• Selected
• Entire List

Abstract:
This article examines business method patenting. After describing State Street Bank & Trust Co. v. Signature Financial Group, Inc., the Federal Circuit's 1998 decision recognizing business method patents, I discuss the problems arising from extending patent law to the business environment. First, I show why many invalid patents are likely to issue. Second, I review the rationales for intellectual property protection and demonstrate why none are relevant to business methods. Third, I argue that business model patenting can distort competition by insulating inefficient business operations. Because of network effects and lock in, these inefficiencies?and the resulting distortion?can persist even if the patent is later invalidated.

The last part of the article suggests that patents should be permitted on the software that implements business methods, but not cover business models themselves. Such an approach would better accord with core intellectual property doctrine, which permits protection for instantiations of principles (expression in the case of copyright; applications in the case of patents), but not protection for the principles themselves. This approach would also withhold protection from business methods that do not require the special incentives of patent protection and it would focus both the PTO and the courts on the inventiveness of the software rather than the clever idea of transferring real-world business models (such as the Dutch auction protected by the Priceline patent) into cyberspace. Most important, if patent protection were to run only to software and not to the model the software implements, then others would be able to utilize the model with different software (or without software). Thus, distortive impacts on the competitive marketplace would largely be eliminated.

Abstract:
There is an emerging trend, particularly in international circles, to bemoan the human rights paradox in intellectual property. Thus, it is said that intellectual property rights are grounded in fundamental concepts of human dignity and just deserts. At the same time, however, it is recognized that intellectual property rights protect information, a nonrivalrous good. The paradox is said to arise when one human right is pitted against another, when intellectual property rights are used to restrict access to information that could - at no real cost to the developer - be deployed in ways that satisfy fundamental human needs. It is not difficult to understand why this concern is developing. Along with several other international instruments, the Universal Declaration of Human Rights articulates a commitment to protect the rights of creators; these same instruments also recognize rights that require access to the fruits of creativity. As these commitments become enforceable in courts of law, the stage is set for a clash between the right to control information and the right to use it for such purposes as attaining health and education, participating in cultural activities, engaging in expressive conduct, or freely pursuing intellectual inquiry.

The thesis of this paper is that the equation of intellectual property rights generally - and patent rights in particular - to human rights is belied by the historical evolution of these rights and negated structurally, by the manner in which claims to intellectual products are recognized in law. The characterization of patent rights as human rights is not only wrong, it also has unfortunate pragmatic consequences: it is harder to make a case for intruding on patent prerogatives when they are characterized as human rights than when they are justified on utilitarian grounds. Moreover, the ad hoc balancing required can lead to unpredictable decision-making and an environment less conducive to investing time and money in intellectual efforts. This paper examines the evidence undermining the equation of patent rights and human rights. It then sets out distinctions that the human rights rhetoric tends to ignore - differences between intellectual efforts protected by copyrights and patents; between safeguarding creative individuals from involuntary servitude and giving them control over the information that their labor produces; and between holding a patent and holding the expectation of acquiring a patent. The paper ends with examples of how a utilitarian justification for patent rights is better suited to the task of furthering social welfare.

intellectual property, patents, human rights, public goods, utilitarian justifications

Abstract:
This proposal is meant to spur the intellectual property bar to consider whether it would be desirable to create a regime for international enforcement of intellectual property law judgments. Such a convention could be adopted under the auspices of the World Intellectual Property Organization ("WIPO") or through the World Trade Organization ("WTO").

There are several reasons to believe that an instrument drafted specifically for intellectual property disputes would be particularly advantageous. First, for intellectual property disputes, efficiency should be a principal target. Modern distribution methods, particularly satellite and Internet transmissions, make it increasing likely that intellectual property rights will be exploited simultaneously in more than one territory. The ability to consolidate claims arising from these usages in one court, with the expectation that the judgment of that court will be recognized in all convention States, could reduce costs for all sides, conserve judicial resources on an international basis, and promote consistent outcomes.

Second, a convention drafted for intellectual property disputes can take account of issues uniquely raised by the intangibility of the rights in issue. For example, an intellectual property agreement can consider the ability of a potential defendant to gain litigation advantages through the choice of the location of the activities that give rise to infringement. In certain situations, the propriety of expanding jurisdiction depends on the possibility of inconsistent outcomes; a convention tailored to intellectual property can specify what that term means in the context of public goods.

An instrument for intellectual property litigation can also deal specifically with matters of unique concern to the creative community. The strong link between culture on the one hand, and intellectual production and utilization on the other, means that the territoriality of these rights is of crucial importance: individual nations must be able to retain some control over the local conditions under which these products are created, exploited, and accessed. At the same time, an approach that creates new avenues for cross-cultural enrichment needs to be considered. For example, the circumstances where trans-border injunctions are permissible can be specified to include consideration of cultural, health, and safety issues. Other issues of prime interest to the information industries can also be considered: provisions on contract disputes can be tailored to deal with mass-market contracts, which are becoming prevalent in certain intellectual property transactions; provisions on infringement can be made sensitive to the interests of the "new media", such as Internet Service Providers.

