TIPLJ: Volume 29

Issue 1 – Fall 2020

Did The America Invents Act Change University Technology Transfer?

Citation: 29 Tex. Intell. Prop. L.J. 1 (2021)

Author: Cynthia L. Dahl

About: Practice Professor of Law at the University of Pennsylvania Carey School of Law in Philadelphia.

Abstract:

The Leahy–Smith America Invents Act (AIA) is approaching its ten-year anniversary. When it was signed into law in 2011, it was intended to be the grandest overhaul of the U.S. patent system in fifty years. Consequently, the AIA makes bold and sweeping changes to the U.S. patent filing system that impact which patents issue, give certain advantages to a subset of filers, and greatly expand the ability to challenge the validity of a patent even after it has issued.

Universities stood to be especially affected by the AIA. Changes that force a patent owner to file quickly to secure rights are particularly challenging to universities, where discoveries are often early stage and there is a culture of disclosure. In addition, the AIA’s changes to establish and clarify procedures to invalidate patents
even after they are granted casts a pall over the long-term value of patents. Given the number of patents that universities file and the great value of some of their patent assets, the AIA shifts were cause for concern. The AIA’s potential to make both securing and maintaining patent coverage more difficult caused university technology
transfer offices (TTOs) to fear the law would chip away at their business model based
on protecting and licensing inventions.

Disclosing AI Inventions

Citation: 29 Tex. Intell. Prop. L.J. 41 (2021)

Author: Mehdi Poursoltani

About: J.D. received in 2019 from the University of San Diego School of Law.

Abstract:

Given the significant increase in the number of artificial intelligence (AI)-related publications and patents, this article examines the required standard of disclosure concerning AI inventions. Machine learning algorithms are used as a test case to show the differences between AI inventions and conventional software. The article then examines how the non-deterministic and black-box nature of AI models distinguish them from traditional software. Furthermore, it discusses the relationship between the predictability of a field of technology and the required disclosure. Accordingly, it explains the issue of predictability regarding the field of biotechnology and compares machine learning models with biotechnology inventions. The article concludes that AI inventions may require an elevated level of disclosure compared to conventional software.

The Effect of the USPTO’s Quality-Improving Initiatives in 2000 on the Claim Scope of Business Method Patents

Citation: 29 Tex. Intell. Prop. L.J. 67 (2021)

Author: Teruki Amano

About: Deputy director of policy planning and research division, Japan Patent Office.

Abstract:

Patent quality and value has concerned society for over two decades while the U.S. patent system has undergone significant changes in many ways. After the patentability of software patents was judicially confirmed in the State Street Bank decision, the granting of some arguably overly broad business method or software related patents, and subsequent litigation based on those patents have caused concerns. The most recent debate on patent subject matter eligibility under 35 U.S.C. § 101 is also within the scope of the issue of patent quality and value in the broadest sense.

Although there was a time when the U.S. Patent and Trademark Office (USPTO)was said to be regularly issuing bad patents, the agency had also shared concerns and adopted many initiatives to improve patent quality. Following these initiatives, why is the discussion on patent quality still ongoing? It may be that the USPTO’s attempts were not enough, or it may be that the initial problems were adequately addressed, but new challenges have surfaced. Either way, knowing the effectiveness of each of the USPTO’s initiatives is essential to an informed debate on these issues.

Copyright, Tattoos, and Animated Likeness: Why Size Should Not Matter

Citation: 29 Tex. Intell. Prop. L.J. 85 (2021)

Author: Mark Marciszewski

About: J.D. received in 2020 from the University of Virginia School of Law.

Abstract:

Once considered a taboo form of expression, tattoos have become increasingly popular and accepted in modern American society. With tattoos’ ever-increasing popularity, more and more people have inked their skin with tattoos. The increase in tattoos has not just occurred among the average population. From famous athletes and musical artists to movie stars and models, many celebrities and prominent figures have tattoos that have become synonymous with their image and brand. The increased prevalence of tattoos has led to the legal debate surrounding the extent of the copyright interests of tattoos. This legal debate has only been expedited by the high visibility of some well-known tattooed individuals. Although some legal questions have had clear answers, like a tattooed individual’s ability to publicly display their tattooed skin publicly, other legal issues have not been fully settled by the courts.

Issue 2 – Spring 2021

Strategic Behavior in Standards Development Organizations in Times of Crisis

Citation: 29 Tex. Intell. Prop. L.J. 127 (2021)

Author: Panagiotis Delimatsis, Olia Kanevskaia, and Zuno Verghese

About: Professor of Law, Tilburg Law and Economics Center (TILEC), Tilburg Law School, the Netherlands.

Abstract:

Recent cases such as Continental v. Avanci and FTC v. Qualcomm drew attention to the limits of protecting intellectual property rights (IPR) in the standardization ecosystem. While conflicting interests in standard setting abound, considerations regarding the inclusion and subsequent treatment of proprietary elements in a technical standard hold the lion’s share of concerns that Standards Development Organizations (SDOs) have to deal with. To balance the interests at stake, SDOs adopt patent policies that members must observe in order to participate in SDOs’ activities. Like other rules governing the work of SDOs, patent policies may be modified following the prescribed procedures. However, any subsequent changes to an organization’s operational framework, including its intellectual property (IP) rules, may distort prior expectations and “lock in” members to rules that they never intended to abide by. Against this backdrop, this Article seeks to explore how SDO members respond to IP-rule amendments by offering a taxonomy of strategies that are adopted by members opposing modifications. Drawing upon the example of the Institute of Electrical and Electronics Engineers (IEEE) revised Patent Policy of 2015, this Article studies how IEEE members responded to instances of organizational distress such as an update of IP policies within an SDO, by using stakeholders’ willingness to commit to the new licensing rules and previous examples of strategies in other SDOs when misunderstandings around IP arose as proxies. At a normative level, this Article further discusses the effect that such changes may have on the nature and structure of a given industry and offers a novel classification of reactions to tipping points in the standards development realm. In doing so, this Article contributes to the currently underdeveloped body of research on strategic behavior, institutional dynamics, and crisis management in technological standardization.

