Intellectual Property Law Commons^™

Patents, Presumptions, And Public Notice, Timothy R. Holbrook

Sturm College of Law: Faculty Scholarship

Patents are peculiar legal instruments in that they contain both technical and legal information. This Janus-like nature of the document is important because they serve the legal purpose of affording the owner the right to exclude others from practicing the invention, and third parties need to be able to assess the scope of that right. At the same time, through the patent’s disclosure, the document is intended to contribute to the storehouse of technical knowledge. Superficially, patents are generally viewed through the eyes of the hypothetical person of ordinary skill in the art (PHOSITA), patent law’s “reasonable person.” Unfortunately, the …

The Continuing Vitality Of The Presumption Of Irreparable Harm In Copyright Cases, Andrew F. Spillane

Marquette Intellectual Property Law Review

Property has long enjoyed civil enforcement through a potent remedy: the permanent injunction. For decades, federal courts across the country roundly granted permanent relief upon finding infringement and a threat of future infringement of one type of property: copyrights. Beyond these showings, a prevailing plaintiff in a copyright infringement case would not have to prove the cornerstone of equitable relief—irreparable harm—to obtain an injunction. But after the U.S. Supreme Court¹s decision in eBay v. MercExchange, some courts have abandoned this truncated equitable inquiry. In its place, the lower federal courts now apply eBay's four-factor test to determine whether a copyright …

Using Intellectual Property To Secure Financing After The Worst Financial Crisis Since The Great Depression, Brian W. Jacobs

Marquette Intellectual Property Law Review

Ever since Thomas Edison first used his patent on the incandescent electric light bulb as collateral to secure financing to start his company, the General Electric Company, intellectual property has been able to be used as collateral. Although not immediately thought of when securing financing, using intellectual property as collateral has occurred ever since the late 1800’s with Thomas Edison. In recent years, using intellectual property as collateral to secure financing has become quite popular. However, as with most financing in general, the use of intellectual property as collateral has slowed due to the first recession in the twenty-first century. …

Balancing Acts: Using A Mixed Test To Ensure Better Results In Rule Of Reason Patent Misuse Analysis Within Section 337, Syvil Shelbourne

Marquette Intellectual Property Law Review

This Comment addresses the tensions faced by the Federal Circuit in reviewing the ITC’s patent misuse decisions that address § 337 claims. First, this Comment provides relevant background information by explaining § 337 itself, the administrative power and function of the ITC under § 337, and the Federal Circuit’s jurisdiction and deferential stance to the ITC regarding § 337 appeals. Subsequently, this Comment examines both per se and rule of reason patent misuse defenses, within the context of ITC appeals to the Federal Circuit of § 337 claims, by laying out their doctrinal frameworks as set out by the Federal …

Exhausting Extraterritoriality, John A. Rothchild

Law Faculty Research Publications

No abstract provided.

Clear But Unconvincing: The Federal Circuit's Invalidity Standard, David O. Taylor

Fordham Intellectual Property, Media and Entertainment Law Journal

The Federal Circuit’s standard for proving invalidity of patent claims is clear. The Federal Circuit always requires clear and convincing evidence to prove that a patent claim is invalid. The rationale behind this standard, however, is unconvincing. There are significant reasons to believe that the Patent Office rarely considers the most relevant prior art and that, instead, alleged infringers often find prior art that is more relevant than the prior art considered by the Patent Office. It defies logic to apply the clear and convincing burden where the Patent Office considered only prior art that is less relevant than the …

The Ethics Of Unbranding, Jeremy N. Sheff

Fordham Intellectual Property, Media and Entertainment Law Journal

This Essay explores the ethical implications of the phenomenon of "unbranding" that has recently been discussed in popular and scholarly literature. It compares two extant definitions of unbranding and examines each under alternative ethical theories of trademark law, specifically deontological and consequentialist theories. With respect to each of these theories, the Essay examines the ethical questions raised by the existence of asymmetric information between brand owners and consumers. This includes asymmetries not only with regard to information about products, but also with regard to information about consumer decision-making processes. The latter asymmetry presents conflicts between deontological and consequentialist conclusions regarding …

Pharmaceutical Patent Litigation Settlements: Balancing Patent & Antitrust Policy Through Institutional Choice, Timothy A. Cook

Michigan Telecommunications & Technology Law Review

Should a branded pharmaceutical company be allowed to pay a generic competitor to stay out of the market for a drug? Antitrust policy implies that such a deal should be prohibited, but the answer becomes less clear when the transaction is packaged as a patent-litigation settlement. Since Congress passed the Hatch-Waxman Act, which encourages generic manufacturers to challenge pharmaceutical patent validity, settlements of this kind have been on the rise. Congress, the Department of Justice, and the Federal Trade Commission have condemned these agreements as anticompetitive and costly to American consumers, but none of these bodies has been able to …

The People's Trade Secrets, David S. Levine

Michigan Telecommunications & Technology Law Review

The content of administered public school exams, modifications made by a government to its voting machines, and the business strategies of government corporations should be of interest to the public. At a minimum, they are the kinds of information that a government should allow its citizens to see and examine. After all, the public might have some legitimate questions for its government: Is that public school examination fair and accurate? Is that voting machine working so that my vote gets counted? To whom or what is that government agency marketing and are kickbacks involved? One would think that the government …

Inconsistency Should Not Be Materiality: The Flaws In 37 C.F.R. § 1.56(B)(2), 10 J. Marshall Rev. Intell. Prop. L. 491 (2011), Lawrence Pope

UIC Review of Intellectual Property Law

The doctrine of inequitable conduct is in need of clarification. The Court of Appeals for the Federal Circuit has recently granted en banc review in Therasense, Inc. v. Becton, Dickinson, & Co. to determine the appropriate standards for each prong of inequitable conduct doctrine: materiality and intent. While the parties and the amici have almost unanimously proposed that the standard of materiality should be less inclusive than “what a reasonable examiner would want to know in deciding upon patentability,” there is much debate regarding how the standard for materiality should be articulated. One proposal is that the courts should look …

Tacit Knowledge Transfer With Patent Law: Exploring Clean Technology Transfers, Margaret Mcinerney

Fordham Intellectual Property, Media and Entertainment Law Journal

No abstract provided.