Most important, the convention can be confined to rights covered by the intellectual property part of the General Agreement on Tariffs and Trade ("TRIPs Agreement") and open to signature only to countries that have joined the WTO and fully implemented the TRIPs Agreement. Since these are countries that have agreed to enforce intellectual property law and are subject to dispute resolution proceedings if they fail to do so, these limitations would reduce concerns that forum shopping will undermine the delicate balance that each nation has struck between the rights of intellectual property users and owners. And although dispute resolution under the WTO cannot provide litigants with a substitute for a centralized and authoritative appellate body (such as the US Supreme Court or the European Court of Justice), it can provide assurance of transparent and efficient judicial process, along with institutional mechanisms (such as dispute resolution panels, the Dispute Settlement Board, and the Council for TRIPs) for examining intellectual property law as it develops through consolidated adjudication of multinational disputes.

This is a "mixed" convention. It describes bases of jurisdiction that are predicates to enforcement in all member States and it describes bases of jurisdiction that are prohibited in cases involving foreign habitual residents of member States. It leaves member States free to decide for themselves the conditions under which judgments predicated on other bases of jurisdiction are enforceable. Its principal innovations include:

1. Scope. The Convention would be open only to TRIPs implementers and, with the additions of performance rights in sound recordings, and domain names, it would cover the same rights covered by the TRIPs Agreement.

2. Jurisdiction. This Convention identifies a set of fora with adjudicatory authority over the parties. In part, this is a consequence of the commitment to consolidation and cooperation. The parties' choices need not be narrowed if all courts seized with parallel litigation will, ultimately, consult with one another and with the parties to find the best place to adjudicate the entire dispute. Conversely, the courts and parties can select a better forum (in terms of convenience for the parties and witnesses, expertise of the decision maker, and relationship to the dispute) if there are several courts that enjoy adjudicatory authority. In part, this decision also emanates from the view that forum shopping in intellectual property disputes cannot, in any event, be controlled through personal jurisdiction rules: intangible rights and infringements can be reified in too many locations to make personal jurisdiction an effective limit on potential fora.

3. Contract disputes. Mass-market contracts (sometimes called "shrinkwrap" or "click through" agreements) are becoming increasingly common in intellectual property transactions. The enforceability of these agreements has been quite controversial and the Convention takes the position that the inability to negotiate does raise special concerns. Accordingly, the enforceability of any contract provision affecting the place of dispute resolution is subject to a requirement of negotiation or, in nonnegotiated contracts, reasonableness in the choice of forum. Factors taken into account in assessing the reasonableness of the chosen forum include whether, in the absence of a forum-selection clause, the chosen forum would have had jurisdiction over the nondrafting party.

4. Infringement actions. This instrument adapts jurisdictional doctrines regarding tort actions to tailor them to the context of intellectual property infringement and to the issues raised by the distribution of works in a digital environment. In addition, this proposal deals with "new media" defendants, such as Internet Service Providers. US law does not require special procedural protection for media defendants because substantive law has many explicit safeguards on the use of litigation to chill expression. In the absence of such safeguards in the domestic laws of every member State, it was thought necessary to create procedural protections in the form of immunity from suit in locations where contacts are purely passive.

5. Consolidation. A central insight animating this proposal is that efficient adjudication of intellectual property disputes is a benefit-to the parties, to the nations whose judicial resources would otherwise be redundantly utilized, and to the development of sound intellectual property law. Both US and European laws have mechanisms to promote consolidation, and the techniques of both systems are invoked here.

Abstract:
In prior work, we took up the question of the TRIPs Agreement's resilience to changes in domestic law. We argued that such resilience is necessary because information production is a dynamic enterprise. As new industries emerge and mature, nations must have the flexibility to modify their intellectual property rules to readjust the balance between public and private rights. In the course of that study, we examined approaches to TRIPs dispute resolution that could cabin the choices of legislation available to deal with emergent substantive problems, and which could distort the legal environment in which creative enterprises are conducted. In this piece, we continue our consideration of the resilience of the Agreement and its commitment to neo-federalism. Here, however, we move from a focus on outcomes to the dynamics of the legislative process, examining the extent to which TRIPs dispute resolution adequately accommodates the operation of each member's political economy as it relates to intellectual property lawmaking.

Frequently, as intellectual property lawmaking becomes fiercely contested, reforms can only occur when a balanced package of rules can be reached. We ask whether such deals (or perhaps which of such deals, depending upon the connection between the reforms) should be taken into account by WTO panels. We argue that when legislation represents offsetting benefits and detriments, respect for domestic political dynamics requires panels to consider constituent pieces of such legislation in the context of the package in which they were enacted.

In previous work, we questioned whether the jurisprudence that has developed with regard to the GATT's trade provisions should apply equally to intellectual property, noting that differences between trade and intellectual property policy mandated different approaches. Here we reiterate that position, but make something of a converse argument as well: there are commonalities between the problems that nations experience in executing their trade commitments and their intellectual property commitments. Thus, it is significant that in its early years, the GATT incorporated strategies that created flexibility and permitted nations to deal autonomously with matters of domestic trade; we argue that similar mechanisms are required in TRIPs jurisprudence, especially in the Agreement's formative stage.