Inclusive Patents for Open Innovation

Citation: 29 Tex. Intell. Prop. L.J. 187 (2021)

Author: Toshiko Takenaka

About: Washington Research Foundation Professor of Technology Law, University of Washington School of Law; Professor, Keio University Law School.

Abstract:

The post-internet era has greatly affected commercial firms’ innovation processes. The complexity and cumulative nature of emerging technologies under the post-internet era has made commercial firms reevaluate their innovation processes and has increased the role of individual innovators. Firms dealing with emerging technologies cannot make products without infringing on patents held by others, as their products are covered by numerous overlapping patents. Many of these firms work with individual innovators and embrace the open-source philosophy that ensures open access to technologies. These firms can no longer use patents for excluding others without risking infringement counterclaims, leading to the development of new uses of patents: defensive use to avoid litigation and proactive use to promote open innovation. The current U.S. patent has become increasingly outdated for failing to take into account these new uses of patents. Although firms have implemented self-help arrangements by retooling patents with licenses and private-ordering mechanisms, the arrangements still fall short as they result in: (1) no defensive function against patent assertion entities (PAEs) and (2) insufficient proactive use if innovators fail to disclose their invention through USPTO, due to expensive patent costs. Patent reform is necessary to overcome such shortcomings. In light of recent changes, this article proposes issuing inclusive patents as an alternative option to current exclusive patents. The proposed inclusive patents allow anyone who licenses their patented inventions to practice the protected invention, and are only enforced defensively when the owners are charged with infringement. The inclusive patents enable owners to request a preliminary procedure to grant a compulsory license in light of the eBay factors when they are charged with infringement of blocking patents. The compulsory license enhances the defensive use of inclusive patents to avoid litigation with PAEs, and guarantees owners the freedom to operate and innovate on their inventions. Because of the limited exclusivity, the USPTO should allow simplified patent applications and issue inclusive patents without examination. With low patent costs, all types of innovators can take advantage of the proactive use of inclusive patents through USPTO disclosures.

The Semantics of Authorial Originality: Four Pillars

Citation: 29 Tex. Intell. Prop. L.J. 235 (2021)

Author: Molly Torsen Stech

About: Ms. Stech is a New York attorney working on international copyright policy issues.

Abstract:

In March 2017, the U.S. Supreme Court published its opinion in Star Athletica, LLC v. Varsity Brands, Inc.; in September of 2019, the Court of Justice of the European Union published its opinions in Cofemel v. G-Star Raw CV; and in June 2020, its opinion in Brompton Bicycle Ltd v. Chedech. The American case treats the copyrightability of a design on cheerleading uniforms, and the European cases treat the copyrightability of the design of denim jeans and the design of a folding bicycle, respectively. Copyright protection for articles of clothing and designs differs markedly between the United States and Europe, but this particular trio of high court cases construes something more fundamental while parsing the contours of useful articles under their respective laws: they draw attention to the existing legal landscapes for determining originality. If originality is the sina qua non of copyright law, per 1991’s U.S. Supreme Court opinion in Feist Publ’ns v. Rural Tel. Serv. Co., then these cases, and the laws and cases they rely on, present some new—and some old—guidance and lingering questions regarding the very underpinning of copyrightability.

This paper explores and compares American and European law, underscores similarities between them and inconsistencies within them, and concludes that originality remains an essentially intimate, human faculty, and one that escapes legal definition across creative media. That said, aspects of copyright law save it from itself, for example by conferring stronger protection on works that demonstrate a higher saturation of creativity. As the digital economy grows and shines a light on the distinctions between individual jurisdictions’ copyright laws, the modest—but steadfast—hurdle to copyrightability remains indicia of ideation, imagination, and individuality. This is especially important right now as countries consider whether artificial intelligence is or should be eligible to claim authorship in the works they produce. While “author’s own intellectual creation” is European verbiage describing the floor for authorial originality for the Member States of the European Union, it is equally serviceable in the United States and elsewhere. Because the types of works considered copyrightable are potentially expanding on both sides of the Atlantic based on the Court decisions listed above, it is important to demonstrate, firstly, that originality in a work is not a foregone conclusion and, secondly, that many jurisdictions share an approach, if not a specific test or definition, for finding originality.

Express Yourself: A Personal Use Privilege for the Subjects of Copyrighted Works

Citation: 29 Tex. Intell. Prop. L.J. 273 (2021)

Author: Jaden Warren

About: J.D. Candidate, University of Texas School of Law, expected graduation Spring 2021.

Abstract:

In the past couple years, there has been a bevy of copyright lawsuits filed due to photographs posted on social media without the photographer’s consent. More generally, this conflict exists in any situation in which a copyrighted work represents the individual and the copyright owner withholds consent for the represented individual to post the work online. This Note poses and evaluates the following dilemma: do individuals have a right to use media in which they are represented? Additionally, if such a right exists, to what extent does it exist? This Note argues that the subject of a copyrighted work has an urgent personal interest in the use of such work, justifying a privilege to use the work that outweighs the author’s copyright. Part I of this Note evaluates the normative foundation of copyright for the author of a work. Part II of this Note assesses potential theoretical bases for an individual usage right of copyrighted works in which the individual is represented. Part III of this Note considers the limitations and implications of such a usage right. Part IV details the existing legal framework surrounding this issue and proposes a legislative reform to create a personal use privilege for the subjects of copyrighted works. Part V concludes.