JournalTOCs

IP Theory
Number of Followers: 11

This is an Open Access Journal

Open Access journal
ISSN (Print) 2164-7410
Published by Indiana University [24 journals]

Indian Pharmaceutical Patenting Under Section 3(D): A Model for Developing
Countries
- Authors: Nicholas Eitsert
  PubDate: Thu, 16 Mar 2023 13:55:55 PDT
A Hot Spit-Take: Why the Supreme Court Will Hold That There Is No Privacy
Interest in Commercial DNA Data
- Authors: Mounir Jamal
  PubDate: Thu, 16 Mar 2023 13:36:20 PDT
The Constitution Commandeth: Thou Shalt Not Protect the Same Subject
Matter Under Design Patent and Trade Dress Laws
- Authors: Kenneth B. Germain et al.
  Abstract: For many years and still currently, it has been assumed—and even expressly asserted—that it is perfectly permissible to “stack” various legal theories (concurrently or consecutively) to protect nonfunctional “designs” for products. This is despite infrequent but cogent arguments that the available theories, notably design patents and product design trade dress—both of which are based upon federal statutes—are not Constitutionally compatible due to at least the concept of Superfluity. The authors of this article carefully examine the origin, nature, and meaning of these two types of IP protections in the context of their two Constitutional bases—the Patent/Copyright Clause and the Commerce Clause—and conclude that, indeed, “stacked” protections are not Constitutionally permissible; the authors then recommend a workable solution which they dub, the “Kewanee Kompromise.”
  PubDate: Thu, 16 Mar 2023 13:01:22 PDT
Marshalling Copyright Knowledge to Understand Four Decades of Berne
- Authors: Peter K. Yu
  Abstract: In the year 1978, the 1976 Copyright Act had just entered into effect. Marshall Leaffer, whom this article will affectionately refer to by his first name, had just completed his duties as an attorney advisor at the U.S. Copyright Office. On his way to academia, he, like the fictional character Captain William “Buck” Rogers, was to experience cosmic forces beyond all comprehension. In a freak mishap, his car veered off a rarely used mountain road and was frozen by temperatures beyond imagination. He did not return to academia until more than forty years later. What will he discover upon his return' Will he find the developments in the intervening decades interesting or surprising' What observations would he make had he not been frozen in 1978'
  PubDate: Mon, 14 Nov 2022 12:31:06 PST
Life After Google v. Oracle: Three Reflections on a Theme
- Authors: Daryl Lim
  Abstract: In 2004, Professor Leaffer published an article titled Life after Eldred: The Supreme Court and the Future of Copyright. He wrote about three cases decided in or after 2001 to provide a snapshot of the Supreme Court’s position on copyright issues. This Article discusses three reflections on this theme. The first reflection flows directly from Google. It discusses fair use in Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, as well as text and data mining for artificial intelligence uses. This Article then reflects on Arnstein v. Porter’s lessons for modern copyright infringement law. Finally, it reflects on the current state of software protection at the intersection of patent and copyright law in light of Alice Corp. Pty. v. CLS Bank Int’l.
  PubDate: Mon, 10 Oct 2022 16:05:43 PDT
Reconciling Copyright "Restoration" for Pre-1972 Foreign Sound Recordings
with the Classics Protection and Access Act
- Authors: Tyler T. Ochoa
  Abstract: When Congress first added sound recordings to the Copyright Act, it acted prospectively only: sound recordings fixed on or after February 15, 1972, received federal statutory copyright protection, while sound recordings fixed before February 15, 1972, were left to the vagaries of state law. This historic inequity was corrected in 2018 with enactment of the Classics Protection and Access Act (CPA), which provides sui generis protection to pre-1972 sound recordings that is similar, but not identical, to federal copyright protection. But there is a subset of pre-1972 sound recordings that already had federal copyright protection before the CPA was enacted: namely, sound recordings of foreign origin that were granted copyright under the umbrella of copyright “restoration” in the Uruguay Round Amendments Act of 1994. This raises an obvious question that Congress did not expressly address: is the new sui generis protection provided by the CPA a substitute for the existing copyright protection that such foreign sound recordings already enjoyed, or is it supplemental to the existing copyright protection that such foreign sound recordings already enjoyed, or does it simply not apply to such foreign sound recordings at all' This article examines the three alternatives and concludes that Congressional clarification is needed. Absent such clarification, it is possible that foreign sound recordings are simply not covered by the CPA at all, rendering its protections for digital music providers ineffective and depriving foreign sound recordings of the term extension provided by the CPA.