We also focus on the effect that TRIPs, as currently understood, has on domestic lawmaking. If WTO panel decisions intrude more into national law, might lawmakers begin to enact legislation in reliance on international invalidation of whole or parts of the enactment? Should formulation of domestic policy take this into account? Further, would the formalistic approach that has been taken to TRIPs jurisprudence benefit domestic lawmaking by reducing the effect of lobbying? Or would it simply induce more nuanced log-rolling, or the enactment of laws aimed at influencing intellectual property production but under a different legislative rubric (such as food and drug regulation or consumer law)? Indeed, answers to these questions might affect not only lawmaking at the national level but, in turn, the form of WTO dispute settlement. We go so far as to suggest that there may be a role for the (much-feared) nonviolation complaints in navigating these complexities.

Intellectual property, international law, TRIPS, WTO

Abstract:
Competition law has significantly relaxed its position on intellectual property, giving rightholders greater flexibility to make licensing decisions. The new attitude can be partly attributed to increased appreciation of the rationality of actors and partly to the realization that usually, patented inventions have substitutes, that copyrighted material can be re-produced through independent creation, and that these alternatives constrain rightholders' abilities to set high prices or limit output.

This paper argues that these analytical approaches are now too readily applied. There are advances protected by intellectual property laws that are unique or that can, through market or government forces, become unique. Examples include human genome sequences and popular computer operating systems. Obviously, assumptions of substitutability do not hold for these works. More subtly, the forces that create uniqueness can undermine assumptions about rational exploitation. The further upstream a discovery lies, or the more complex the protected system is, the more difficult it becomes to conceive of all its possible applications, especially those remote from the rightholder's field of expertise. Those who have that expertise may be barred by the right from gaining enough hands-on experience with the invention to understand how they could use it, or they may lack the motivation to invest in determining whether a particular research strategy is, in fact, workable. Thus, there is significant danger that rights in these works could impede innovation and impair consumer welfare.

These observations have several implications. Most significantly, they suggest that greater scrutiny should be given to refusals to deal and licensing should be required in some circumstances. Although compulsory licensing can diminish incentives to innovate, that concern is overblown in this context. To the extent that potential licensees work in areas where the rightholder lacks information, the right holder would not have reaped the rewards of innovating anyway. In effect, a licensing requirement uses the superior knowledge of the potential licensee to correct mistakes caused by the imperfect rationality of the right holder. Enforcement, in short, solves the information asymmetry problem that would otherwise frustrate efficient innovation.

antitrust, competition law, intellectual property, licensing, refusals to deal

Abstract:
In Steady the Course: Property Rights in Genetic Material, Richard Epstein rejects the notion that patent law should recognize new defenses to infringement of patented inventions in the biotechnology field, claiming that an all-or-nothing approach to patent rights represents the best course of action. This paper examines Epstein's argument, including four core assumptions that underlie it regarding the nature of the patentee, the patent, the licensing relationship, and the goals of patent law. The paper argues that science-intensive fields, such as biotechnology, present a new challenge to patent law because they give rise to patentable technologies that are also core building blocks to future scientific advances. Patents on fundamental principles are unlike patents on products because they sometimes cannot be invented around. As a result, the "steady course" (by which Epstein apparently means current law) gives patentees unprecedented control over innovation markets. To avoid the potential drag on progress that this control entails, it is necessary to enact new measures to safeguard the scientific commons.

The paper ends with a proposal for one such safeguard. It suggests that a non-commercial research organization, university, or an employee of such an institution should be immune from liability for patent infringement if 1) the patented material the researcher needs are not marketed on reasonable terms; 2) the researcher agrees to publish the results of the work; and 3) the researcher agrees to refrain from patenting the fruits of the resulting work. A registry would be maintained (presumably in the patent office) in which qualified researchers would file waivers agreeing to these terms. Buyouts would be permitted.

Such an approach would avoid the need to characterize the invention or the manner in which it was used. Because exclusive rights are not denied even when they protect inventions of research significance, patents would continue to be available to serve as signals, as facilitators of technology transfer, and as vehicles for appropriating end-use (as well as commercial research-use) value. As important, the proposal eliminates all need to price the usage made of the patented invention. Indeed, the proposal recognizes that an important difference between commercial and nonprofit institutions is that the latter do not have the same resources to pay, or patents to cross-license defensively. The waiver element has interesting effects of its own. Most prominently, it serves to enrich the public domain because all resulting work is published and not patented. In the university setting, it may also soften the effect of the Bayh Dole Act, which is often incorrectly treated as requiring (rather than permitting) the recipients of federal funds to patent their inventions. In a sense, the effect of the waiver is to partially monetize and internalize the public benefit of allowing work to fall into the public domain. Providing basic researchers with an incentive to forego patenting may also help restore the Mertonian ethos that once dominated basic scientific work.

intellectual property, patent, research exemption, experimental use, biotechnology

Abstract:
This paper takes a hard look at the relationship between international intellectual property litigation and the proposed Hague Convention on Jurisdiction and the Recognition of Foreign Judgments. The Convention is mainly aimed at creating a way for a civil judgment rendered in one member state to be assured enforcement in all other member states. Toward that end, it defines a series of agreed bases of personal jurisdiction; when a judgment is predicated on one of these bases, other member states are obliged to enforce it. The Convention also determines where particular claims can be litigated-certain claims are within the exclusive jurisdiction of particular states, others can be litigated where ever the Convention permits the assertion of adjudicatory authority over the defendant.

