalidity, China’s lack of a reissue process to correct major errors, China’s inventors remuneration process and compulsory licensing of patents, and China’s unique requirement of post termination compensation to support …

Fighting Poison With Poison? The Chinese Experience With Pharmaceutical Patent Linkage, 11 J. Marshall Rev. Intell. Prop. L. 623 (2012), Benjamin Liu

UIC Review of Intellectual Property Law

Countries after countries are adopting a controversial regulatory system of linking the market approval for pharmaceuticals to the status of potentially blocking patents as part of their bilateral and multilateral trade agreement package with the United States. Surprisingly, China took up pharmaceutical patent linkage in the absence of any treaty obligations and became the first country to adopt this regulatory regime outside of North America, despite the presence of a flourishing generics pharmaceutical industry and its developing country status. In fact, the Chinese regulation promised more intellectual property ("IP") protection than what even the United States FDA is capable of …

Managing Peer-To-Peer Traffic In Mainland China And Hong Kong, 11 J. Marshall Rev. Intell. Prop. L. 548 (2012), Ke Steven Wan

UIC Review of Intellectual Property Law

For over a decade, copyright infringement using peer-to-peer ("P2P") file sharing has plagued the content industries. Response came in the form of massive lawsuits against file sharers and the use of technologies including digital rights management and technical protection measures. However, illegal P2P file sharing is still rampant. Increasingly, internet service providers ("ISPs") have begun to monitor network traffic with deep packet inspection. Under the Digital Millennium Copyright Act ("DMCA"), ISPs are usually only responsible for their own direct copyright infringing acts. To mitigate potential liability, some ISPs have agreed to partner with copyright owners to serve warnings to subscribers …

Rights Of Joint Patent Owners In China, 11 J. Marshall Rev. Intell. Prop. L. 601 (2012), Yunling Ren, Yan Hong

UIC Review of Intellectual Property Law

In the past decade, Chinese courts began to recognize joint patent owners’ rights and obligations that are distinguishable from other proprietary property rights, but the law did not reflect these concerns. It was not until the Third Revision of the Chinese Patent Act in 2009 that the law recognized the existence of joint-ownership rights in patents. Part of the reason for this change was not only to conform to the standards of the international intellectual property community, but also to promote the commercialization of patented inventions and technology transfer. Article 15 of the Patent Act was added to allow joint-owners …

The Paradox That Wasn't: Federal Preemption Of State-Law Voice Misappropriation Claims, 11 J. Marshall Rev. Intell. Prop. L. 694 (2012), Zachary M. Vaughan

UIC Review of Intellectual Property Law

There exists in the law of copyright preemption what some have identified as a paradox: that in certain cases involving claims for voice misappropriation in which a plaintiff’s voice has merely been imitated, claims have been allowed to proceed, while other cases that involve actual uses of a plaintiff’s voice—that is, samples from sound recordings—have been held to be preempted by the federal Copyright Act. This article argues that this apparent paradox is actually no conflict at all. After a brief background section, this article collects and explains cases, discusses the strengths and weaknesses of one possible harmonization of the …