  PubDate: Tue, 04 Oct 2022 08:11:05 PDT
An Introduction to "Marshall Law"
- Authors: IP Theory Volume 12 Editorial Board
  PubDate: Wed, 28 Sep 2022 07:05:51 PDT
Interview by Zach Shepard and Chris McMillan with David Gindler, Partner,
Milbank LLP, and Jasper Tran, Associate, Milbank LLP
- PubDate: Thu, 31 Mar 2022 11:20:26 PDT
Cyber Trespass and Property Concepts
- Authors: Adam MacLeod
  PubDate: Fri, 09 Jul 2021 12:15:58 PDT
The Future of Female Inventors in the United States: A Comparative
Analysis to the Republic of Korea
- Authors: Payton Hoff
  PubDate: Mon, 08 Mar 2021 13:41:15 PST
Saving Face; The Unconstitutional Use of Facial Recognition on
Undocumented Immigrants and Solutions in IP
- Authors: Audrey Knutson
  PubDate: Mon, 18 Jan 2021 06:01:23 PST
The Patent Bar Gender Gap: Expanding the Eligibility Requirements to
Foster Inclusion and Innovation in the U.S. Patent System
- Authors: Mary T. Hannon
  PubDate: Thu, 19 Nov 2020 18:40:06 PST
Sea Change: The Rising Tide of Pro Bono Legal Services for the Creative
Community
- Authors: Victoria Phillips
  PubDate: Fri, 10 Jul 2020 06:15:57 PDT
When Standards Collide with Intellectual Property: Teaching About Standard
Setting Organizations, Technology, and Microsoft v. Motorola
- Authors: Cynthia L. Dahl
  PubDate: Mon, 15 Jun 2020 09:56:11 PDT
Artificial Creativity: A Case Against Copyright for AI-Created Visual
Artwork
- Authors: Megan Svedman
  Abstract: 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 in copyright policy.
  PubDate: Wed, 26 Feb 2020 06:50:58 PST
A Production View on Patent Procurement
- Authors: Ian C. Schick
  Abstract: 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.
  PubDate: Fri, 21 Feb 2020 09:46:05 PST
Using AI to Analyze Patent Claim Indefiniteness
- Authors: Dean Alderucci et al.
  Abstract: 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 patent claim indefiniteness. A summary of existing case law allows us to identify the types of information that can be relevant to the legal determination of indefiniteness. This in turn guides us in designing AI software that processes a patent’s text to extract information that can be relevant to the legal analysis of indefiniteness. Some types of relevant information include whether terms in a claim are defined in the patent, whether terms in a claim are not mentioned in the patent’s specification, whether the claim includes non-standard terms coined by the drafter of the patent, whether the claim relies on vaguely-specified measurements, and whether the patent’s specification discloses structure corresponding to a means-plus-function limitation.The AI software rapidly processes a patent’s text and identifies information that is relevant to the legal analysis. The software then provides the human decision maker with this information as well as simple metrics and inferences, such as the percentage of claim terms that are defined explicitly or by example, and whether terms that are coined by the drafter should be defined or renamed. This can provide the user with insights about a patent much faster than if the user read the entirety of the patent to locate the same information unaided.Moreover, the software can aggregate the various types of information to “score” a claim (e.g., from 0 to 100) based on its risk of being deemed indefinite. For example, a claim containing only defined terms and lacking any vague measurements would score much lower in terms of risk than a claim with terms that are not only undefined but do not even appear in the patent’s specification. Once each claim in a patent is assigned such an indefiniteness score, the patent itself can be given an overall indefiniteness score.Scoring groups of patents in this manner has further advantages even if the scores are blunt measurements. AI software ranks a group of patents (e.g., all patents owned by a company) by indefiniteness scores. This allows a very large set of patents to be quickly searched for patents that have the highest, or lowest, indefiniteness score. The results of such a search could be, e.g., the patents to target for detailed review in litigation, post-grant proceedings, or licensing negotiations.Finally, we present some considerations for refining and augmenting the proposed methods for partially automating the indefiniteness analysis, and more broadly other types of legal analysis.