After briefly describing the terms of the Convention, its application to intellectual property is analyzed. One question is whether the territorial nature of intellectual property rights means that no nation should be permitted to adjudicate intellectual property claims arising under the laws of another jurisdiction. If some extraterritorial adjudication is permissible, the next question is, in what kind of cases. The Convention distinguishes between registered rights cases, where issues of validity-and perhaps even infringement-can only be resolved at the place of registration, and all other intellectual property cases. This article takes the position that the line should be drawn between patent cases on the one hand and copyright and trademark cases on the other. Patent cases require a level of technical expertise that is not as necessary for resolving copyright and trademark cases. Moreover, copyright and trademark cases often involve products that are digitally transmitted and thus can be infringed in many states simultaneously. Consolidated adjudication of such multinational copyright and trademark disputes can save judicial and litigant resources, avoid inconsistent outcomes, and provide fora for developing law for the new borderless market that the creative industries now encounter.

The paper ends with a series of proposals to facilitate consolidation and adjudication of intellectual property disputes. In that respect, it acts as background material for a draft judgments convention focusing exclusively on intellectual property litigation, which will be offered by the author and Professor Jane Ginsburg should the Hague efforts be frustrated or culminate in the exclusion of intellectual property from coverage.

Abstract:
The commodification controversy is posited as a conflict between the users and creators of information products over modifying intellectual property law in the face of technological change. Commodification is said to help creators because it establishes a market for their work - a market that generates monetary incentives to innovate, measures consumer demand for new works, and facilitates information exchange. Since modern technologies of reproduction and dissemination make the public-goods character of information products more salient, it is argued that a new law is needed in order to maintain the level of exclusivity creators previously enjoyed. At the same time, however, commodification is thought to harm users because it makes it more difficult for them to acquire knowledge. Enhancing legal and technological means for privatization is therefore questioned as going beyond the mere maintenance of exclusivity, instead allowing rights holders to charge for works that formerly fell into the public domain, price discriminate, and impose all sorts of new restrictions on use.

Lost in this debate is the effect of technology on the ways that information and cultural goods are actually produced, particularly on the extent to which individual creativity has been replaced by collaborative effort. In fact, the artist starving in a garret, the scientist madly experimenting in the garage, and the reclusive professor burning midnight oil are all rapidly becoming myths. In a world of increasing technical complexity and intensifying specialization, interdisciplinary investigation has become crucial to progress. With the globalization of the marketplace comes a need for multicultural input into product development. As private financing for technological start-ups increases (and public funding of basic research withers), economic factors prompt new alignments within the innovation industries. At the same time, digitization and the Internet facilitate interchange and present fresh artistic and scholarly opportunities. This new world is characterized by such phenomena as chain art, interactive websites, multi-authored scientific articles, as well as corporate joint ventures and university distance learning initiatives.

As production methods have become increasingly complex, claims for creative recognition have also blossomed. By drawing attention to their contributions, graduate students, dramaturgs, statisticians, reviewers, editors, and the like have transformed social understanding of information production. Works that might once have been seen as individually created must now be viewed as the product of collaboration.

This essay looks at the special challenges that commodification presents to participants in collaborative projects and examines the disjuncture between current U.S. intellectual property law and the issues of importance to collaborators. It ends with suggestions on the ways in which the law might be improved.

intellectual property, copyright, patent, collaboration, commodification, joint authorship, joint inventorship

Abstract:
In the early 90's, I wrote two articles examining the expansion of trademark law from its core focus on confusion about marketing signals, to cover such matters as dilution, implications of sponsorship, and rights of publicity. I argued that these developments were putting increasing pressure on free speech interests and suggested that the operation of these symbols could be usefully categorized in two spheres - the commercial and the expressive. By analytically separating the spheres, I thought that both trademark and speech interests could be accommodated. In this essay, which looks at developments in the last decade, I admit that this solution is becoming increasingly less tractable. The exigencies of a global, on-line marketplace make stronger protection for trademarks necessary just when technology makes their widespread expressive use more feasible. Internet shopping requires both exclusivity and unrestricted availability - the former, to keep search costs down by ensuring that consumers find the right site; the latter, to allow markets to work efficiently by ensuring that consumers receive information about comparable products. The popularity of trademarks in humor and criticism create new profitmaking opportunities - and produce funds that can be channeled back into efforts to destabilize trademark meaning.

This paper begins with an examination of the doctrinal approaches taken thus far and the limits on what such analyses can achieve. It concludes that preventing confusion, dilution, and cyberconflicts are, in fact, no longer be feasible and that the best a legal system can do is adopt rules that help consumers accurately resolve the inevitable tension. Thus, closer attention needs to be paid to the strategies people employ when confronted with ambiguity. Lessons drawn from cognitive and behavioral research can, it is submitted, provide better protection for the interests of trademark holders and expressive users alike.

intellectual property, trademarks, free speech, expressive interests, cognitive research, behavioral research

Abstract:
The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address whether - and how - the TRIPS Agreement can be interpreted to give it more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for "upstream" inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement, as it is currently understood. Our purpose is to identify interpretive approaches that allow member states to keep their laws attuned to the developments and needs of science. In so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.

extraterritoriality, dispute reolution, TRIPS, WTO

Abstract:
In this Article, we contend that the World Intellectual Property Organization's proposed Substantive Patent Law Treaty (SPLT) is premature. Developing countries are struggling to adjust to the heightened standards of intellectual property protection required by the TRIPS Agreement of 1994. With TRIPS, at least, these countries obtained side payments (in the form of trade concessions) to offset the rising costs of knowledge products. A free-standing instrument, such as the SPLT, would shrink the remaining flexibilities in the TRIPS Agreement with no side payments and no concessions to the catch-up strategies of developing countries at different stages of technological advancement.