Anything But Academic: How Copyright’S Work-For-Hire Doctrine Affects Professors, Graduate Students, And K-12 Teachers In The Information Age, Nathaniel S. Strauss

Richmond Journal of Law & Technology

In 1938, the original designers of the Superman comic book figure assigned their ownership rights to DC Comics for $130. On January 1, 2013, their heirs plan to reclaim those rights in court. The impending Superman litigation will herald a wave of a new type of action, known as copyright termination. The Copyright Act of 1976 (“Copyright Act”) granted the original authors of creative works the right to recover rights assigned to publishers, media companies, and other parties, after a period of thirty-five years. Since the Copyright Act became effective on January 1, 1978, the original authors may first assert …

Legal Ethics And Non-Practicing Entities: Being On The Receiving End Matters Too, David Hricik

Articles

The symposium invited me to speak on the legal ethical issues that face counsel who represent non-practicing entities ("NPEs") in patent litigation as plaintiff patentees. My first reaction was that, although obviously the same common law, statutes, ethical rules, and procedural rules apply to such counsel as any other, owing to the tremendous costs of patent litigation, that counsel who represented such a "troll" necessarily would have enhanced obligations to court and opposing counsel to ensure that the suit was not brought in bad faith, nor so conducted.

Upon analysis, however, I came to the somewhat counter­intuitive conclusion that, although …

Bugs For Sale: Legal And Ethical Proprieties Of The Market In Software Vulnerabilities, 28 J. Marshall J. Computer & Info. L. 451 (2011), Taiwo A. Oriola

UIC John Marshall Journal of Information Technology & Privacy Law

The pertinent questions therefore are: first, could software vulnerabilities be obviated simply by ameliorating factors responsible for market failure as canvassed by the literature on the economics of software security, drawing on the strength of the theory of information asymmetry, or are vulnerabilities inevitable irrespective of market dynamics and solutions? Second, to what extent is vulnerabilities research or the surreptitious exploitation of software vulnerabilities by hackers tantamount to trespass, and what are the legal implications, if any? Third, to what extent is the peddling of software vulnerabilities valid or enforceable in law? Fourth, what are the implications of software vulnerabilities …

The Amended Eu Law On Eprivacy And Electronic Communications After Its 2011 Implentation; New Rules On Data Protection, Spam, Data Breaches And Protection Of Intellectual Property Rights, 29 J. Marshall J. Computer & Info. L. 29 (2011), Vagelis Papakonstantinou, Paul De Hert

UIC John Marshall Journal of Information Technology & Privacy Law

No abstract provided.

Table Of Contents

Marquette Intellectual Property Law Review

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Medimmune V. Genentech: A Game-Theoretic Analysis Of The Supreme Court’S Continued Assault On The Patentee, Nicholas G. Smith

Marquette Intellectual Property Law Review

In 2007, the Supreme Court decided MedImmune v. Genentech. This decision changed the landscape of the patent licensing field by holding that a licensee in good standing may challenge the validity of a patent in a declaratory judgment action. By adding to the cost of entering a license agreement, MedImmune erodes one characteristic of a patent from which it derives its worth—the patent’s ability to be licensed. Unfortunately, this has decreased the incentive to innovate by decreasing the value of a patent. This Comment seeks to illustrate, using a game theoretic model, how MedImmune will increase litigation against patent …

I'M Still Your Baby: Canada's Continuing Support Of U.S. Linkage Regulations For Pharmaceuticals, Ron A. Bouchard

Marquette Intellectual Property Law Review

Canada's linkage regime for pharmaceuticals, modeled after the originating U.S. Hatch-Waxman regime, was brought in under intense political pressure to balance effective patent enforcement over new and innovative drugs with the timely market entry of lower-priced generic competitors. It has been almost two decades since the regulations were enacted, and to date, there has been little objective assessment as to whether the regulations have, in fact, stimulated innovation and timely generic entry. We recently completed three empirical studies on the linkage between drug approval and drug patenting under the Patented Medicines (Notice of Compliance) Regulations (NOC Regulations). Of particular interest …

Living With Patents: Insights From Patent Misuse, Vincent Chiapetta

Marquette Intellectual Property Law Review

The Author argues that the patent misuse doctrine should be eliminated. Created almost a century ago as a response to patent power, it has now not only outlived its purpose but causes affirmative harm. Other more nuanced approaches, including antitrust law, produce superior results. Although the Federal Circuit has contained the doctrine, it cannot overrule Supreme Court misuse precedent. Accordingly, the Court should abolish the doctrine at the earliest opportunity or, failing prompt action, Congress should add the matter to its ongoing patent reform agenda. The misuse experience also provides valuable insights regarding how we can appropriately live with our …

Emerging Scholars Series: A Sui Generis Regime For Traditional Knowledge: The Cultural Divide In Intellectual Property Law, J. Janewa Oseitutu

Marquette Intellectual Property Law Review

Traditional knowledge can be protected, to some extent, under various intellectual property laws. However, for the most part, there is no effective international legal protection for this subject matter. This has led to proposals for a sui generis regime to protect traditional knowledge. The precise contours of the right are yet to be determined, but a sui generis right could include perpetual protection. It could also result in protection for historical communal works and for knowledge that may be useful but that is not inventive according to the standards of intellectual property law. Developing countries have been more supportive of …