  PubDate: Wed, 22 Jan 2020 09:21:52 PST
Internet (Re)Search by Judges, Jurors, and Lawyers
- Authors: H. Albert Liou et al.
  Abstract: 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. With respect to lawyers, this paper discusses reliance on and potential pitfalls of using free Internet resources to conduct legal research; the dangers of rotten Internet links; and evidentiary considerations in citing to Internet evidence.
  PubDate: Wed, 23 Oct 2019 07:42:27 PDT
The Invention Secrecy Act: The USPTO as a Gatekeeper of National Security
- Authors: Scott Locke
  Abstract: 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 patent applications and then to do its part in protecting national security, while respecting the rights of inventors, the Invention Secrecy Act provides for the implementation of a framework with three primary components: (1) the screening phase, which applies to all patent applications; (2) the maintenance of secrecy phase, which applies to those inventions for which the Government has made a determination of risk to national security; and (3) the compensation phase, which is the phase during which a patent applicant or patentee can request compensation for either or both the loss due to being required to keep the invention secret and the government’s use of the invention prior to issuance of the patent. Failure of inventors to abide by the terms of and to follow the procedures promulgated under the Invention Secrecy Act can have dire consequences, and thus, applicants and persons who counsel them should be aware of its contours, how the USPTO implements it, and how courts interpret it.
  PubDate: Mon, 15 Apr 2019 09:25:27 PDT
Design Patent Damages: A Critique of the Government’s Proposed 4-Factor
Test for Determining the “Article of Manufacture”
- Authors: Perry J. Saidman
  Abstract: The Supreme Court in Samsung Electronics Co. v. Apple, Inc. wrestled with the question of determining the meaning of “article of manufacture” in 35 U.S.C. § 289 when it comes to calculating the total profit of the infringer that is awarded to the patentee.In its Petition for Certiorari, Samsung raised the novel theory that the article of manufacture could be less than the entire product sold by the infringer. The Supreme Court agreed to hear the following issue, as framed in Samsung’s Petition:Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component'Samsung argued that for a multi-component product, such as a smartphone, the article of manufacture needs to be defined in terms of only portions or components of the smartphone. Since Apple’s design patents were drawn to portions of the iPhone, rather than the entire iPhone, Samsung sought to limit its liability to its total profit on those portions. This would have greatly reduced the jury award of $399 million, which had been based on the total profit derived from Samsung’s sales of their entire smartphones to which the patented designs had been applied.The Supreme Court said that the only question before it was narrow: “[W]hether, in the case of a multicomponent product, the relevant ‘article of manufacture’ must always be the end product sold to the consumer or whether it can also be a component of that product.”Looking to the statutory text, the Supreme Court concluded that the term “article of manufacture,” as it is used in § 289, “encompasses both a product sold to a consumer and a component of that product.” The Court further indicated that the term “article of manufacture” is “broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not.” The Court declined, however, to “set out a test for identifying the relevant article of manufacture at the first step of the § 289 damages inquiry.”Thus, the narrow question left unanswered from Samsung is how to determine the relevant article of manufacture for a multi-component product, such as a kitchen oven (the example given by Justice Sotomayor). If the product is a single component product, such as a dinner plate (again, Justice Sotomayor’s example), there is no issue, because, as she put it, “the product [sold to a consumer] is the ‘article of manufacture’ to which the design has been applied.”The meaning of “total profit” was not at issue; as the Court stated: “‘[t]otal,’ of course, means all.” Thus, the Court left undisturbed the long-standing design patent rule against apportionment of the infringer’s total profit, as well as its sister rule prohibiting an inquiry into causation.As noted above, the Court left formulation of a test for determining the article of manufacture to the lower courts in future litigation.
  PubDate: Tue, 02 Apr 2019 13:30:47 PDT