More controversially, we argue that a deep harmonization would boomerang against even its developed country promoters by creating more problems than it would solve. There is no vision of a properly functioning patent system for the developed world that commands even the appearance of a consensus. The evidence shows, instead, that the worldwide intellectual property system has entered a brave new scientific epoch, in which experts have only tentative, divergent ideas about how best to treat a daunting array of new technologies. The proposals for reconciling the needs of different sectors, such as information technology and biotechnology, pose hard, unresolved issues at a time when the costs of litigation are rising at the expense of profits from innovation. These difficulties are compounded by the tendency of universities to push patenting up stream, generating new rights to core methodologies and research tools. As new approaches to new technologies emerge in different jurisdictions, there is a need to gather empirical evidence to determine which, if any, of these still experimental solutions are preferable over time. Our argument need not foreclose other less intrusive options and measures surveyed in the Article that can reduce the costs of delaying harmonization. However, the international community should not rush to freeze legal obligations regarding the protection of intellectual property. It should wait until economists and policymakers better understand the dynamics of innovation and the role that patent rights play in promoting progress and until there are mechanisms in place to keep international obligations responsive to developments in science, technology, and the organization of the creative community.

patents, harmonization, intellectual property, development, innovation

Abstract:
In this book chapter, we look at the effect of commodification on scientific and technological, as opposed to cultural, activity. After discussing the nature of the commodification debate and the constraints unique to scientific and technological production, we explore ways in which the domain of accessible knowledge could be reconstituted. In our discussion of these strategies, we draw on previous work in which we analyzed (1) various substantive methods for curbing perceived encroachments on the public domain to see how each would fare if challenged under the TRIPS Agreement, and (2) the relationship between the dynamics of domestic legislative procedures and TRIPS dispute resolution outcomes. In this piece, we continue our examination of the domestic efficacy and TRIPS compatibility of substantive alterations to the patent system: strengthening the nonobviousness (inventive step) requirement; narrowing the scope of patent claims; and recognizing new occasions in which the government may use patented inventions without authorization (but with payment).

As in our other pieces, our purpose is not to predict the outcome of future disputes - there are far too few WTO precedents for that. Rather, our goal is to explore how the interpretive approaches pursued at the international level affect the ability of TRIPS members to keep their laws attuned to the developments and needs of science.

We argue that under certain interpretations of TRIPS, a variety of prophylactic substantive steps to protect the domain of accessible scientific knowledge could be taken, that each has a different pay-off as a matter of domestic policy, but that the there is little relationship between the strength of the obstacle posed by TRIPS and the impact of the approach on innovation. Furthermore, we see reason to worry that the analytical tools utilized to date carry a strong potential for altering the political economies of member states in ways that create a one-way ratchet in favor of increased commodification.

We conclude that a map of the public domain of the type charted by Pam Samuelson must do more than consider the effects of various domestic laws and policies because the international system (as currently administered) shapes the legal landscape on which individual nations are operating. To alter that landscape, patent strategists should consider a variety of approaches. But we suggest that it may be particularly fruitful to adapt the rhetoric of scholars seeking to promote the public domain in domestic copyright law. The differences we see in the commodification debate may not, after all, reflect genuine differences between cultural and technological production. Rather, it may be that copyright scholars better appreciate the value in framing the public's interest as a right to access.

commodification, intellectual property, science as property, TRIPS

Abstract:
This article, based on a speech given at Brooklyn Law School, examines the impact that the Uniform Computer Information Transactions Act (UCITA) will have in the international arena. After reviewing the advantages of facilitating information exchange with uniform licensing law, the article looks at the cost to public access interests and to the goal of promoting innovation. In contrast to protection based on copyright, patent, and trade secrecy laws, contractually-imposed obligations are less likely to release information into the public domain and are more likely to bind remote users and to require licensees to forgo particular usages. These obligations can also be made to endure forever, which is not possible in regimes constrained by the "limited times" provision of the Constitution. Although UCITA is made subject to constitutional preemption analysis and obligations can also be suspended if clearly contrary to public policy, it lacks any guidance to help courts?or contracting parties?to understand the scope of these limitations.

The article goes on to argue that in the international context, these problems are exacerbated. Because UCITA envisions a variety of extraterritorial applications, it may be enforced in the courts of nations that lack firm public policies favoring public access to information, and in courts that do not understand that constitutional preemption analysis as UCITA's primary safeguard for the public domain. The article concludes that UCITA could be substantially improved by adopting its own information policy as an organic part of the document, embedded systematically into its provisions.

Abstract:
This is a comment on Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687 (2006). Raustiala and Sprigman argue that innovation in fashion occurs in low intellectual property equilibrium. In his comment on this piece, Randy Picker disputes that conclusion. In my comment, I start from the assumption that Raustiala and Sprigman are right and then ask whether the conditions that set this equilibrium exist for other innovation communities. Finding that they do, I then examine the durability of these equilibria and suggest factors that contribute to their breakdown.

intellectual property, innovation, fashion

Abstract:
The patent industries have discovered the global marketplace. While the practice of patented technologies is now international, patent rights remain territorial. Various international developments facilitate the acquisition of patent rights around the world. However, dispute resolution (including enforcement) remains a difficult problem. This Chapter begins by considering the ways that the problems posed by territoriality are alleviated by traditional legal practices, such as extraterritorial application of local law, consolidation of foreign and domestic claims and private agreements. It ends by describing alternative mechanisms, including deep harmonization and an agreement on a procedural framework for coordinating multinational litigation and judgment recognition.

international intellectual property law, patents, enforcement, dispute resolution

Abstract:
Just as Congress is about to consider patent reform, Adam Jaffe and Josh Lerner have offered a timely critique of the existing system. In Innovation and Its Discontents: How Our Broken Patent System is Endangering Innovation and Progress, and What to Do About It, they suggest that patenting has undergone a fundamental change in the last 25 years and has done so across two dimensions. The number of patents has skyrocketed and their power has increased dramatically. Arguing that the invalidity of many of these patents imposes a heavy tax on innovation, the authors attribute their prevalence to the establishment of the Federal Circuit to hear most patent appeals and to financial restructuring of the Patent and Trademark Office (PTO). The book ends with a vision of a revamped procedure which would accord resources to examination and patent challenges in proportion to the importance of the invention protected.

The confluence of an explosion in patenting, the Federal Circuit's establishment, and the PTO's financial problems is certainly provocative. However, when these events occurred, equally dramatic shifts were happening in the organization, methodology, and production of science. Because these changes alter the factual bases on which patent law is grounded, a strong argument can be made that the problems the authors observe are not caused merely by the implementation of the law, but also by its articulation - by an institutional failure to keep patent law and policy abreast with developments at the technological frontier. Although the Federal Circuit was arguably established with this goal in mind, as an appellate court, it cannot easily reach the factual issues embedded in patent jurisprudence. (What do ordinary artisans know? What can they learn from a reference?) The authors' proposals, although not designed for the purpose, would (with some additional changes) dramatically improve the operation of the PTO, raising the question whether it would make sense to delegate to it greater authority over the development of patent law.

Abstract:
Although the technological community was once fairly united in its needs from the patent system, the recent debate over patent reform has made it clear that this is no longer the case. Rather, it has become increasingly difficult to believe that a one-size-fits-all approach to patent law can survive. In this brief contribution to a symposium tackling Diversity in Innovation Policy, we consider the ways in which intellectual property obligations, most notably the TRIPS Agreement, circumscribe the ability of national lawmakers to tailor patent protection to reflect the concerns of different industries. In particular, we propose that TRIPS art. 27, which is cast in terms of nondiscrimination, should be interpreted to permit "differential treatment." First, we argue that in other areas, treating different cases differently is not always invidious discrimination. Second, we note that many of the proposals for tailoring are not aimed at the nominal legal rights created by patent law, but rather at the economic effects of these patents, a distinction of significance in the WTO's Canada-Pharmaceutical Patents case. Finally, we suggest that member states claiming de facto discrimination should be required to demonstrate some element over and above those required to establish de iure discrimination, and that member states defending an exclusion should be permitted to rebut a showing of disparate treatment by demonstrating a legitimate purpose. While decision makers will need to evaluate the relation between the stated purpose and the means chosen, this analysis would permit members to adopt most of the tailoring initiatives discussed during the Symposium. We give weight to the normative claims of the TRIPS Agreement to facilitate and enhance free trade. But we think that industry-specific patent laws are fully consistent with the language and purpose of the TRIPS Agreement as well as the comparative advantage philosophy that undergirds the modern trade regime.

Abstract:
This article continues my examination of the experiment in specialization that was undertaken when the Federal Circuit was established a quarter of a century ago. There is now a sharp division in opinion regarding the court's performance among the bar, the legal academy, economists, and the Supreme Court. The first part of the paper suggests that opinions diverge because these constituencies disagree on the appropriate criteria for evaluating the court's output. The piece ends with a discussion of the proposals that have been made for improving appellate decision making in patent cases and, more generally, for improving the use of specialized courts.

patents, specialized adjudication, Federal Circuit

Abstract:
This paper discusses the role that emerging economies could play in rendering intellectual property law and lawmaking more responsive to changing conditions. At present, neither the North nor the South is likely to challenge the accommodations made in the TRIPS Agreement. In the North, the politics of change is complex; the South largely lacks expertise. But emerging economies have the political will to improve access to the world’s intellectual output on behalf of their poorest citizens. At the same time, they have growing creative sectors and thick legal and political cultures, capable of striking new and imaginative balances between proprietary and access interests. Because the goals of these economies are best served by partnering with least-developed countries and members of civil society interested in IP issues, these nations also have an incentive to improve another type of access norms — norms of participation, fairness and transparency in international lawmaking. These nations are, in other words, in a unique position to contribute to the reforms that are the cornerstone of the global administrative law agenda.

international law, intellectual property, global administrative law

Abstract:
International intellectual property law furnishes a case study on the need for norms of global governance. In an earlier era, multilateral intellectual property instruments recognized the dynamic nature of information production; under their terms, nations could balance the interests of producers in earning a return from their intellectual investments against the interests of users in accessing new knowledge for both consumptive and productive purposes. Now that IP is part of the WTO trade regime, information streams have been intensely commodified and an emphasis has been placed on raising IP protection to ever-higher levels. While there are traders in the North and in some emerging economies that are reaping rewards from this system, the TRIPS Agreement is operating as a tax on the South and is chilling innovation is the North.

Ostensibly, TRIPS permits nations to strike the appropriate local balance between proprietary and access interests. However, because the drafters of TRIPS incompletely theorized the function of exclusive right regimes, WTO adjudicators have had difficulty evaluating challenges to public-regarding legislation and nations have little guidance for enacting TRIPS-compatible law. But TRIPS does include two potential saving graces. It contemplates close cooperation with WIPO, which now administers upward of 20 intellectual property instruments. Furthermore, the Agreement sets up a Council to oversee compliance. The combined expertise of these two entities could be exploited to rectify the deficits in TRIPS.

This paper explores the institutional design issues that must be resolved for these institutions to function effectively. These include mechanisms for incorporating WIPO's expertise into the interpretive process, for insuring that WIPO and the Council operate within the scope of authority delegated by WTO members, for controlling forum shopping, and ensuring transparency, competence, and participation. It ends with suggestions for substantive reform to supplement these administrative devices.

Abstract:
This paper was written as the introductory chapter to Incentives for Global Health: Patent Law and Access to Essential Medicines, edited by Thomas Pogge, Matthew Rimmer, and Kim Rubenstein (Cambridge University Press). It challenges the critique of the TRIPS Agreement as a one-size-fits-all regime. To be sure, there are WTO members who prefer to think of the Agreement that way. However, the paper demonstrates how the flexibilities built into the TRIPS Agreement allow a state to fashion local law to deal with its population’s health needs. TRIPS accommodations are not perfect: the second part of the paper considers the roles that other international organizations, such as WHO, and other international obligations, such as human rights agreements, can be used to influence the development and interpretation of international intellectual property law.

international intellectual property law, health, intellectual property law, TRIPS Agreement

Abstract:
The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address wither - and how - the TRIPS Agreement can, on the other hand, be read with more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for 'upstream' inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement as it is currently understood. Our purpose is to identify interpretive approaches that allow member states to keep their laws attuned to the development and needs of science. But in so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.

TRIPS, TRIPS Agreement, WTO, intellectual property, public domain, international law

Abstract:
In recent years, it has become clear that the TRIPS regime is in trouble. Although lawmaking in the World Trade Organization (WTO) has essentially stalled, there is a continuing need to recalibrate the rules applicable to knowledge production. In theory, the problems facing WTO members could be resolved through new lawmaking within that institution. For a variety of reasons, however, this has not materialized. The WTO’s adjudicatory system has compensated somewhat for the lack of activity in the Ministerial Conference and the General Council. But for a number of reasons, it is not a substitute for a well-functioning “legislative body.” Indeed, some of the activity in this field has shifted back from the WTO to the World Intellectual Property Organisation (WIPO). Although this regulatory competition might currently be leading to a suboptimal global regime, the move to WIPO is intriguing. It suggests an institutional design that could make the international intellectual property system more responsive to changing needs. Indeed, the TRIPS Agreement contemplates a formal tie between the WTO and WIPO. Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. TRIPS incorporates provisions of two WIPO instruments (the Paris and Berne Conventions), and references others. Still, it is not evident whether (or how) the WTO should be taking account of WIPO’s view of these commitments. Nor is it clear how (or when) new developments within these conventions should affect WTO obligations. This essay takes up the institutional design question of how to create an intellectual property system responsive to changing circumstances by examining how the WTO can best make use of WIPO’s experience and expertise in intellectual property matters. After considering the intellectual property cases decided to date by the WTO dispute settlement body and determining the ways in which they have relied on the text and negotiating histories of, and other materials relevant to, WIPO conventions to elucidate TRIPS obligations, we suggest some revisions to interpretive approaches pursued thus far by dispute settlement panels. We point out methodologies that would leaven and cabin the trade perspective, and thus allow the WTO to capitalize on WIPO’s experience and on WIPO developments that cope with the dynamic nature of intellectual property and the changing landscape of knowledge production. Our analysis is also meant for broader application, for developing a design that permits productive input from all the international institutions that have interests touching on intellectual property norm development.

WTO, WIPO, TRIPS, Dispute Settlement

Abstract:
The Supreme Court’s 2007 decision in MedImmune v. Genentech reversed prior case law and allowed a licensee in good standing to challenge the validity of the licensed patent. In some ways, the decision was unsurprising. It made patent law more consistent with general rules on justiciability and with the Court’s recent concerns about the strength and prevalence of patents. Still, the decision is, in significant ways, astonishing. By apparently shifting all of the risk of invalidation to patentees and putting them into inferior bargaining positions relative to licensees, it arguably undermines patent value, reduces incentives to invest, and endangers the public interest in scientific progress. It is especially detrimental to patent holders in emerging sectors, where licensing income is key to funding research and technology transfer operations. Yet, there is virtually nothing in the opinion that rationalizes the result in terms of innovation policy.

This article suggests that this dire view of MedImmune is wrong: that the decision leaves patentees free to share the risks of invalidation with their licensees, so long as they do so expressly, thereby giving potential licensees strong incentives to vet validity at the start of a relationship - and early in the life of the patent. After setting out the arguments for reading MedImmune as promoting private ordering, the article discusses five general approaches to contracting in its light. It concludes with a look at the limits of party autonomy, suggesting that MedImmune also casts doubt on a line of cases upholding agreements between branded pharmaceutical companies and generic manufacturers that eliminate competition in the name of reducing litigation costs.

justiciability, standing, patent validity, patent licensing

Abstract:
In recent years, intellectual property law has paid increasing attention to issues of private international law. The American Law Institute promulgated Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Dispute in 2008. In Europe, the Max Planck Institutes’ Conflict of Laws in Intellectual Property Conflicts of Law effort is expected in 2010. However, neither of these projects has dealt explicitly with choice of law on contributory liability (or any other form of secondary liability that makes one party liable for the harm caused by another). Yet, actions premised on secondary liability are rapidly becoming the favored route for efficient enforcement on a worldwide basis. Examples include cases that attempt to impose liability on manufacturers of copying technologies for infringements caused by those who use their equipment; on purveyors of peer-to-peer file sharing software for the activities of those who download material without rightholders’ permissions; on internet service providers for subscribers’s infringing postings; and on other intermediaries, such as auction sites. In principle, secondary liability actions can occur in all areas of intellectual property law. However, for purposes of this paper, we concentrate on trademark cases, such as the litigation involving the responsibility of the online auction house, e-Bay, for the sale of counterfeit goods on its website. The problems posed in that area are particularly complex. After offering a stylized fact pattern to illustrate the problems, we consider the different ways in which courts might deal with questions arising in cases where secondary liability claims are asserted. We suggest that the traditional approach to choice of law in trademark cases generates unacceptable uncertainties for intermediaries and that a genuine engagement with conflicts scholarship would help mediate among the diverse interests and policy concerns. In the end, however, we conclude that private international law solutions may not resolve all the complications of multinational secondary liability cases. Thus, we are moved to propose, as an alternative solution, an autonomous (substantive) principle applicable in these cases. We conclude with some thoughts about how the different approaches engage with existing models for the resolution of trans-border intellectual property disputes and with the international intellectual property regime more generally.

choice of law, ALI Principles, CLIP, secondary liability, intermediary liability

Abstract:
The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address whether - and how - the TRIPS Agreement can, on the other hand, be read with more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for 'upstream' inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement as it is currently understood. Our purpose is to identify interpretive approaches that allow member states to keep their laws attuned to the developments and needs of science. But in so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.

Abstract:
In 1996, Congress enacted the Economic Espionage Act (EEA), 18 U.S.C. ?? 1831-39 (West 1998), which will become fully enforceable in 2001. The EEA is significant in several respects: it is the first comprehensive federal law addressing the problem of trade secrecy disclosure; it is one of the only laws providing criminal penalties for trade secrecy violations; and it is one of the few pieces of domestic intellectual property legislation that is explicitly extraterritorial in application.

After describing the EEA in detail, this article analyzes its effects on innovation. The EEA was intended to plug "leaks" in the trade secrecy system, which Congress believed to be a threat to the vitality of the creative community. This article argues that this belief is, in some ways, misguided. All intellectual property regimes allow certain free uses of information. These leaks serve important functions. They enrich the public domain and create ways for new technologies to be improved upon and applied to new fields. They reduce deadweight losses. Although trade secrecy protection also has the positive effect of creating a way for inventors to capture returns on subpatentable and unpatented inventions, civil laws strike an appropriate balance between the access interests of the public and the proprietary needs of innovators. The EEA "ups the ante" with criminal penalties. Moreover, it punishes attempts and, as so far interpreted, can be applied even in the face of legal impossibility. It chills behavior that is, in fact, legal and even desirable.

The article also notes other adverse consequences to over-enthusiastic application of the EEA: reduced mobility for workers in creative industries, differential treatment for identifiably ethnic employees, and difficulties in litigating cases based on foreign activity.

Abstract:
This paper considers whether intellectual property (IP) law could be adapted to protect privacy in the high-tech environment: to give the targets of intrusion control over information produced through activities like surfing the internet, making computer purchases, or appearing in places surveilled by camera. The piece first examines Warren and Brandeis's 1890 article, The Right of Privacy, which suggested applying copyright, trade secrecy, and duties of confidentiality to private information. Although this proposal was never fully adopted, it is argued that changes in both fact and law make IP law a more serviceable model now than it was in Warren and Brandeis's day. These include greater recognition of the value of personal information, the abandonment of pure incentive-based rationales, and closer affiliation with continental intellectual property systems.

It is not, however, clear that this move will satisfy either privacy advocates or the IP community. The trends identified -- if enduring -- will slow the pace of innovation. Further, the relief available through IP law may not fully protect privacy values. Detecting intrusions will remain a problem. And although injunctions would help the targets of technological intrusion, injunctive relief is not available when transactions costs or the public interest in information use are high. Monetary relief does not address dignity concerns, stop intrusions, insure accuracy, assure that information is used only for the purpose for which it was obtained, or give subjects a right to know when and where their files are passed. The paper concludes that it would be better to use the resources needed to adapt IP law to develop a system of law directly aimed at privacy concerns.